Advanced Cardio-vascular Systems, Inc.

Trademark Trial and Appeal Board

Jul 31, 2001

No. 75568548 (T.T.A.B. Jul. 31, 2001)

7/31/01

Paper No. 15
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Advanced Cardiovascular Systems, Inc.
________

Serial No. 75/568,548
_______

Lori Boatright and Anthony V. Mercaldi of Blakely Sokoloff
Taylor & Zafman for Advanced Cardiovascular Systems, Inc.

Andrea P. Hammond, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Advanced Cardiovascular Systems, Inc. has appealed
from the refusal of the Trademark Examining Attorney to
register RX GEMINI for “medical catheters”1 in International
Class 10.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that

1 Application Serial Number 75/568,548 was filed on October
13, 1998. The application was based upon an allegation of a bona
fide intention to use the mark in commerce. The designation “RX”
has been disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Number 75/568,548
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applicant’s mark so resembles the mark GEMINI for “cardiac
pacers,” also in International Class 10, that, as used on
applicant’s identified goods, it is likely to cause
confusion, to cause mistake or to deceive.
The appeal has been fully briefed but applicant did
not request an oral hearing before the Board.
Upon careful consideration of this record and the
arguments of the attorneys, we believe that confusion is
likely, and so we affirm the refusal of registration.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression. Applicant
essentially contends that the Trademark Examining Attorney
erred by dissecting the marks. Applicant contends that
Serial Number 75/568,548
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when considered in their entireties, the two marks are not
confusingly similar; that the marks RX GEMINI and GEMINI
are different in sound, appearance, meaning, and overall
commercial impression, and that the term GEMINI is entitled
to only a narrow scope of protection because the term is
commonly used in the medical field.
Applicant’s mark RX GEMINI and registrant’s mark
GEMINI have obvious similarities in sound, appearance and
meaning, applicant’s mark only adding the descriptive or
even generic designation “RX,”2 which has been properly
disclaimed. In this case, this difference cannot serve to
distinguish the marks. While we compare the marks in their
entireties, our primary reviewing court has held that in
articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798

2 There is no disagreement between applicant and the
Trademark Examining Attorney that the term “RX” (or “Rx”) in this
context means “a prescription for medicine or a medical
appliance.” See e.g., The American Heritage Dictionary of the
English Language, electronic version (3rd ed. 1992).
Serial Number 75/568,548
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(Fed. Cir. 1987), and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Moreover, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather, the decision must be based on the similarity of
the general overall commercial impressions engendered by
the involved marks. See Puma-Sportschuhfabriken Rudolf
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980).
As to the strength of registrant’s mark, there is no
evidence in this case that the term GEMINI is anything
other than arbitrary when applied to medical devices and
products. GEMINI is a word that has long evoked a
constellation in the Northern Hemisphere or a sign of the
zodiac.3 We take judicial notice of the fact that in the
mid-1960’s, NASA assigned this name to a series of launch
vehicles used in the space program.4 Since that time, the
term GEMINI has become suggestive of space-age devices.

3 The American Heritage Dictionary of the English Language
(1975).
4 The Random House Dictionary of the English Language (3rd ed.
1983).

Serial Number 75/568,548
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Whether arbitrary or suggestive as applied to registrant’s
goods, we do not find it to be an inherently weak mark.
Accordingly, this common term plays a major role in forming
the overall commercial impression of both marks, and we
find that the commercial impressions created by the marks
involved herein are substantially the same. See The Wella
Corporation v. California Concept Corporation, 558 F.2d
1019, 194 USPQ 419 (CCPA 1977); and Gruen Industries, Inc.
v. Ray Curran & Co., 152 USPQ 778 (TTAB 1967).
As to the du Pont factor dealing with the number and
nature of similar marks in use on similar goods, applicant
has pointed to a number of third-party registrations as
proof that the word “Gemini” is “diluted” and “weak” among
goods in International Class 10, and hence that the cited
registration should be given a very narrow scope of
protection. However, we do not find applicant’s submission
of third-party applications and registrations to be
persuasive of such a conclusion. Third-party registrations
are given little weight in determining likelihood of
confusion as they are not evidence of use of the marks
shown therein and they are not proof that consumers are
familiar with them so as to be accustomed to the existence
of similar marks in the marketplace. See Helene Curtis
Serial Number 75/568,548
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Industries Inc. v. Suave Shoe Corp. 13 USPQ2d 1618 (TTAB
1989). Moreover, upon reviewing the dozen registered marks
(made a part of the record by applicant) containing the
word GEMINI in some form, it is noted that five are owned
by the same party for pumps for infusing medical solutions
into patients. Other marks containing the word GEMINI are
registered for a variety of medical supplies, devices and
services, such as fiber optic devices, prosthetic devices,
laboratory chemicals, cameras, consultation services,
hearing aids and medical gloves. Thus, it is clear that
when exploring the channels of trade of specific medical
products and/or services in making a determination as to
likelihood of confusion, the U.S. Patent and Trademark
Office (entirely consistent with the position espoused by
applicant) does not follow a “per se” rule that all medical
devices are related. To the contrary, even when evaluating
an arbitrary or suggestive mark such as GEMINI, the
hospital community cannot be treated as a homogeneous
whole.5 Arguably, each of the goods in International Class

