Synthes (U.S.A.)v.Cypress Medical Products, L.P.

Trademark Trial and Appeal Board

Aug 18, 2004

No. 92031730 (T.T.A.B. Aug. 18, 2004)

Mailed:
August 18, 2004
Paper No. 23
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Synthes (U.S.A.)
v.
Cypress Medical Products, L.P.
_____
Opposition No. 91123720
Cancellation No. 92031730
_____
Nancy Zoubek of Jones Day for Synthes (U.S.A.).1
Jeffrey A. Pine of Baniak Pine & Gannon for Cypress Medical
Products, L.P.
_____
Before Hairston, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
INTRODUCTION
The above-captioned opposition and cancellation
proceedings were consolidated by order of the Board dated
1 The Board has ascertained that, subsequent to the completion of
the briefing of these cases, opposer/petitioner’s counsel, Ms.
Zoubek, moved to a new firm, i.e., Jones Day. (She was with
Pennie & Edmonds during litigation of these proceedings.)
Although no written notification of the change of address was
filed, to expedite matters the Board has updated its records for
opposer/petitioner’s correspondence address as follows: Nancy
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91123720 and Cancellation No. 92031730
2
September 30, 2002. Synthes (U.S.A.) is the opposer and
petitioner in the respective cases, and in this decision we
shall refer to it as opposer/petitioner or as plaintiff.
Cypress Medical Products, L.P. is the applicant and the
respondent in the respective proceedings, and in this
decision we shall refer to it as applicant/respondent or as
defendant. Because the opposition and the cancellation
involve the same parties and common questions of law and
fact, we shall decide them both in this single opinion,
which shall be entered in both proceeding files.
In the application involved in the opposition
proceeding, defendant seeks registration on the Principal
Register of the mark SYNTHESIS PF (in typed form) for Class
10 goods identified in the application as “disposable gloves
for medical use.”2 Defendant’s registration, involved in
the cancellation proceeding, is of the mark SYNTHESIS (in
typed form), and is likewise for “disposable gloves for
medical use.”3
Zoubek, Jones Day, 222 East 41st St., New York NY 10017-6702.
Applicant’s counsel should do likewise.
2 Application Serial No. 75909304, filed February 3, 2000. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), and January 5, 1998 is alleged
in the application as the date of first use of the mark anywhere
and the date of first use of the mark in commerce. Defendant has
disclaimed the exclusive right to use PF apart from the mark as
shown; the evidence shows that PF stands for “powder free.”
(Sabatka Depo. at 12, 26.)
3 Registration No. 2371569, which issued on July 25, 2000 from an
application filed on May 20, 1998. In the registration, December
Opposition No. 91123720 and Cancellation No. 92031730
3
On January 25, 2001, plaintiff filed a notice of
opposition to defendant’s pending application and a separate
petition to cancel defendant’s registration, asserting in
both cases a Section 2(d) claim of priority and likelihood
of confusion as its ground for opposition and cancellation,
respectively. Trademark Act Section 2(d), 15 U.S.C.
§1052(d).4 Specifically, plaintiff alleged that it is the
prior user of the trade name and trademark SYNTHES on or in
connection with instruments and apparatus for surgical,
medical and veterinary purposes; that it is the owner of
Registration No. 999397, which is of the mark SYNTHES (in
typed form) for Class 10 goods identified in the
registration as “instruments and apparatus for surgical,
medical, and veterinary purposes solely for bone surgery,
namely, instruments and implants for osteosynthesis,
including bone screws, bone nails, bone plates and splints;
18, 1997 is alleged as the date of first use of the mark anywhere
and the date of first use of the mark in commerce.
4 In both cases, plaintiff also pleaded a claim of dilution under
Trademark Act Section 43(c), 15 U.S.C. §1125(c). However,
plaintiff presented no argument in support of a dilution claim in
either its main brief or its reply brief, and we therefore deem
plaintiff to have waived this pleaded ground in both cases.
Additionally, in the “Statement of the Issues” sections of its
main briefs in the opposition and cancellation proceedings,
plaintiff states that an issue to be determined is whether
defendant’s marks falsely suggest a connection with plaintiff.
Because no such Section 2(a) ground (15 U.S.C. §1052(a)) was
pleaded or tried, and because plaintiff’s briefs include no
further argument as to such ground in any event, we have given
this issue no consideration.
Opposition No. 91123720 and Cancellation No. 92031730
4
injection needles, and gum plates”;5 and that each of
defendant’s marks, as applied to the goods identified in
defendant’s application and registration, so resembles
plaintiff’s trade name and trademark SYNTHES as to be likely
to cause confusion, to cause mistake or to deceive.
