Medtronic, Inc.

Trademark Trial and Appeal Board

Nov 25, 2009

No. 77278969 (T.T.A.B. Nov. 25, 2009)

Mailed:
Nov. 25, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Medtronic, Inc.
________

Serial No. 77278969
_______

Carrie L. Rosenberry of Fredrikson & Byron, P.A. for
Medtronic, Inc.

Edward Fennessy, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Grendel, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION
Medtronic, Inc., (“applicant”) seeks registration on
the Principal Register of the mark CLOSURE (in standard
character form) for goods identified in the application as
“surgical implants comprising artificial materials and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77278969
2
associated surgical instrument sets for use in atrial
occlusion procedures.”1
The Trademark Examining Attorney has issued final
refusals of registration of applicant’s mark on two
grounds, i.e., mere descriptiveness under Trademark Act
Section 2(e)(1), 15 U.S.C. §1052(e)(1), and likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).2
Applicant and the Trademark Examining Attorney have
filed main appeal briefs.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the Section 2(e)(1)
mere descriptiveness refusal, and we affirm the Section
2(d) likelihood of confusion refusal.

MERE DESCRIPTIVENESS REFUSAL

A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section

1 Serial No. 77278969, filed on September 13, 2007. The
application is based on applicant’s asserted bona fide intent to
use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

2 As discussed below, the Section 2(d) refusal is based on
previous Principal Register Registration No. 2236135, which is of
the mark CLOSURE (in standard character form) for goods
identified in the registration as “medical devices, namely,
intravascular catheters.”

Ser. No. 77278969
3
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
Ser. No. 77278969
4
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
“On the other hand, a mark is suggestive if, when the
goods or services are encountered under the mark, a
multistage reasoning process, or the utilization of
imagination, thought or perception, is required in order to
determine what attributes of the goods or services the mark
indicates.” In re On Technology Corp., 41 USPQ2d 1475,
1477 (TTAB 1996) (internal citations omitted). “As has
often been stated, there is a thin line of demarcation
between a suggestive mark and a merely descriptive one,
with the determination of which category a mark falls into
frequently being a difficult matter involving a good
measure of subjective judgment.” Id.
The burden initially is on the Office to make a prima
facie showing that the mark is merely descriptive. Where
doubt exists as to whether the mark is merely descriptive,
such doubt is to be resolved in applicant’s favor. In re
Box Solutions Corp., 79 USPQ2d 1954, 1955 (TTAB 2006).
Ser. No. 77278969
5
Applying these principles in the present case, we find
as follows.
Applicant’s goods are identified in the application as
“surgical implants comprising artificial materials and
associated surgical instrument sets for use in atrial
occlusion procedures.”
The evidence of record includes the following
definitions of relevant terms.
“Atrial” is defined as “pertaining to an atrium.”
“Atrium” is defined as “a chamber used in anatomical
nomenclature to designate a chamber affording entrance to
another structure or organ. Usually used alone to
designate an atrium of the heart.” (www.biology-
online.org/dictionary; Feb. 19, 2009 Office action.)
“Occlusion” is defined as “the act of occluding.”
“Occlude” is defined as “to close, obstruct or prevent the
passage.” (www.medterms.com; June 20, 2008 response.)
“Closure” is defined generally as “an act or process
of closing. A device that closes or seals.” (Compact
Oxford English Dictionary; June 20, 2008 response.)
Specifically in the medical context, “closure” is defined,
inter alia, as “occlusion, obstruction ...” (Dorland’s
Medical Dictionary for Health Consumers,
www.mercksource.com; Feb. 23, 2009 Office action.)
Ser. No. 77278969
6
In its brief (at p. 8), applicant explains that its
implant is used “to constrict the left atrial appendage to
lower the risk of stroke in patients with atrial
fibrillation.” Applicant’s product insert (submitted as an
exhibit to applicant’s June 20, 2008 response) states that
“[t]he Cardioblate® Closure™ device is indicated for the
occlusion of the left atrial appendage. The device is
indicated for use under direct or endoscopic visualization
in an open chest or minimally invasive surgical procedure.”3

