Warsaw Orthopedic, Inc.

Trademark Trial and Appeal Board

Mar 21, 2012

No. 77892528 (T.T.A.B. Mar. 21, 2012)

Mailed:
March 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Warsaw Orthopedic, Inc.
________

Serial No. 77892528
_______

Carrie L. Rosenberry of Fredrikson & Byron PA for Warsaw
Orthopedic, Inc.

Alex Seong Keam, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Bucher, Wellington, and Wolfson,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Warsaw Orthopedic, Inc. (“applicant”) has filed an
application to register on the Principal Register the mark
FOCUS (in standard character format) for “medical devices,
namely, retractors for use in spinal surgery” in
International Class 10.1

1 Serial No. 77892528 was filed on December 14, 2009, under
Section 1(b) based upon applicant’s stated bona fide intent
to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77892528
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of
the previously registered mark MRFOCUS (in standard
character form) for “surgical and microsurgical
instruments, namely, suction instruments, micro-suction
instruments, macro-suction instruments, suction tubes,
sucker instruments, micro-suckers, macro-suckers,
irrigation instruments, probes, micro-probes, dissectors,
micro-dissectors, ring curettes, micro-ring curettes,
curettes, micro-curettes, scissors, micro-scissors,
sphenoid kerrison punches, micro-kerrisons, clip
applicators, micro-clip applicators, clip, forceps, micro-
forceps, retractors, spatulas, needle holders, micro-needle
holders, needles, C-frames, J-arms, BJ arms, rongeurs,
hooks, elevators, cannulas, passers, catheters, trephines,
chisels, knives, knife holders, instrument pockets,
holders, irrigators, punches, speculums, speculum spreads
and lip guards for use in surgical and micro-surgical
procedures utilizing imaging processes” in International
Class 10.2
Applicant appealed and filed a request for
reconsideration. The examining attorney denied the request

2 Registration No. 3061035, issued on February 21, 2006; Section
8 & 15 affidavits received.
Serial No. 77892528
3
for reconsideration. Both applicant and the examining
attorney filed briefs. The refusal to register is
affirmed.
Our determination of the examining attorney’s refusal
to register the mark under Section 2(d) of the Trademark
Act 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We first consider the relatedness of the goods. In
making our determination regarding the relatedness thereof,
we must look to the goods as identified in the involved
application and cited registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973).
Serial No. 77892528
4
Applicant’s goods, again, are “medical devices,
namely, retractors for use in spinal surgery.” The cited
registration covers, in relevant part, the following goods:
“surgical and microsurgical instruments, namely, ...
retractors..., and lip guards for use in surgical and
micro-surgical procedures utilizing imaging processes.”
Thus, both identifications contain surgical retractors.
As the examining attorney points out in her brief, it
is unclear if the modifying language at the end of the
registration’s identification, i.e., “for use in surgical
and micro-surgical procedures utilizing imaging processes,”
is meant to describe the last listed instrument (“lip
guards”) solely or describe all listed medical instruments.
In any event, she reasons:
The evidence demonstrates that even if the
registrant’s retractors are narrowly construed to be
used only in surgeries involving imaging processes,
the goods are related and used together. The
applicant’s goods are spine surgery retractors and the
registrant’s goods are also surgical retractors or
retractors used in surgeries using imaging. Spinal
surgeries readily use retractors featuring imaging
capabilities, and therefore, the goods are highly
related.

Brief, (unnumbered) p. 10 (footnote omitted).

Applicant interprets the scope of registrant’s
identification narrowly and, citing to registrant’s own
response to an office action during the prosecution of the
Serial No. 77892528
5
underlying application, argues that registrant’s retractors
are “specifically ‘for use in surgical and micro-surgical
procedures utilizing imaging processes.’” Brief, p. 6
(emphasis added by applicant, and quoting from Registrant’s
January 28, 2005 response to an Office Action). Applicant
further argues that “ ... imaging products in the spinal
surgery field are completely non-invasive. As a result
Registrant’s MRI ‘retractors’ listed in the Cited
Registration necessary do not function within the spinal
surgery world, because retractors have no application in a
spinal imaging procedure.” Id. (emphasis added by
applicant).
In considering the scope of a cited registration, we
look to the identification in the registration itself and
consider all reasonable interpretations thereof. With
regard to registrant’s identification in this proceeding,
we find it plausible that the retractors are only modified
by the preface “surgical and microsurgical instruments” and
are not restricted to use solely with medical procedures
involving imaging processes. In such case, registrant’s
goods are described broadly enough to include applicant’s
retractors for use in spinal surgery. Nevertheless, even
if we were to consider registrant’s goods to be limited to
surgical procedures utilizing imaging processes, we agree
Serial No. 77892528
6
with the examining attorney that registrant’s retractors
could be used in spinal surgical procedures involving
imaging processes. Applicant’s identification is not so
limited that its spinal surgical retractors are excluded
from use for the same purposes, i.e., those involving
imaging processes.
The fact that surgical and micro-surgical procedures
utilizing imaging processes include spinal surgical
procedures is established by the record. The examining
attorney has submitted several article excerpts describing
the use of imaging processes in connection with spinal
surgery. For example, under the caption “Advanced Imaging
Technology Improves Spinal Surgery Outcome” in the Science
Daily website, the article begins, “[u]sing a three-
dimensional (3D) image-guided system to help place screws
in the spines of patients results in safe and accurate
surgery with a decrease in the number of misplaced screws.”3
Put simply, even allowing for a more limited interpretation
of registrant’s identification, the retractors of
registrant, as well as those of applicant, could be used in
the spinal surgical procedure mentioned in the Science
Daily website.