Defendant answered the notice of opposition and the
petition for cancellation by denying the salient allegations
thereof.6
At trial, plaintiff submitted the testimony depositions
of its officers Stephen Schwartz (Senior Vice-President) and
Michele Zaborowski (Comptroller) and the exhibits thereto;
the testimony deposition (under subpeona) of Thresa Waite
(defendant’s Director of Marketing) and the exhibits
thereto; and, under Notice of Reliance, a status and title
copy of its pleaded Registration No. 999397, and copies of
the file histories for registrations of various other marks
which are owned by defendant. For its part, defendant
submitted the testimony deposition of Timothy Sabatka (its
5 Issued December 10, 1974. Affidavits under Sections 8 and 15
accepted and acknowledged. Renewed for ten years from December
10, 1994.
6 Defendant also pleaded various “affirmative defenses.” Two of
them (i.e., that there is no likelihood of confusion, and that
there is no dilution) are not properly deemed defenses but rather
are mere further denials of plaintiff’s pleaded claims.
Defendant’s “failure to state a claim” defense is without merit,
inasmuch as plaintiff’s pleadings in fact state claims for
relief. Defendant’s pleaded defenses of laches, estoppel,
acquiescence and waiver are not supported by the evidence of
record. Defendant’s allegation that plaintiff is not the owner
of its pleaded mark is likewise not borne out by the record.
Opposition No. 91123720 and Cancellation No. 92031730
5
Chief Financial Officer and Chief Operating Officer) and the
exhibits thereto (including printouts of third-party
registrations and applications from the USPTO’s electronic
database).
The consolidated opposition and cancellation have been
fully briefed, but no oral hearing was requested.
PAPERS IMPROPERLY FILED UNDER SEAL; REDACTED COPIES DUE IN
30 DAYS
A preliminary issue with respect to the record herein
requires discussion. Trademark Rule 2.27(e), 37 C.F.R.
§2.27(e), provides that “when possible, only confidential
portions of filings with the Board shall be filed under
seal.” A similar provision also appears in the parties’ own
protective agreement, and the Board expressly reminded the
parties of this requirement in its order entering that
protective agreement. Despite this requirement, the parties
submitted the above-referenced testimony depositions (with
exhibits), as well as their briefs, entirely under seal.
Such submission of entire filings under seal, including
obviously non-confidential portions thereof, is improper.
The Board telephoned counsel for each party and required
them to resubmit their filings in compliance with Trademark
Rule 2.27(e), i.e., with only the confidential portions
thereof filed under seal.
Opposition No. 91123720 and Cancellation No. 92031730
6
In response, applicant’s counsel has submitted a
properly-redacted copy of the testimony deposition of
Timothy Sabatka (and exhibits thereto). However, applicant
has not submitted a redacted copy of its brief, and opposer
has failed to resubmit any of its filings. To avoid further
delay in issuance of a final decision in these cases, the
Board, in preparing this opinion, has used its best judgment
as to what information in the parties’ papers can reasonably
be deemed to be confidential, and has refrained from
relating such confidential information in the opinion.
However, the parties are allowed until thirty days from
the date of this decision to submit properly redacted copies
of their filings, with only the confidential portions
thereof filed under seal. Such filings may be made
electronically via ESTTA, or may be made on paper or on CD-
ROM in accordance with Trademark Rule 2.126. See generally
TBMP §106.03 (2d ed. rev. 2004). If no such redacted copies
are filed within the time allotted, the filings which
currently are improperly filed entirely under seal shall be
unsealed and entered into the public record of these
proceedings. See Trademark Rule 2.27(a); TBMP §106.03.
DEFENDANT’S MOTION TO STRIKE
As an exhibit to its reply brief, plaintiff submitted
(for the first time) a copy of an assignment document,
Opposition No. 91123720 and Cancellation No. 92031730
7
executed and recorded in 1984, which effects the assignment
of its pleaded Registration No. 999397, inter alia, from
Synthes AG, a Swiss corporation and the original owner of
the registration, to Synthes Ltd. (U.S.A.), apparently
another predecessor in title to plaintiff. Applicant filed
a motion to strike this evidence on the ground that it is
untimely, and plaintiff has contested the motion. In an
interlocutory order, the Board deferred consideration of the
motion until final decision.