3 As corroboration of and as further background and context for
applicant’s explanation of the nature of its goods, we take
judicial notice of an article from The New England Journal of
Medicine (Volume 360:2601-2603 Number 25 (June 18, 2009),
accessed at content.nejm.org/cgi/content/full/360/25/2601)). The
article is entitled “Left Atrial Appendage Occlusion – Closure or
Just the Beginning?” The factual information in the article,
which is consistent with applicant’s explanation of its goods,
includes the following:

More than 3 million Americans have atrial
fibrillation, which increases their risk of stroke by
a factor of 5. Patients with atrial fibrillation
account for one of every six strokes, and
thromboemboli originating from the left atrial
appendage are the suspected culprit in the vast
majority of these cases. ... Efforts have been made
to develop alternative treatment strategies –
including occlusion of the left atrial appendage. ...
Interest in nonsurgical closure of the left atrial
appendage has spawned development of percutaneous
devices, but no device has been approved by the FDA
for this purpose. ...

We find that this general information about left atrial appendage
occlusion is appropriate for judicial notice because it is
capable of accurate and ready determination by resort to a source
whose accuracy cannot reasonably be questioned, i.e., The New
England Journal of Medicine. See Fed. R. Evid. 201(b)(2),
Ser. No. 77278969
7
Applicant contends that CLOSURE is not merely
descriptive, but only suggestive, of its goods. In
response to the Trademark Examining Attorney’s requirement
(under Trademark Rule 2.61(b), 37 C.F.R. §2.61(b)) for
information as to whether CLOSURE has any meaning in
connection with applicant’s goods, applicant stated:
“Applicant submits that the term CLOSURE does not have
relevant significance in connection with Applicant’s
products, although Applicant’s products are used to occlude
or ‘close’ atrial appendages.” (June 20, 2008 response).
In its brief at pages 19-20, applicant argues that CLOSURE
is not merely descriptive of its goods because
[t]he industry term for the procedures and tasks
performed using Applicant’s products is atrial
occlusion. While the medical definition of
“occlusion” includes terms like “close,”
“obstruct” and “prevent,” the mark CLOSURE does
not “merely describe” the goods in the minds of
the relevant audience. This audience has been
trained to learn and use clinical terms in the
course of their jobs to accurately communicate
the nature of medical procedures and illnesses.
As a result, a lazy term like “closure” is not
the normal manner in which this audience would
understand Applicant’s occlusion products. It
would be a significant mental leap for this
audience to get from “atrial occlusion” to
“closure.”

201(c). Cf. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
And again, the information is consistent with applicant’s
explanation of the nature of its goods.