3 From www.sciencedaily.com, and submitted by examining attorney
with denial of request for reconsideration on April 11, 2011.
Serial No. 77892528
7
Ultimately, registrant’s and applicant’s surgical
retractors are technically identical goods and may be used
in the same types of surgical procedures regardless of the
interpretation of registrant’s identification of goods.
This du Pont factor favors finding a likelihood of
confusion.
Neither applicant’s goods nor those of registrant
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the channels of trade, we must look
to the goods as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 16 USPQ2d at 1787; and Paula Payne
Products v. Johnson Publishing Co., 177 USPQ at 77.
Because, as noted above, the parties’ surgical retractors
are legally identical goods, and there are no restrictions
in the application or registration, registrant’s surgical
retractors are presumed to move in the same channels of
trade as those of applicant and be available to the same
classes of potential consumers. See In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Accordingly, this du Pont factor
further favors a finding of likelihood of confusion.
Serial No. 77892528
8
We now consider the similarities and dissimilarities
between the marks. In this regard, we look to whether the
marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
Here, applicant’s FOCUS mark is an element of the
registered mark, MRFOCUS, and the omission of the letters
MR is the sole difference. Applicant argues the addition
or omission of the letters is significant for purposes of
distinguishing the two marks:
The creation of a nonsensical, one-word term like
MRFOCUS is easily distinguished from a general, well-
understood term like FOCUS. Registrant’s mark
conjures images of a possible character “MR/Mister”
FOCUS or clearly roots Registrant’s products in the
world of MR or “Magnetic Resonance.” Either way, the
commercial impression, meaning and appearance of the
mark is vastly different from Applicant’s rather staid
mark FOCUS.

[Brief, p. 15].

In making this point, applicant relies upon the file
record for the application that matured into the cited
registration. Specifically, applicant references a
response from the registrant (then applicant) to an office
action when it faced a likelihood of confusion refusal
based on two registrations for the mark FOCUS. Registrant
argued, “[t]he meaning and connotation of [registrant’s]
Serial No. 77892528
9
mark MRFOCUS creates a different commercial impression from
the cited FOCUS marks.”4 The Section 2(d) refusal was
eventually withdrawn.
Regarding applicant’s reliance upon arguments made by
the registrant during prosecution of the cited
registration, we do not consider statements regarding its
mark and distinguishing it from others as admissions;
rather, the statements are viewed “only as illuminative of
shade and tone in the total picture.” Calypso Technology,
Inc., v. Calypso Capital Management, LP, 100 USPQ2d 1213,
1223 (TTAB 2011), citing Interstate Brands Corporation v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151
(CCPA 1978). We note the registrations cited against
registrant’s underlying application covered “electronic
neuromuscular stimulators” and “equipment for radiation
treatment therapy,” and this likely explains why registrant
believed the marks were not confusingly similar. Here, as
explained above, the goods are in part legally identical.
In this regard, we would also be remiss if we did not point
out that registrant emphasized in its response that its
goods are for use in “invasive” procedures involving
imaging processes (distinguishing them from the non-

4 Applicant submitted copies of the application file for the
cited registration. Applicant’s September 22, 2010 response.
Serial No. 77892528
10
invasive medical goods in the cited registrations). Thus,
to the extent applicant seeks the Board’s reliance upon
registrant’s statements, the description by registrant of
its own goods (for use in invasive procedures) actually
underscores the already-discussed similar nature of said
goods with applicant’s retractors (also for use in invasive
procedures).
We disagree with applicant’s characterization of the
registered mark as a “nonsensical, one-word term.” Rather,
as applicant apparently acknowledges, consumers are likely
to easily and quickly identify the word FOCUS in
registrant’s mark. And, as applicant also suggests,
consumers may understand the letters MR as an abbreviation
for “magnetic resonance,” given the context of the cited
goods in the registration.5 Even if consumers understand MR