We grant defendant’s motion to strike. The evidence
attached to plaintiff’s reply brief was not made of record
during trial, and it therefore cannot be made of record by
attachment to plaintiff’s brief. See TBMP §704.05(b)(2d ed.
rev. 2004), and cases cited therein.7
STANDING
Turning now to the merits of the case, plaintiff has
made of record a status and title copy of its pleaded
Registration No. 999397 which shows that the registration is
extant and is owned by plaintiff. In view thereof, and
7 We note, however, that this 1984 assignment document
essentially is irrelevant to this case. As discussed infra,
plaintiff has made of record a status and title copy (issued in
2002) of the pleaded registration which shows that the
registration currently is extant and is owned by plaintiff,
presumably by virtue of an assignment or assignments which
occurred after 1984. The 1984 document showing a prior link in
the chain of title is neither necessary to plaintiff’s claim of
Opposition No. 91123720 and Cancellation No. 92031730
8
because plaintiff’s likelihood of confusion claim is non-
frivolous, we find that plaintiff has established its
standing to bring these proceedings. See, e.g., Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).
SECTION 2(d) GROUND: PRIORITY
For purposes of the opposition proceeding, priority is
not at issue with respect to the goods identified in
plaintiff’s pleaded registration, i.e., “instruments and
apparatus for surgical, medical, and veterinary purposes
solely for bone surgery, namely, instruments and implants
for osteosynthesis, including bone screws, bone nails, bone
plates and splints; injection needles, and gum plates.” See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). In any event, as to
both the opposition and the cancellation proceedings,
petitioner has proven that it has used SYNTHES in commerce
since 1975, both as a trade name and as a trademark on the
goods identified in its registration and on various
accessory and ancillary goods (such as storage cabinets and
trays, power tools used for bone surgery, etc.).8 Such use
current ownership of the registration, nor (contrary to
defendant’s contention) does it rebut that claim of ownership.
8 Defendant contends that plaintiff’s evidence shows use of the
mark on catalogs only, and fails to show affixation of the mark
to the goods themselves. Defendant argues that plaintiff’s use
Opposition No. 91123720 and Cancellation No. 92031730
9
predates defendant’s application filing dates and its
alleged dates of first use. We therefore find that to the
extent that priority is at issue in these cases, plaintiff
has established such priority for purposes of both the
opposition proceeding and the cancellation proceeding.
SECTION 2(d) GROUND: LIKELIHOOD OF CONFUSION
The remaining issue for determination is whether
plaintiff has established that defendant’s marks, as applied
to the goods identified in the involved application and
registration, so resembles plaintiff’s registered and/or
previously-used SYNTHES mark and trade name as to be likely
to cause confusion. Our likelihood of confusion
determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to
the likelihood of confusion factors set forth in In re E. I.
of the mark on its catalogs might establish service mark use but
it does not establish trademark use. We are not persuaded.
First, in the absence of any counterclaim for cancellation of
plaintiff’s pleaded registration, the affixation issue is
irrelevant insofar as the goods identified in that registration
are concerned. Second, plaintiff’s catalogs include photographs
of various items, including storage trays for the goods, upon
which the mark has been affixed. Third, as plaintiff notes, the
manner in which its mark is used in its catalogs constitutes
valid technical trademark use, under Lands End, Inc. v. Manbeck,
797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). Finally, even
if we were to assume that the evidence does not establish
technical trademark use by plaintiff, we find that it certainly
is evidence of prior use analogous to trademark use and prior
trade name use, both of which suffice to bar registration of
defendant’s marks under Section 2(d) (assuming that likelihood of
confusion also is proven).
Opposition No. 91123720 and Cancellation No. 92031730
10
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). We also must bear in mind that the fame of a
plaintiff’s mark, if it exists, plays a “dominant role in
the process of balancing the DuPont factors.” Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000).
We make the following findings of fact as to each of
the pertinent du Pont factors.
Similarity of the Marks
We first must determine whether defendant’s marks
(SYNTHESIS and SYNTHESIS PF) and plaintiff’s mark (SYNTHES),
when compared in their entireties in terms of appearance,
sound and connotation, are similar or dissimilar in their
overall commercial impressions. The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
Opposition No. 91123720 and Cancellation No. 92031730
11
confusion as to the source of the goods offered under the
respective marks is likely to result. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Initially, we find that in defendant’s mark SYNTHESIS
PF, the dominant feature of the mark is the word SYNTHESIS.
The letters PF, which stand for the descriptive or generic
designation “powder free,” contribute relatively little to
the commercial impression of the mark, either in terms of
appearance, sound or connotation. For this reason, we give
more weight to the dominant feature SYNTHESIS and less
weight to the letters PF when we compare defendant’s mark to
plaintiff’s mark. Although we do not ignore these letters
and instead consider applicant’s mark in its entirety, we
find that the fact that they appear in defendant’s mark but
not in plaintiff’s mark does not suffice to distinguish the
marks in terms of their overall source-indicating commercial
impressions. In re National Data Corp., supra.