Ser. No. 77278969
8
We find that the evidence of record belies
applicant’s argument. As noted above, there is medical
dictionary evidence of record which shows that “closure” is
specifically defined as “occlusion.” Moreover, the record
establishes that in the specific context of left atrial
appendage occlusion procedures, “closure” commonly is used
together with and as a synonym for “atrial occlusion.”
Applicant itself has submitted (with its March 31,
2009 response) an article from the medical journal American
Heart Journal (2005; 150(2): 288-293, accessed via
www.medscape.com) which shows merely descriptive use of the
term “closure” in connection with left atrial appendage
occlusion. The article is entitled “Left Atrial Appendage
Occlusion Study (LAAOS): Results of a Randomized
Controlled Pilot Study of Left Atrial Appendage Occlusion
During Coronary Bypass Surgery in Patients at Risk for
Stroke.” One of the section headings in the article is
“Factors Influencing Closure Success.” The “Discussion”
section of the article states: “This is the first
randomized study of LAA occlusion. It shows that surgical
closure of the LAA is safe and can be performed at the time
of CABG without significantly prolonging the length of
surgery. ... Surgical closure of the LAA has been
performed for years... Achieving complete LAA occlusion
Ser. No. 77278969
9
requires careful attention to technique. A previous study
of endocardial closure of the LAA at the time of mitral
valve surgery...” (Emphasis added.)
The Trademark Examining Attorney has submitted a
medical journal article from Nature Clinical Practice
Cardiovascular Medicine (Vol. 3 No. 8 2006 456, 459,
accessed at www.nature.com/ncpcardio/journal) entitled
“Percutaneous left atrial appendage closure in a patient
with atrial fibrillation.” (Emphasis added.) (Feb. 19,
2009 Office action.)
The Trademark Examining Attorney also has submitted an
article from Health & Medicine Week (October 15, 2007)
(accessed at NewsRx.com & NewsRx.net) stating that “Dr.
Sievert was the first physician to close a left atrial
appendage percutaneously. He has the most experience in
the world in catheter closure of heart defects in
adults...” (Emphasis added.) (Feb. 19, 2009 Office
action.)
Additionally, as noted above, it appears from
counsel’s explanation in applicant’s brief and from the
product insert for applicant’s product that applicant’s
actual product is intended for a specific procedure, left
atrial appendage occlusion. However, applicant’s
identification of goods is not so limited. The goods are
Ser. No. 77278969
10
identified more broadly as “for use in atrial occlusion
procedures,” which would appear to include not only left
atrial appendage occlusion procedures but also procedures
involving the occlusion or closure of atrial defects,
generally. The Trademark Examining Attorney’s evidence
showing use of the term “closure” in connection with
“atrial septal defect closure” procedures supports a
finding that CLOSURE is merely descriptive as applied to
the goods, as they are identified in the application. This
evidence includes (emphasis added):
- A page from the website of The Wellington
Hospital (www.thewellingtoncardiacservices.com) identifies
one of its invasive cardiology procedures as “Patent
Foramen Ovale occlusion (PFO closure)” with the following
text: “Atrial Septal Defect (ASD) is a hole in the heart,
specifically in the wall separating the left and right
atria. ... Surgical closure is very effective but carries
higher risks of morbidity and other complications related
to surgery as well as increased hospital stays. Closure
can also be performed trans luminally using a catheter
device called a Septal Occluder.” (Feb. 19, 2009 Office
action.)
- An article from the medical journal Heart
(1996 January, 75(1): 83-88, accessed via
Ser. No. 77278969
11
www.pubmedcentralnih.gov) entitled “Transcatheter closure
of secundum atrial septal defects with the atrial septal