5 We note that the examining attorney submitted, for the first
time with her appeal brief, several printouts from the website
www.acronymfinder.com that indicate possible meanings for the
letters “MR”, one being “magnetic resonance.” She requests the
Board take judicial notice of these materials and the information
contained therein. The Board may take judicial notice of
information or facts contained in authoritative reference
materials shown to have been published in printed format that
demonstrate a generally known fact within the territorial
jurisdiction of the Board. 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) (Board
may take judicial notice of dictionary definitions); see also
TBMP § 704.12. Here, we decline to do so because there is no
indication from the printouts that the information contained
therein derives from a published authoritative source or any
other established reference source. Accordingly, the materials
have not been considered. As we point out, however, applicant
Serial No. 77892528
11
to be an abbreviation of “mister,” the word “mister” has
less source-indicating significance than FOCUS because it
is merely a title; consumers are likely to believe that
MRFOCUS is a variant of FOCUS and that both marks identify
surgical retractors.
Because FOCUS is the only visually recognizable word
in the registered mark, it becomes dominant and consumers
are likely to remember this term in recalling the
registered mark.
As to connotation and commercial impression, the
record does not establish that the term FOCUS has any
specific or special meaning with respect to medical
instruments, in particular surgical retractors.
Accordingly, any commercial impressions created by the
marks are nearly the same; indeed, the only difference is
that consumers may confer a “magnetic resonance” attribute
to registrant’s goods to the extent that they understand MR
as an abbreviation therefor. Ultimately, such difference
does very little to distinguish the marks.
Overall, we find the marks are extremely similar
visually and aurally, and in terms of connotation.
Accordingly, this du Pont factor weighs heavily in favor of

has also suggested “magnetic resonance” as a meaning for the
acronym.
Serial No. 77892528
12
finding a likelihood of confusion. Even if registrant
itself argued at one point that the FOCUS and MRFOCUS are
distinguishable, this does not change our decision. We
note that other arguments were made to traverse the
refusal, including the dissimilarity of the goods.
We now address applicant’s arguments involving two
other du Pont factors. First involves the strength of the
term FOCUS in connection with the relevant goods. In this
regard, there is no evidence demonstrating the nature or
extent of actual use of the term FOCUS, either by itself or
in conjunction with other terms, in relation to relevant
goods of applicant and the registrant. Applicant at one
point submitted a list of applications and registrations
containing the term FOCUS; however, there is no further
information regarding the actual goods covered by these
applications and registrations. The list, by itself, does
not show that FOCUS is a weak term in connection with
medical instruments because, absent evidence of actual use,
third-party registrations have little probative value
because they are not evidence that the marks are in use on
a commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
Serial No. 77892528
13
public is not aware of registrations reposing in the U.S.
Patent and Trademark Office).
Second, applicant argues at length that consumers of
medical instruments, such as its retractors and the goods
of registrant, are sophisticated and “[t]he standard of
care used in analyzing the likelihood of confusion in this
case must be that of a sophisticated purchaser rather than
of the general public.
It is true that purchasers of medical equipment,
whether hospital personnel or physicians, have been
considered sophisticated and, as such, more likely to
distinguish between marks and goods than is the general
consuming public. In re N.A.D., 754 F.2d 996, 224 USPQ
969, 971 (Fed. Cir. 1985); and Pfizer Inc. v. Astra
Pharmaceutical Products Inc., 858 F.Supp. 1305, 33 USPQ2d
1545, 1562 (S.D.N.Y. 1994) [“[t]he consumers here are
doctors, as sophisticated a group as one could imagine”].
Nevertheless, it is also settled that sophisticated
purchasers are not necessarily knowledgeable in the field
of trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988).
In this case, we find the marks too similar and the
goods potentially identical such that, even allowing for a
sophisticated purchaser, there remains a likelihood of
Serial No. 77892528
14
confusion in the purchasing decision. We further note that
the evidence shows that retractors can widely vary in
price, roughly from $50 to several hundred dollars and up.
As the price reaches the higher range so presumably does
the care in making a purchase. Nevertheless, we must
consider all ranges of relevant retractors and this
includes those sold for less than $100 apiece.
In conclusion, because of the highly similar marks and
the legally identical goods, trade channels and classes of
purchasers, we find that purchasers, whether sophisticated
or not, who are familiar with registrant’s surgical
retractors offered under the mark MRFOCUS are likely to
believe, upon encountering applicant’s mark FOCUS for
spinal surgery retractors, that they originate with or are
somehow associated with the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.