5 Hewlett-Packard Co. v. Human Performance Measurements,
Inc., 23 USPQ2d 1390, 1395 (TTAB 1991), quoting Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.., 718
F.2d 1201, 220 USPQ 786, 791 (1st Cir. 1983): “The ‘hospital
community’ is not a homogeneous whole, but is composed of
separate departments with diverse purchasing requirements, which,
in effect, constitute different markets for the parties’
respective products.”
Serial Number 75/568,548
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10 enumerated above would go to different specialists and
departments within hospitals or other medical facilities.
Moreover, while the U.S. Patent and Trademark Office
strives for consistency, each case must be decided on its
own facts and record. Of course, we do not have before us
any information from the third-party registration or
application files. Finally, we note that pending, third-
party trademark applications are of virtually no
evidentiary value on this point.
With that background, we turn next to the similarity
or dissimilarity and nature of the goods as described in
the application and the cited registration. Applicant
argues throughout the prosecution of this application that
the respective products “… are sold and marketed through
different channels of trade to mutually exclusive and
sophisticated medical professionals.”6 By contrast, the
Trademark Examining Attorney argues as follows:
… The goods of the applicant and the
registrant are highly related as they are
both used in correcting ailments of the
heart. Medical professionals who treat
“CAD” (coronary artery disease) are most
likely cardiologists or cardio-thoracic
surgeons who have specialized in diseases
and illnesses related to the heart. The
examining attorney previously attached
evidence indicating that a cardiologist may

6 Applicant’s response of November 10, 1999, p. 3.
Serial Number 75/568,548
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perform both the cardiac angioplasty and the
pacemaker insertion, illustrating that the
same end user may encounter both the goods
of applicant and the registrant.

(Trademark Examining Attorney’s brief, unnumbered pp. 6-7)
Interestingly, among the eight current federal
registrations of specialized medical devices (placed into
the record by the Trademark Examining Attorney) where the
same mark was applied to both medical catheters and cardiac
pacers, was the mark GUIDANT, owned by Guidant Corporation,
the holding company of which applicant is a wholly-owned
subsidiary. Hence, while it may well be true, as applicant
argues, that the specialized sales force working for
applicant (Advanced Cardiovascular Systems, Inc.) does not
market cardiac pacers, the record suggests that applicant’s
own parent corporation (Guidant Corporation) applies its
house mark to both types of goods.
Moreover, to argue, as applicant does, that medical
professionals who treat cardiac arrhythmia are not the same
medical professionals who would be treating coronary artery
disease is supported neither by logic nor by the evidence
placed in the record by the Trademark Examining Attorney.
Cardiac pacers, or pacemakers, are designed to deal with
heart arrhythmias, and we can agree with applicant that
irregular heart rates or arrhythmias grow out of a
Serial Number 75/568,548
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malfunction in the heart’s electrical system. Also, we
understand that coronary artery disease is tied to problems
with the proper circulation of blood through the coronary
arteries. However, the record confirms that a single
cardiac patient suffering from diseases and illnesses
related to the heart may well suffer from both “electrical”
and “plumbing” problems. Similarly, heart specialists do
not work exclusively on one genre of heart problem or the
other. Hence, both devices or instruments will be used by
physicians who are heart specialists, and this general
category of medical doctors includes, but is not limited to
specialists known as cardiologists or cardio-thoracic
surgeons, as argued by the Trademark Examining Attorney.
Furthermore, because applicant’s catheters as
identified in the application are in no way limited to
procedures such as angiography or angioplasty, we have to
assume these goods include all kinds of medical catheters,
including those catheters used for the introduction of
pacemaker leads. In such a case, we must presume that the
same medical professional, during a single procedure, could
well use one or more of applicant’s catheters in
conjunction with the implantation of one of registrant’s
pacemakers.
Serial Number 75/568,548
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Accordingly, based on the entire record before us, we
find that applicant’s medical catheters are closely related
to registrant’s cardiac pacers.
As to the specific channels of trade of these
respective goods, if indeed the same heart specialist
operating in a large medical center may be the end user of
both of these medical devices or instruments, then we must
assume the established, likely-to-continue trade channels
for these respective products are identical.
Turning to the du Pont factor focusing on the
conditions under which and buyers to whom sales are made,
obviously, neither of these products could be considered to
be “impulse” purchases. We agree with applicant that this
factor (i.e., that we are dealing with careful,
sophisticated purchasers) does favor applicant in the
instant case. However, as pointed out by the Trademark
Examining Attorney, when marks are quite similar, even
sophisticated consumers can be confused. Even the most
sophisticated of purchasers, automatically tending to
discount the source-indicating significance of the term
“RX” (or “Rx”), may well assume that RX GEMINI is simply a
variant of registrant’s GEMINI marks, used to identify
another of registrant’s cardiac products. That is,
Serial Number 75/568,548
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purchasers are likely to assume that applicant’s goods come
from the same source as registrant’s goods or are in some
way sponsored by or associated with registrant. See In re
Imperial Jade Mining, Inc., 193 USPQ 725 (TTAB 1976).
Accordingly, given that GEMINI and RX GEMINI for
closely-related medical devices or instruments have as
their sole source-indicating component the identical term,
GEMINI, we find that the extent of potential confusion is
substantial, even for sophisticated purchasers.
Decision: The refusal to register is affirmed.