Opposition No. 91123720 and Cancellation No. 92031730
12
In terms of appearance, we find that each of
defendant’s marks is more similar than dissimilar to
plaintiff’s mark. The marks share the same seven first
letters (SYNTHES). They differ only in that defendant’s
marks add the letters –IS at the end of SYNTHES, and in that
the mark in defendant’s pending application includes the
descriptive and disclaimed letters PF. We find that these
points of dissimilarity are outweighed by the similarity in
appearance which arises from the presence of SYNTHES at the
start of each of the marks.
In terms of sound, we again find that each of
defendant’s marks is more similar than dissimilar to
plaintiff’s mark. The first (and/or only) word in
defendant’s marks would be pronounced as the word
“synthesis.” The evidence shows that plaintiff prefers to
pronounce its mark as “sinth-aze,” but it is settled that
there is no “correct” pronunciation of trademarks because
the manner in which purchasers will pronounce such marks
cannot be predicted with certainty. See, e.g., In re Great
Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); and In re
Energy Telecommunications & Electrical Association, 222 USPQ
350 (TTAB 1983). Indeed, the evidence shows that
plaintiff’s customers pronounce plaintiff’s mark in a
variety of ways, such as “sinth-eez” or “sinth-ess” or
“sinth-uss.” These last two pronunciations, which are
Opposition No. 91123720 and Cancellation No. 92031730
13
entirely plausible, would be identical to the common
pronunciation of the first two syllables of the word
“synthesis” in defendant’s marks. The final syllable of
that word merely adds to the succession of sibilants spoken
in the first two syllables, and does little to distinguish
the parties’ marks aurally. The letters PF in defendant’s
SYNTHESIS PF mark do not appear and thus would not be
vocalized in plaintiff’s mark, but that difference does not
suffice to distinguish the marks, given the descriptive
significance of those letters as applied to defendant’s
goods. On balance, we find that the marks sound more
similar than dissimilar.
In terms of connotation, we find, again, that the marks
are more similar than dissimilar. Obviously, defendant’s
marks connote the word “synthesis,” i.e., “the composition
or combination of parts or elements so as to form a whole.”
(Webster’s Ninth New Collegiate Dictionary (1990) at 1198.9
We find that plaintiff’s mark SYNTHES would readily be
perceived by purchasers as a truncation or derivative of the
same word, i.e., “synthesis.” The mark consists of the
first seven letters of the word “synthesis,” and it has no
apparent other meaning. This purchaser perception or
9 The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §704.12(a)(2d ed. rev.
2004).
Opposition No. 91123720 and Cancellation No. 92031730
14
understanding is especially likely given the nature of
plaintiff’s goods, which are identified in plaintiff’s
registration as “instruments and implants for
osteosynthesis.”10 (Emphasis added.) The letters PF in
defendant’s SYNTHESIS PF mark connote “powder free,” a
descriptive or generic designation which contributes little
or nothing to the mark’s source-indicating function. Any
dissimilarity in connotation which results from the presence
of those letters in defendant’s mark and their absence from
10 We take judicial notice that “osteosynthesis” is defined as
“internal fixation of a fracture by means of a mechanical device,
such as a pin, screw, or plate.” (Stedman’s Medical Dictionary
(27th ed. 2000) at 1286.) Plaintiff’s witness Mr. Schwartz
testified (on cross-examination) that the mark SYNTHES is derived
from the name of a Swiss international foundation called AO/ASIF,
with which plaintiff works closely in providing continuing
medical education services, and that “AO stands for
Arbeitsgemeinshaft fur Osteosynthesefragen.” (Schwartz Depo. at
81, 89.) When asked what “Osteosynthesefragen” means, he
testified as follows:
A. Fragen is – I believe a Swiss or German word for study.
Excuse me, for issues or problems. So Synthesefragen is –
osteosynthesefragen is bone healing issues.
Q. Is osteo bone?
A. Yes.
Q. And Synthes is healing?
A. Yes.
(Id. at 90-91. However, our own review of a German-English
dictionary reveals that the German word “synthese” means
“synthesis” in English, not “healing.” (Cassell’s German-English
English-German Dictionary (1978) at 599.) Of course, in the
context of osteosynthesis, the “healing” of a bone fracture could
be described as a synthesis, i.e., a “combination of parts or
elements so as to form a whole.” Regardless of the derivation of
plaintiff’s mark or it’s meaning (if any) in German, we find that
purchasers in this country are likely to perceive the mark, as
applied to goods used in the field of osteosynthesis, as a
truncation or derivative of the English word “synthesis.”