defect occlusion system (ASDOS): initial experience in
children.” (Feb. 19, 2009 Office action.)
- A page from the website of AGA Medical
Corporation (www.amplatzer.com), identifying its product
“AMPLATZER® Septal Occluder for Atrial Septal Defect
Closure.” “AGA Medical introduced the AMPLATZER® Septal
Occluder, the first catheter delivered atrial septal
closure device.” (Feb. 19, 2009 Office action.)
- A product listing at www.bio-medicine.org for
“CARDIA Atrial Septal Defect Closure Device”: “The CARDIA
ASD Occluder has been developed for the transvenous closure
of atrial septal defects. Introduced through transseptal
venous sheaths the device offers a safe and reliable method
for the percutaneous closure of ASD’s with a super low
profile.” (April 29, 2009 Office action.)
- An article from The Journal of Invasive
Cardiology (Vol. 15 No. 7 (July 5, 2003), at
www.invasivecardiology.com) entitled “Catheter Closure of
Atrial Septal Defects”: “... Transcatheter closure of
atrial septal defects using various devices is now an
established practice in most cardiac centers. These
techniques have proven to be safe, cost-effective and
Ser. No. 77278969
12
favorably compare with surgical closure.” (Feb. 19, 2009
Office action.)
- A page from the website of Cedars-Sinai Heart
Institute (www.csmc.edu) entitled “Trans-Catheter Closure
of Holes in the Heart,” which includes the text: “When a
person has abnormal holes in his or her heart – a condition
known as atrial septal defect and patent foramen ovale – a
transcatheter closure device can help close them up. ...
The transcatheter closure device – typically a single or
double wire frame covered by fabric – is placed in the
heart through a catheter (tube) that is inserted through a
vein in the groin.” (Feb. 19, 2009 Office action.)
Based on this evidence, we find that the term CLOSURE
readily would be perceived by relevant purchasers,
including doctors and surgeons, as merely describing the
purpose and function of applicant’s goods, i.e., that the
goods are used to enable and effect “closure” of atrial
defects during atrial occlusion procedures, including left
atrial appendage occlusion procedures. As applied to
applicant’s goods, “closure” would have no other
significance. Contrary to applicant’s argument, the
evidence shows that, in connection with atrial occlusion
procedures, “closure” and “occlusion” are merely
descriptive synonyms used together and interchangeably.
Ser. No. 77278969
13
Applicant argues at page 20 of its brief “... that
consumers are not likely to interpret the term CLOSURE as a
descriptive reference to Applicant’s “atrial occlusion.”
Rather, Applicant’s consumers will recognize the term as an
effort to suggest images of some form of “closure” or
finality in connection with a heart problem.” Given the
clear evidence of the use and significance of the term
“closure” in connection with atrial occlusion procedures,
we find this argument to be unpersuasive.
Applicant also argues that its mark should not be
found to be merely descriptive because the registration
which is the basis of the Trademark Examining Attorney’s
Section 2(d) refusal in this case (see below), which is of
the mark CLOSURE for “medical devices, namely intravascular
catheters,” was registered on the Principal Register and
thus was deemed not to be merely descriptive. However,
regardless of the degree of descriptiveness of the term
CLOSURE might be as applied to the goods identified in the
cited registration, it is settled that our mere
descriptiveness determination in this case must be based on
the evidence of record in this case. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). We
find that the evidence in this case clearly establishes
Ser. No. 77278969
14
that CLOSURE is merely descriptive of the goods identified
in applicant’s application.
For these reasons, we affirm the refusal to register
based on mere descriptiveness under Section 2(e)(1).

