Karl Storz GmbH & Co. KGDownload PDFTrademark Trial and Appeal BoardMar 25, 2015No. 85801792 (T.T.A.B. Mar. 25, 2015) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 25, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Karl Storz GmbH & Co. KG _____ Serial No. 85801792 _____ Wesley W. Whitmyer, Jr. and Andy Corea of St. Onge Steward Johnston & Reens LLC, for Karl Storz GmbH & Co. KG Natalie Polzer, Trademark Examining Attorney, Law Office 108, Andrew Lawrence, Managing Attorney. _____ Before Shaw, Adlin and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Karl Storz GmbH & Co. KG (“Applicant”) seeks registration on the Principal Register of the mark KARL STORZ PARACHUTE (in standard characters) for Surgical instruments and apparatus, namely, suture anchors for affixing soft tissue in joint surgery, none of the foregoing directed to goods and services in the ophthalmic field or for the treatment of congestive heart failure, in International Class 10; and Photographs and printed matter, namely brochures, catalogs, printed information sheets, flyers, printed teaching and instructional material, excluding apparatus, all in the field of joint surgery, none of the foregoing Serial No. 85801792 - 2 - directed to goods and services in the ophthalmic field or for the treatment of congestive heart failure, in International Class 16.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark PARACHUTE in standard characters for “medical implants composed of artificial materials” in International Class 102 that as used in connection with Applicant's identified goods, it is likely to cause confusion or mistake or to deceive. Applicant appealed the final refusal. We affirm the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 1 Application Serial No. 85801792 was filed on December 13, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 Registration No. 4060369, issued November 22, 2011. Serial No. 85801792 - 3 - A. Similarity or dissimilarity of the goods. We start our analysis with the second du Pont factor and look at the relationship between the goods. When determining the relationship between the goods, [t]he authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014). Applicant’s Class 16 goods consist of photographs and printed material in the field of “joint surgery.” Applicant’s Class 10 goods consist of a surgical device or apparatus, specifically suture anchors, used in joint surgery. We will discuss the Class 10 goods first. 1. Comparison of Applicant’s Class 10 goods with the goods in the cited registration. While noting that “[t]he goods associated with the cited registration are identified as ‘medical implants composed of artificial materials,’”3 Applicant’s sole argument is based on Applicant’s and Registrant’s goods being used in different medical fields. Specifically, even though the identification of goods in the cited registration is not restricted to any specific medical field, Applicant argues that these goods are not related to its goods because “the cited PARACHUTE product is 3 Appeal Brief, p. 6, 6 TTABVUE 7. Serial No. 85801792 - 4 - a treatment device for congestive heart failure that partitions the damaged muscle …,”4 while its goods are restricted to use in joint surgery. Relying on In re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990), Applicant argues that because the goods identified in the cited registration are “unclear,” technical and that Registrant’s identification would have a particular meaning to members of the trade, the Board may consider extrinsic evidence about them. The Trackmobile case is inapposite here, however, because the meaning of the goods as identified in the cited registration is clear and the identification is not so technical that we need extrinsic evidence to understand it. Indeed, the record establishes that a medical implant is merely “an object or material grafted into the body for prosthetic, therapeutic, diagnostic or experimental purposes.”5 It is improper to decide the issue of likelihood of confusion based upon a comparison of applicant's actual goods with registrant's actual goods. If registrant's goods are broadly described in its registration so as to include types of goods which are similar to applicant's goods, then an applicant in an ex parte case cannot properly argue that, in point of fact, registrant actually uses its mark on a far more limited range of goods which range does not include goods which are similar to applicant's goods. Id. at 1153. Applicant’s goods, “suture anchors,” are defined as “a small screw made of metal or synthetic material that is buried into the bone during some shoulder surgeries. Sutures or stitches run through an eyelet in the screw, and these are used to repair 4 Id. 5 Exhibit to Office Action dated June 5, 2013 consisting of definition of “implant” from Dorland’s Medical Dictionary for Health Consumers, copyright 2007 Saunders, implant, http://medical-dictionary.thefreedictionary.com/implant. Serial No. 85801792 - 5 - soft tissues and hold them to the bone.”6 As the Examining Attorney points out, this definition establishes that “suture anchors” are implants. This position is supported by informational material provided by Applicant on its website, which discusses PEEK Implants and Instruments for Shoulder Arthroscopy: . 