Opposition No. 91123720 and Cancellation No. 92031730
15
plaintiff’s mark is greatly outweighed by the basic
similarity in connotation which arises from the fact that
both marks mean, or would be perceived as being derived
from, the word “synthesis.”
For the reasons discussed above, we find that when the
parties’ marks are compared in their entireties, they are
more similar than dissimilar in terms of their overall
commercial impressions. The first du Pont factor thus
weighs in plaintiff’s favor.
Similarity of the Goods, Trade Channels and Purchasers
We turn next to a consideration of the second and third
du Pont factors, i.e., the similarity or dissimilarity of
the parties’ goods, the trade channels in which those goods
are marketed, and the classes of purchasers to whom they are
marketed. We note generally that it is not necessary that
the respective goods be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some
manner, or that the circumstances surrounding their
marketing are such, that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
Opposition No. 91123720 and Cancellation No. 92031730
16
association or connection between the sources of the
respective goods. 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); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Plaintiff’s goods, as identified in plaintiff’s
registration, are “instruments and apparatus for surgical,
medical, and veterinary purposes solely for bone surgery,
namely, instruments and implants for osteosynthesis,
including bone screws, bone nails, bone plates and splints;
injection needles, and gum plates.” Plaintiff’s witness Mr.
Schwartz testified that plaintiff
…is in the business of what you might call
skeletal fixation which is fracture fixation
using operative, surgical intervention and
different appliances or components or implants
to fasten the fracture pieces back together.
Synthes is also involved in some reconstructive
orthopedic surgery and any type of skeletal
fixation that would, basically, go from head to
toe from the maxillofacial skeleton to the
normal axial skeleton and also including spine
surgery.
(Schwartz Depo. at 5-6.) He also testified that
[a]ny hospital that has an active orthopedic or
maxillofacial or spine service will use Synthes’
products in some way, shape or form.
Additionally our products are also used in short
stay surgical centers and also in doctors’
offices where they would do a day-surgery
procedure. It could be something as simple as
Opposition No. 91123720 and Cancellation No. 92031730
17
going in to have a screw put into your hand for
a relatively simple fracture that could be done
on the same day basis. Or it could be something
as involved as a major spine reconstruction or
pelvis reconstruction that would be done at a
major acute care facility. The spectrum is very
broad and our products are used – kind of across
the board in those different types of operating
rooms and hospitals.
(Schwartz Depo. at 25.) This testimony as to the nature and
range of plaintiff’s products is borne out by the exhibits
to Mr. Schwartz’ testimony, which include catalogs and price
lists covering a large variety of bone surgery implants and
instruments in a variety of sizes, as well as accessory
items such as power tools and storage trays and cases.
Plaintiff’s goods range from individual screws and plates
costing around ten dollars to complete sets of implants and
instruments, costing many thousands of dollars, which are
used in complex bone surgery procedures. (See, e.g.,
Schwartz Depo., Exh. Nos. 5, 11.)
As shown by the testimony quoted above, plaintiff’s
skeletal fixation products are purchased and used by
hospitals, clinics, outpatient surgery centers, and doctors’
offices. Plaintiff markets its products through its force
of over six hundred salespeople, who not only sell the
products but who also are present in the operating room
during surgery, offering to the surgeons and the operating
room staff their expertise in the proper use of the implants
and instruments. (Schwartz Depo. at 23-24.) In the
Opposition No. 91123720 and Cancellation No. 92031730
18
hospital setting, plaintiff’s salespeople meet with
surgeons, with operating room staff, with central supply
staff who clean and process the equipment, with purchasing
department personnel, and with hospital administrative
personnel. However, plaintiff’s salespeople direct the vast
majority (seventy-five percent) of their sales efforts to
surgeons, because although the final decision to purchase
the products is made by the hospital’s administration or
purchasing department, it is the surgeons who recommend the
purchase and who exercise the greatest influence in the
hospital’s decision to purchase the products. (Schwartz
Depo. at 97-100.)
Defendant’s goods, as identified in the involved
application and registration, are “disposable gloves for
medical use.”11 Defendant argues that the gloves it
actually sells are non-sterile and thus would not be used in
a surgical environment. However, our likelihood of
confusion determination must be made on the basis of the
goods as identified in the application and registration,
regardless of what the evidence shows to be the actual goods
currently marketed by defendant. See Canadian Imperial Bank
11 Plaintiff has submitted copies of other registrations owned by
defendant which cover a variety of other goods for medical and
hospital use, including sterile gauze bandages, crutches,
walkers, canes, stethoscopes and surgical gowns and bonnets.