SECTION 2(d) REFUSAL
We turn next to the Trademark Examining Attorney’s
Section 2(d) likelihood of confusion refusal. The
Trademark Examining Attorney has refused registration on
the ground that applicant’s mark CLOSURE, as applied to the
goods identified in the application, so resembles the mark
CLOSURE, previously registered on the Principal Register
(in standard character form) for goods identified in the
registration as “medical devices, namely, intravascular
catheters,”4 as to be likely to cause confusion, to cause
mistake, or to deceive.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.

4 Reg. No. 2236135, issued on March 30, 1999. Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
Ser. No. 77278969
15
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In each case, we need
consider and weigh only those factors as to which there is
pertinent evidence of record. See In re Majestic
Distilling Co., 315 F.3d at 1315, 65 USPQ2d at 1204 (“Not
all of the DuPont factors may be relevant or of equal
weight in a given case, and ‘any one of the factors may
control a particular case,’” quoting In re Dixie
Restaurants, Inc., 105 F.3d at 1406-07, 41 USPQ2d at 1533);
In re National Novice Hockey League, Inc., 222 USPQ 638
(TTAB 1984).
Under the first du Pont factor, we determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
We find that applicant’s mark CLOSURE is identical to the
cited registered mark CLOSURE in terms of appearance,
sound, connotation and commercial impression, and that the
first du Pont factor weighs heavily in favor of a finding
of likelihood of confusion.
Ser. No. 77278969
16
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration,
respectively. In comparing the goods, “... it is the
identification of goods that controls, not what extrinsic
evidence may show about the specific nature of the goods.
... An applicant may not restrict the scope of the goods
covered in the cited registration by argument or extrinsic
evidence.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008).
It is settled that it is not necessary that the
respective goods be identical or even competitive in order
to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is
not whether consumers would confuse the goods themselves,
but rather whether they would be confused as to the source
of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB
1984). The goods need only be sufficiently related that
consumers would be likely to assume, upon encountering the
goods under similar marks, that the goods originate from,
are sponsored or authorized by, or are otherwise connected
to the same source. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
Ser. No. 77278969
17
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
Finally, in cases such as this where the applicant’s
mark is identical to the cited registered mark, the degree
of relatedness between the respective goods necessary to
support a finding of likelihood of confusion declines;
there need be only a viable relationship between the goods.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001); and In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
Applying these principles in the present case, we find
as follows.
First, applicant (with its January 14, 2009 request
for reconsideration) has submitted evidence from the
website of the owner of the cited registration purporting
to show that registrant’s actual goods are intravascular
catheters which are specifically used in surgical
procedures for the treatment of varicose veins. In
contrast, applicant argues, its goods are highly
specialized goods used for a specific and new cardiac
surgery procedure. Applicant argues that “[t]rained
medical personnel and purchasing staff would never consider
the source of a surgical implant for a cardiac procedure to
Ser. No. 77278969
18
come from the same entity as a tool used in a cosmetic
procedure – the treatment of varicose veins.” (Applicant’s
brief at 7.)
As noted above, however, our comparison of the goods
under the second du Pont factor must be based on the goods
as they are identified in the cited registration,
regardless of what any extrinsic evidence might show
registrant’s actual goods to be. Registrant’s goods are
identified without limitation as “intravascular catheters,”
and it is those goods as identified to which we compare
applicant’s goods under the second du Pont factor. In re
La Peregrina, supra, 86 USPQ2d at 1646.
The record shows that catheters, including
intravascular catheters, are or may be used together with
surgical implants in a cardiac surgical procedure,
including an atrial occlusion procedure. In its brief (at
page 8), applicant acknowledges that “[b]ecause
intravascular catheters vary by type and function, there is
a chance that an intravascular catheter might be used
during a surgical procedure in which a patient is
undergoing atrial appendage occlusion.” The Trademark
Examining Attorney has submitted evidence showing that
catheters are used in atrial occlusion procedures as a
means of delivering or deploying atrial occlusion devices
Ser. No. 77278969
19
and implants to the appropriate position in the heart. For
example:
W.L. Gore & Associates (Gore) announced that the
U.S. Food & Drug Administration (FDA) granted
approval for the GORE HELEX Septal Occluder with
modified catheter delivery system indicated for
the transcatheter closure of atrial septal defect
(ASD). ... The recently approved catheter-based
delivery system allows for easier device
deployment via standard femoral venous access,
bringing the GORE HELEX Septal Occluder to the
forefront of non-surgical ASD repair.

Litigation & Law Weekly, October 19, 2007. (Feb. 19, 2009
Office action.)
When a person has abnormal holes in his or her
heart – a condition known as atrial septal defect
and patent foramen ovale – a transcatheter
closure device can help close them up. ... The
transcatheter closure device – typically a single
or double wire frame covered by fabric – is
placed in the heart through a catheter (tube)
that is inserted through a vein in the groin.

Cedars-Sinai Heart Institute (www.csmc.edu). (Feb. 19,
2009 Office action.)
The company also serves the pediatric
interventional cardiologist with a broad range of
cardiac septal repair implants delivered with
nonsurgical catheter techniques.

Surgery Litigation & Law Weekly, Sept. 28, 2007. (Feb. 19,
2009 Office action.)
AGA Medical introduced the AMPLATZER® Septal
Occluder, the first catheter delivered atrial
septal closure device.