6 Exhibit to Office Action dated June 5, 2013 consisting of definition of “suture anchor” from Shouldersurgeon.com, “Shoulder vocabulary: medical term definitions,” http://www.shouldersurgeon.com/shoulder_terminology_vocabulary/. Serial No. 85801792 - 6 - Response to Office Action dated December 4, 2013. This webpage states that “PEEK implants and instruments for Shoulder Arthroscopy [consist] of POWERLOCK, PARACHUTE, and BIOPLUG PEEK” (emphasis added). Thus, Applicant’s Class 10 goods are legally identical to the goods in the cited registration. Based on the foregoing, we find that the Class 10 goods are legally identical and thus, the second du Pont factor favors a finding of likelihood of confusion with respect to these goods. 2. Comparison of Applicant’s Class 16 goods with the goods in the cited registration. Applicant’s Class 16 goods, “photographs and printed matter, namely brochures, catalogs, printed information sheets, flyers, printed teaching and instructional material, excluding apparatus, all in the field of joint surgery” are for informational and educational/instructional purposes regarding joint surgery, using Applicant’s suture anchors. The goods in the cited registration are medical implants, which may also be used in joint surgery. Thus, while Applicant’s Class 16 goods are not identical or even competitive with the registered goods, they may be used together and are therefore related. Goods need not be identical or even competitive to find a likelihood of confusion. See On- line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Serial No. 85801792 - 7 - Cir. 2012) quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). Consumers will likely view informational and educational/instructional material for use in joint surgery as coming from the same source as medical implants used in surgery, which could include joint surgery. Based on the foregoing, we find that the Class 16 goods are related to the goods in the cited registration and thus, the second du Pont factor also favors a finding of likelihood of confusion with respect to these goods. B. Similarity or Dissimilarity of Marks. Next, we consider the first du Pont factor, the similarity of the marks. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Applicant has adopted the entire registered mark (PARACHUTE), prefaced by its house mark (KARL STORZ). Applicant argues that “[t]he marks in this case are similar not identical – the addition of the trademark KARL STORZ clearly indicates the source of Applicant’s goods. The additional wording in Applicant’s mark results in a different commercial impression.” Appeal Brief, p. 5, 6 TTABVUE 6. To the contrary, it has long been held that “[w]hen … the common part of the marks is identical, purchasers familiar with the registrant’s mark are likely to assume that Serial No. 85801792 - 8 - the house mark simply identifies what had previously been an anonymous source.” In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007) quoting In re Hill- Behan Lumber Company, 102 USPQ 246, 249-250 (TTAB 1978), in which the Board stated that: [F]or purposes herein, the ‘LUMBERJACK’ marks of the parties are identical. In such a situation, the addition of applicant's house mark ‘HILL-BEHAN'S’ thereto is not deemed sufficient to distinguish the marks as a whole and to avoid confusion in trade. This is especially so when one considers that a trademark or a service mark identifies an anonymous source so that the average consumer in the marketplace is, more often than not, unaware of the producer of the goods sold under a mark and often doesn't care, so long as the quality of the goods identified by the mark remains the same. Thus, if those individuals familiar with registrant's ‘LUMBERJACK’ products were to encounter ‘HILL-BEHAN'S LUMBER JACK’ stores at which lumber products are sold, there is nothing to preclude them from assuming that ‘HILL-BEHAN’ is the source of the ‘LUMBERJACK’ products and has established retail outlets to market them. Whether it be confusion of source or sponsorship, the likelihood of such confusion is there and, as a consequence, registrant's registered mark is a bar to the registration sought by applicant. Similarly, in this case, Applicant’s and Registrant’s marks consist of the identical word PARACHUTE, and Applicant’s mere addition of its house mark, KARL STORZ, is not sufficient to distinguish the marks as a whole or to avoid confusion. Rather, the addition of Applicant’s house mark may exacerbate confusion. Accordingly, we find that the marks are similar and that the first du Pont factor also favors a finding of likelihood of confusion. Serial No. 85801792 - 9 - C. Conditions under which and buyers to whom sales are made. Applicant contends that the purchasers of medical apparatus are highly sophisticated and less prone to confusion. We agree that medical implants and apparatus are unlikely to be impulse purchases and the purchasers thereof would be sophisticated. Thus, we find that the sixth du Pont factor weighs against a finding of likelihood of confusion. However, the legally identical nature of the Class 10 goods, complementary nature of the Class 16 goods and the similarity between the marks outweighs the impact of this factor. Moreover, because “the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. Human memories even of discriminating purchasers . . . are not infallible.” In re Research and Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). D. Conclusion. After considering all of the evidence properly of record and arguments pertaining to the du Pont likelihood of confusion factors, we find that there is a likelihood of confusion between Applicant’s applied-for and Registrant’s registered mark. Decision: The refusal to register Applicant’s mark KARL STORZ PARACHUTE for goods in Classes 10 and 16 is affirmed. Copy with citationCopy as parenthetical citation