However, because these other goods of defendant’s are not
marketed under defendant’s SYNTHESIS marks, they are not relevant
to our likelihood of confusion analysis in these proceedings.
Opposition No. 91123720 and Cancellation No. 92031730
19
of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983). Thus, the “disposable
gloves for medical use” identified in defendant’s
application and registration must be deemed to include
sterile surgical gloves. Such gloves are used by surgeons
and operating room staff, the same persons who use
plaintiff’s bone surgery products.
Defendant sells its gloves to healthcare product
distributors, who then sell the gloves to some of the same
end purchasers who purchase plaintiff’s products, i.e., to
hospitals, outpatient surgery centers, and doctors’ offices.
(Sabatka Depo. at 31.) In doctors’ offices, it is the
doctor who makes the decision to purchase the gloves, while
in larger settings such as hospitals the purchasing decision
is made by the purchasing department. (Sabatka Depo. at
48.)
Comparing the parties’ goods, trade channels and
purchasers, we find that although applicant’s gloves and
plaintiff’s bone surgery products are not competitive or
interchangable products, they nonetheless are sufficiently
related in the marketplace that confusion is likely to occur
if the products are sold under similar marks. There is an
overlap in the end users of the respective products, i.e.,
both parties’ products are used by operating room surgeons
Opposition No. 91123720 and Cancellation No. 92031730
20
and staff in the operating room environment, and by doctors
and nurses in the outpatient center and doctor’s office
settings. We also find that the relevant class of
purchasers for the respective goods is the same or
overlapping. In the doctor’s office setting, the decision
to purchase both parties’ products likely would be made by
the doctor. However, it is likely that once the decision to
purchase a particular vendor’s products is made by the
doctor, the actual ordering of the goods and maintenance of
the office’s inventory of such goods is done by clerical
personnel, not by the doctor.
The same is true in the hospital setting. Initially,
it is the surgeon who influences the hospital’s decision to
purchase plaintiff’s bone surgery products, especially the
more expensive complete sets of implants and instruments
used for complicated procedures. However, once the initial
decision to use plaintiff’s products is made, the hospital
must maintain an inventory of implants, instruments and
accessories, in all necessary sizes. (Schwartz Depo. at 73-
75.) Such routine and continuing purchases of plaintiff’s
products likely are authorized and made not by the surgeon
directly, but by the hospital’s purchasing office or other
personnel in charge of maintaining the inventory, in
collaboration with or at the request of the operating room
department. The hospital’s inventory of disposable surgical
Opposition No. 91123720 and Cancellation No. 92031730
21
gloves likewise would be maintained by the purchasing
office, which would order the goods in collaboration with or
at the request of the operating room department. Thus,
plaintiff’s products and defendant’s products both are used
by the operating room department of the hospital, and it is
that department on whose behalf the hospital’s purchasing
department makes the actual purchases of the respective
goods. The facts of this case therefore are distinguishable
from those in the cases of Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992), and Astra Pharmaceutical Products, Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st
Cir. 1983). In those cases, the respective goods of the
parties were used by different departments in the hospital,
and the decision to purchase the respective products was
made or influenced by those different departments.
In short, we find that the parties’ respective goods
are related insofar as they are encountered and used by the
same end users, i.e., by doctors and nurses in doctors’
offices, and by surgeons and operating room staff in the
hospital operating room environment. Doctor’s office
personnel and hospital operating room personnel are likely
to encounter, in the doctor’s office or in the operating
room environment, both storage cases and trays containing
plaintiff’s products and bearing plaintiff’s mark, and boxes
Opposition No. 91123720 and Cancellation No. 92031730
22
of disposable gloves bearing defendant’s marks. We also
find that the relevant purchasers of the goods overlap. In
doctors’ offices, these would be the doctors who make the
decision to purchase the products and the clerical personnel
who actually order the goods and maintain the inventory. In
the hospital setting, the purchasers would be the surgeons
in the operating room department, as well as the hospital’s
purchasing department which, in collaboration with or at the
request of the operating room department, must maintain the
proper level of inventory of the products.
On balance, we find that the parties’ goods, and the
trade channels and classes of purchasers for those goods,
are sufficiently related that the second and third du Pont
factors weigh in favor of a finding of likelihood of
confusion.