Ser. No. 77278969
20
AGA Medical Corporation (www.amplatzer.com). (Feb. 19,
2009 Office action.)
Method and device for left atrial appendage
occlusion: A device and method for obliterating
or occluding a body cavity or passageway, in
particular, the left atrial appendage of a
patient’s heart. The procedure can be carried
out intraoperatively, but is preferably carried
out percutaneously by use of a delivery catheter
to position an occluding device adjacent a
patient’s left atrial appendage.

(www.eipa-patents.org). (Feb. 19, 2009 Office action.)
Catheter Closure of Atrial Septal Defects ...
Transcatheter closure of atrial septal defects
using various devices is now an established
practice in most cardiac centers.

The Journal of Invasive Cardiology (Vol. 15 No. 7 July 5,
2003) (www.invasivecardiology.com). (Feb. 19, 2009 Office
action.)
Applicant is correct in arguing that this evidence
showing that catheters and atrial occlusion devices are
used together and complementarily in atrial occlusion
surgery procedures is not dispositive on the issue of the
relatedness of the goods. However, we find that the
complementary nature of the goods in this case certainly is
evidence which supports a finding that the respective goods
are related for purposes of the second du Pont factor.
Moreover, to the extent that a catheter might be deemed to
be an “instrument” used in atrial occlusion procedures,
Ser. No. 77278969
21
catheters could be encompassed by that portion of
applicant’s identification of goods reading “associated
surgical instrument sets for use in atrial occlusion
procedures.”
Further supporting a finding that the respective goods
are related is the Trademark Examining Attorney’s evidence
from applicant’s website showing that applicant itself
manufactures and markets catheters, i.e., “Medtronic
Intrathecal Catheters,” “Attain Select Guide Catheters,”
and “Attain Deflectable Catheter Delivery System.” (July
14, 2008 Office action.)
We also accord some probative weight to the Trademark
Examining Attorney’s evidence of third-party, use-based
registrations which include in their identifications of
goods both surgical implants and catheters. Although such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they
serve to suggest that the goods listed therein are of a
kind which may emanate from a single source under a single
mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988). These third-party registrations
Ser. No. 77278969
22
(submitted with the July 14, 2008 Office action) include
the following:
- RN 3024421: ENOVUS “medical devices and
apparatus intended for the treatment of vascular
disease, namely, various goods including
“vascular implants comprising artificial
material”; “vascular implant delivery systems
comprised of catheters, valves, guide wires…”

- RN 3177676: POWERPORT for “Medical
apparatus, namely, catheters, subcutaneous
surgical implants comprising artificial
materials, and parts and fittings for the
aforesaid goods.”

- RN 3455166: VIACOR for “surgical apparatus
for treating disorders of the circulatory system,
namely, surgical implants consisting of
artificial materials for reshaping anatomical
structures; and catheters.”

- RN 3248106: OPTIFLEX for “detachable
connectors for attaching catheters to implants
for use in vascular embolization.”

- RN 3248300: QUADRABLOC for “octapolar
magnetic arrays of alternating polarity, used as
components of medical devices, catheters and
surgical implants comprising artificial material,
that cause a therapeutic effect on cellular
function for use in treating a wide variety of
medical conditions and diseases.”

- RN 3317397: DESIGN MARK for “Disposable
and implantable medical devices,
namely...intravascular arterial and venous
catheters; surgical implants comprising
artificial materials” for use in various medical
fields including cardiology and surgery.

