Medtronic, Inc.Download PDFTrademark Trial and Appeal BoardNov 25, 2009No. 77278969 (T.T.A.B. Nov. 25, 2009) Copy Citation 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. Copy with citationCopy as parenthetical citation