Purchasing Conditions and Sophistication of Purchasers
Defendant’s disposable medical gloves are inexpensive
goods, retailing for four to seven dollars per box of one
hundred, or four to seven cents per glove. (Sabatka Depo.
at 30.) Plaintiff’s products range in price from around ten
dollars per unit for individual screws and plates to many
thousands of dollars for complete sets of implants and
instruments used in complicated surgical procedures. (See,
e.g., Schwartz Depo., Exh. Nos. 5, 11.) Plaintiff directs
Opposition No. 91123720 and Cancellation No. 92031730
23
most of its marketing efforts to surgeons, who have a great
amount of influence on the initial decision to purchase
plaintiff’s products. It is reasonable to assume that these
surgeons are fairly sophisticated and knowledgable about the
sources of the bone surgery products they use and recommend
for purchase, especially given the fact that plaintiff’s
salespeople deal with the surgeons directly in sales calls
and in the operating room during surgery using the products.
As discussed above, however, it is likely that the
responsibility for maintaining the proper level of inventory
of plaintiff’s implants and instruments falls not to the
surgeon but rather to other operating room staff or hospital
purchasing personnel, who may not have the benefit of the
salesperson’s personal attention when ordering the goods.
These are the same persons who would be responsible for
purchasing and maintaining the hospital’s inventory of
disposable medical gloves. We cannot assume that these
hospital personnel are as sophisticated or knowledgable as
surgeons would be with respect to the sources of the goods
or the trademarks under which they are sold. In any event,
it is settled that even sophisticated purchasers are not
immune to source confusion which would otherwise result from
the use of confusingly similar marks. See In re Decombe, 9
USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221
Opposition No. 91123720 and Cancellation No. 92031730
24
USPQ 558 (TTAB 1983). We find that the fourth du Pont
factor weighs in plaintiff’s favor.
Fame of the Prior Mark
The fifth du Pont evidentiary factor requires us to
consider evidence of the fame of plaintiff’s mark, and to
give great weight to such evidence if it exists. See Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton,
supra; and Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1897, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.
Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
In this case, we find that plaintiff’s SYNTHES mark
indeed is a famous mark, for purposes of the fifth du Pont
evidentiary factor. Plaintiff has used its mark in the
Opposition No. 91123720 and Cancellation No. 92031730
25
United States for decades. (Schwartz Depo. at 7-8.) It is
true, as defendant argues, that plaintiff engages in no
traditional advertising of its products. (Id. at 35, 80.)
However, that does not mean that plaintiff engages in no
marketing of its products. The dollar amount of plaintiff’s
marketing expenditures has been submitted under seal and
will not be specified here, but we find without doubt that
it is a quite impressive number. (Zaborowski Depo. at 7-8;
Exh. No. 29.) Plaintiff actively markets its products to
eighty percent of the hospitals in the United States.
(Schwartz Depo. at 34.) Its salespeople are a common sight
in the operating room environment. (Id. at 23-24.) Its
catalogs and other literature, including procedure technique
guides, are kept and used as references in hospital
operating rooms around the country. (Id. at 21-22, 55-56.)
Plaintiff sponsors an extensive program of continuing
medical education activities (id. at 80-81), and it is a
prominent presence at fifty trade shows and medical
conventions per year, including all of the major shows and
conventions in the industry. (Id. at 64-71; Exh. Nos. 24-
25.)
As a result of these extensive marketing activities,
plaintiff dominates the market in all aspects of the
skeletal fixation field. (Schwartz Depo. at 59-60, 72-73.)
In the April 2002 issue of Orthopedic Network News, a trade
Opposition No. 91123720 and Cancellation No. 92031730
26
journal, plaintiff was identified as the United States
market leader in the sale of trauma products12 in 2000-01,
with a market share of over forty-five percent. (The next
largest competitor was reported to have had a market share
of fourteen percent.) Plaintiff’s share of the market for
bone surgery screws and plates is reported to have been over
seventy-two percent. (Schwartz Depo. at 61-63, 71-73; Exh.
No. 23.) Mr. Schwartz, plaintiff’s Senior Vice-President,
testified that under plaintiff’s own estimates, plaintiff’s
current market share is even higher. (Id. at 59-61.)
Plaintiff’s sales figures for 1997-2001 have been submitted
under seal and will not be specified here, but there can be
no question that they are quite impressive. (Zaborowski
Depo. at 7-8; Exh. No. 29.)
Based on this evidence, we find that plaintiff’s
SYNTHES mark and trade name are famous among the relevant
purchasers at issue in this case. We find that the fifth du
Pont factor weighs heavily in plaintiff’s favor in our
likelihood of confusion analysis.
Similar Marks in Use on Similar Goods
12 “Trauma products” are identified in the report as consisting of
plates and screws, hip fixation devices, external fixatiion,
intramedullary nails, staples, pins and wires, maxillofacial
devices, and instruments.