Applicant argues that these registrations are not
probative because they do not cover applicant’s specific
type of surgical implants. However, we find that the
Ser. No. 77278969
23
registrations nonetheless are probative to the extent that
they show that surgical implants which are used for other
and equally specialized types of surgeries can originate
from the same source as catheters.
Applicant argues (brief p.9) that its goods and the
registrant’s goods are “different enough in nature,
technology, government-mandated testing, performance,
purpose and cost” that purchasers would “perceive the
differences in these goods as indicating a different
source. The type of technical skill, research and design
capabilities, metallurgical expertise and medical knowledge
needed to create a new technology like a surgical implant
and instrument set for occluding atrial appendages and
bring it to market is miles away from the technology and
expertise needed to produce and sell a commodity product
like intravascular catheters.”
As noted above, however, the test is not whether
purchasers would confuse the goods, but whether purchasers
would be confused as to the source of the goods. Applicant
has presented no evidence to support a finding that
purchasers necessarily would assume that the maker of
highly specialized and technical medical devices would not
be the maker of catheters as well. Indeed, applicant’s
Ser. No. 77278969
24
argument is undercut by the fact that applicant itself is a
source of both types of products.
Finally, as noted above, in cases where the
applicant’s mark is identical to the cited registered mark,
the degree of similarity between the respective goods that
is required to support a finding of likelihood of confusion
declines; there need be only a viable relationship between
the goods. See In re Opus One Inc., supra, 60 USPQ2d at
1815. In this case where applicant’s mark is identical to
the cited registered mark, we find that the requisite
viable relationship between the goods has been established.
Accordingly, we find that the second du Pont factor weighs
in favor of a finding of likelihood of confusion.
Under the third du Pont factor, we consider the
similarity or dissimilarity of the channels of trade in
which and the classes of purchasers to whom applicant’s and
registrant’s goods are marketed. Because neither
applicant’s identification of goods nor the identification
of goods in the cited registration includes any
restrictions or limitations as to trade channels or
purchasers, we presume that the respective goods are or
would be marketed in all normal trade channels and to all
normal classes of purchasers for these goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Ser. No. 77278969
25
As is asserted by applicant at page 7 of its brief,
we find that the normal classes of purchasers of
applicant’s and registrant’s goods would include surgeons
and other physicians, and hospital purchasing personnel.
There is no direct evidence in the record showing what
the normal trade channels for these goods are. The only
potentially probative evidence on this question is found in
the March 15, 2006 Congressional testimony of Mina Ubbing,
President and CEO of Fairfield Medical Center, regarding
hospital group purchasing practices. (June 20, 2008
response.) This evidence was submitted by applicant in
support of its argument regarding the sophistication of
purchasers and we shall discuss it below in our analysis of
that issue. For now, we note that Ms. Ubbing stated that
at least with respect to new devices or technology, such
goods could “come[] to us at the request of a physician,
through a trade show, through the recommendation of an
outside consultant, or through a direct appeal from the
potential vendor...”. It appears from her testimony that
the goods also could be purchased by the hospital through
hospital group purchasing organizations.
However, whatever the actual or normal trade channels
are, we reasonably assume that to the extent that
applicant’s goods and registrant’s goods, as identified in
Ser. No. 77278969
26
the application and in the registration, both are surgical
devices, they would be marketed in the same manner and in
the same trade channels to the same purchasers, including
to the same hospital surgery departments. This case thus
is distinguishable from the case applicant relies on, Astra
Pharmaceutical Products, Inc. V. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983), in which the
respective goods (pharmaceuticals and chemistry laboratory
machines) would be marketed to different and unrelated
hospital departments, i.e., pharmacy departments and
laboratory departments.
Applicant contends in its brief that the respective
goods are marketed solely by means of in-person sales calls
to prospective purchasers by applicant’s and registrant’s
sales representatives, but there is no evidence to support
that contention. Applicant also contends that its device
is currently the subject of a clinical trial, and it
therefore is “available only for use under this particular
circumstance.” (Applicant’s brief at p. 8.) However, no
such limitation appears in applicant’s identification of
goods, and we must presume that applicant’s product
eventually will be approved for use and sale in all normal
trade channels for such goods. See, e.g., Alfacell Corp.
v. Anticancer Inc., 71 USPQ2d 1301, 1305 (TTAB 2004).
Ser. No. 77278969
27
For these reasons, we find that the trade channels and
classes of purchasers for applicant’s and registrant’s
goods are similar. The third du Pont factor weighs in
favor of a finding of likelihood of confusion.
Under the fourth du Pont factor, we consider the
conditions of purchase, including the sophistication of
purchasers and the degree of care exercised in the
purchasing decision. Applicant contends that its goods are
very expensive, but there is no evidence to support that
contention. As noted above, applicant has submitted (June
20, 2008 response) the March 15, 2006 testimony of Mina
Ubbing, President and CEO of Fairfield Medical Center,
before the Senate Judiciary Committee, Subcommittee on
Antitrust, Competition Policy and Consumer Rights,
“Hospital Group Purchasing: Are the Industry’s Reforms
Sufficient to Ensure Competition?”: The testimony
includes:
Purchasing decisions are driven by a variety of
factors, including clinician preferences, our own
comfort level with certain products and services;
and that the knowledge that our purchase is cost-
effective, not just low-cost. Indeed, when we
consider whether to purchase a new device or
innovative technology, we rely on a wide array of
resources to guide our decision. We may seek
input from clinicians, outside experts,
manufacturers, government agencies, consulting
firms and our GPO [group purchasing organization]
each time we contemplate acquiring something
new…. Whether the technology comes to us at the
Ser. No. 77278969
28
request of a physician, through a trade show,
through the recommendation of an outside
consultant, or through a direct appeal from the
potential vendor, we subject the proposed
purchase to a 16-point “Value Inspection,” an
analysis we perform ourselves to measure the
value of the product and its ability to meet
clinical needs cost-effectively.