Opposition No. 91123720 and Cancellation No. 92031730
27
The sixth du Pont factor requires us to consider
evidence of “similar marks in use on similar goods.” There
is no such evidence of record in this case. Defendant has
submitted printouts, from the USPTO’s database, of various
pending applications and issued registrations covering marks
which defendant contends are similar to those at issue in
this case. We find, however, that the vast majority of
these printouts cover marks and goods which are dissimilar
to the marks and goods at issue here. Even as to the
handful of printouts which arguably cover marks and goods
similar to those at issue here, such printouts are not
evidence that the marks depicted therein are in use in
commerce or that purchasers are aware of them. They are
entitled to no probative value 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). The sixth du Pont
factor accordingly does not favor defendant in this case.
Actual Confusion (and the Opportunity for Actual Confusion)
The seventh du Pont factor requires us to consider
evidence of “the nature and extent of any actual confusion.”
The eighth du Pont factor requires us to consider evidence
pertaining to “the length of time during and conditions
under which there has been concurrent use without evidence
of actual confusion.”
Opposition No. 91123720 and Cancellation No. 92031730
28
The evidence of record in this case shows that neither
plaintiff or defendant is aware of any instances of actual
confusion between their respective marks in the marketplace.
(Schwartz Depo. at 115-116; Sabatka Depo. at 57-59.)
Although this fact weighs in defendant’s favor under the
seventh du Pont factor, it is immediately counterbalanced
and negated by the eighth du Pont factor, because we cannot
conclude on this record that there has been any substantial
opportunity for any actual confusion to have occurred. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992). Although defendant’s sales figures (which have been
submitted under seal and shall not be detailed here) are not
de minimis, neither are they so substantial as to warrant a
presumption that the purchasers of plaintiff’s goods
necessarily have encountered defendant’s goods in the
marketplace (and that they thus have been in a position to
be confused as to the source of the respective goods).
Moreover, as defendant itself has noted, its gloves (as
actually marketed) are not suitable for use in the operating
room environment because they are non-sterile. This fact
further diminishes the chances that both plaintiff’s and
defendant’s actual goods have been encountered by the same
actual purchasers in the marketplace.13
13 This fact (i.e., the unsuitability of defendant’s non-sterile
gloves for use in the operating room environment) is legally
irrelevant when we are comparing the parties’ goods under the
Opposition No. 91123720 and Cancellation No. 92031730
29
Because we cannot conclude (for purposes of the eighth
du Pont factor) that there has been any significant
opportunity for actual confusion to have occurred, we find
that the absence of evidence of actual confusion (under the
seventh du Pont factor) is neither factually surprising nor
legally significant. See Gillette Canada Inc. v. Ranir
Corp. supra. The seventh and eighth du Pont factors
counterbalance each other, and they therefore are
essentially neutral in this case.
Conclusion regarding Likelihood of Confusion
Having considered the evidence of record as it pertains
to the relevant du Pont factors, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists. In particular, given the fame and strength of
plaintiff’s mark and name, the overall similarity of
defendant’s marks thereto, and the overlapping trade
channels and classes of purchasers (including purchasers of
varying levels of sophistication), we conclude that the
parties’ respective goods (as identified in the respective
second du Pont factor, because our analysis under that factor
must be based on the goods as identified in the application and
registration, not on the goods as actually marketed by defendant.
See discussion, supra. However, our analysis under the eighth du
Pont factor requires us to consider the conditions under which
the parties’ goods actually have been marketed, i.e., the degree
to which there has been any actual opportunity for confusion to
have occurred.
Opposition No. 91123720 and Cancellation No. 92031730
30
application and registrations) are sufficiently related that
contemporaneous use of the parties’ marks on such goods is
likely to cause confusion as to source, sponsorship or other
affiliation. To the extent that any doubt as to the
correctness of this conclusion exists, it must be resolved
in favor of plaintiff, the prior user, and against
defendant. 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);
Steelcase, Inc. v. Steelcare, Inc., 219 USPQ 433 (TTAB
1983); Envirotech Corporation v. National Service
Industries, Inc., 197 USPQ 292 (TTAB 1977).
CONCLUSION
Based on the evidence of record, and for the reasons
discussed above, we find that plaintiff has established its
standing to bring these opposition and cancellation
proceedings, as well as its pleaded Section 2(d) ground for
opposition and cancellation.
Decision: Opposition No. 91123720 is sustained, and
registration of the mark in the involved application Serial
No. 75909304 is refused. Cancellation No. 92031730 is
granted, and the involved Registration No. 2371569 shall be
cancelled in due course.
Opposition No. 91123720 and Cancellation No. 92031730
31