Based on this evidence, we find that the purchasers of
applicant’s and registrant’s goods, i.e., physicians,
surgeons and hospitals, are likely to be relatively
knowledgeable about the goods at issue in this case and
careful in their purchasing decisions. However, we also
find that such knowledge and care as to these products
would not necessarily prevent purchaser confusion as to the
source of these related goods when they are sold under
identical marks. We certainly cannot conclude, as
applicant argues, that these purchasers would be “immune”
to source confusion arising from use of identical marks on
these related and complementary surgical goods. See
Alfacell Corp. v. Anticancer Inc., supra, 71 USPQ2d 1301,
1306; In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Merck
& Co., 189 USPQ 355 (TTAB 1975).
For these reasons, we find that the fourth du Pont
factor weighs against a finding of likelihood of confusion,
but we do not find that is dispositive, as applicant
contends.
Ser. No. 77278969
29
Finally, under the sixth du Pont factor, we consider
evidence pertaining to the number and nature of similar
marks on similar goods. We find that there is no such
evidence in this case. Applicant bases its argument under
this factor on its claim that there are over 150 third-
party registrations of marks which include some form of the
word CLOSURE “for various goods and services.” However,
applicant made of record only three such registrations, and
even those involve marks that are different in their
entireties from the cited registered mark and goods which
are not similar to the surgical goods at issue in this
case. Moreover, it is settled that third-party
registrations alone are not competent evidence of third-
party use under the sixth du Pont factor. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). We find on this record that there is no
evidence of third-party use which would significantly
lessen the scope of protection to which the cited
registered mark is entitled. Thus, we find that the sixth
du Pont factor is neutral in this case.
We have carefully considered all of the evidence of
record in this case as it pertains to the du Pont
likelihood of confusion factors, as well as all of
applicant’s arguments (including any evidence or arguments
Ser. No. 77278969
30
not specifically discussed in this opinion). We conclude
that a likelihood of confusion exists, primarily in view of
the identical nature of the marks and the relatedness of
the respective surgical devices identified in the
application and the registration. Applicant’s arguments to
the contrary are not persuasive. To the extent that any
doubts might exist as to the correctness of our likelihood
of confusion determination, we resolve such doubts, as we
must, against applicant. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984).

Decision: The Section 2(e)(1) mere descriptiveness
refusal is affirmed. The Section 2(d) likelihood of
confusion refusal is affirmed.