Boston Scientific Corp. and Asthmatx, Inc.v.Holaira, Inc.

Trademark Trial and Appeal Board

Oct 6, 2016

No. 91215699 (T.T.A.B. Oct. 6, 2016)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: June 22, 2016 Mailed: October 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Boston Scientific Corp. and Asthmatx, Inc.
v.
Holaira, Inc.
_____

Opposition No. 91215699
_____

Stephen R. Baird, Esq., Bradley J. Walz, Esq., and Timothy D. Sitzmann, Esq.,
Winthrop & Weinstine PA,
for Boston Scientific Corp. and Asthmatx, Inc.

Barbara J. Grahn, Esq., and Dennis E. Hansen, Esq., Oppenheimer Wolff & Donnelly
LLP,
for Holaira, Inc.
_____

Before Kuhlke, Ritchie, and Wolfson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Holaira, Inc. (“Applicant”) seeks to register the mark HOLAIRA (in standard
characters) on the Principal Register for “medical devices for treating obstructive
lung diseases; medical apparatus and instruments for treating obstructive lung
diseases,” in International Class 10.
Boston Scientific Corp. and Asthmatx, Inc. (“Opposers”) oppose registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting a likelihood of
Opposition No. 91215699
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confusion with Opposers’1 mark ALAIR (in standard characters), previously
registered for “medical therapeutic devices for use in the treatment of pulmonary
diseases, namely, catheters, probes, generators, bronchoscopes, and electrodes” in
International Class 102 and for “training and teaching in the field of surgery and
treatment of pulmonary diseases, namely training and teaching in the use and
operation of medical devices for bronchial surgery or treatment, and distribution of
course materials, namely printed materials and electronic media, in connection
therewith” in International Class 41.3
The proceeding is fully briefed. For the following reasons, we sustain the
opposition.
I. Evidentiary Objections
We first address the parties’ objections to portions of the record.
A. Opposers’ Objections
Opposers object to Applicant’s submission via Notice of Reliance of third-party
registrations and website printouts.4 The objections are overruled. The printouts of
the registrations were downloaded from the USPTO Trademark Status and
Document Retrieval (“TSDR”) database, and show status and title of the

1 The record owner of the registrations is Asthmatx, Inc. During her deposition, Karen M.
Passafaro, Opposer Boston Scientific Corp.’s vice-president of marketing, testified that
“Boston Scientific acquired [Asthmatx], the product, and all the trademarks.” 21
TTABVUE 11.
2 Reg. No. 2856168, issued June 22, 2004; renewed.
3 Reg. No. 3380080, issued February 12, 2008; Sections 8 and 15 combined declaration
accepted and acknowledged.
4 15 & 16 TTABVUE.
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registrations; accordingly, they qualify for admission as official records under
Trademark Rule 2.122(e). See, e.g., In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
n.3 (T.T.A.B. 1994) (In order to make registrations of record, soft copies of the
registrations themselves, or the electronic equivalent thereof, i.e., printouts of the
registrations taken from the electronic records of the Patent and Trademark Office’s
own data base, must be submitted); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230
(TTAB 1992). Contrary to Opposers’ argument, the documents are not made
inadmissible by the fact that they may also have been produced as supplemental
discovery after the close of trial.5 Opposers’ arguments that the Board should refuse
to consider the third-party registrations because the marks are allegedly too
dissimilar to be relevant or not used in connection with similar products are
unpersuasive as they go to the probative value accorded to the evidence and not its
admissibility. Even where the record lacks proof of actual third-party use and the
extent of third-party use, third-party registration evidence will be admissible. Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).
As to the website pages, they qualify for admission under Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (holding document obtained
from the Internet admissible if it identifies its date of publication or date that it was

5 See 28 TTABVUE 27, Applicant’s counsel’s letter to Opposers’ counsel, identifying
supplemental production of documents.
Opposition No. 91215699
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accessed and printed, and its source (e.g., the URL)). It is well established, however,
that the probative value of internet documents is limited because such printouts are
inadmissible to prove the truth of the matters asserted therein. Safer, 94 USPQ2d at
1040. (“[Internet printouts] are admissible only to show what has been printed, not
the truth of what has been printed.”). Thus, we have considered the internet printouts
for what information the relevant public may have encountered in browsing websites
pertaining to the goods involved herein, and have not considered them to demonstrate
the truth of any statements made in any of the webpages.6
Opposers further object to Applicant’s introduction of a branding presentation (the
“Strategem report”) created on behalf of Opposers (and submitted by Applicant under
seal)7 on the ground that the Report has been offered for the truth of the matters
asserted and therefore constitutes inadmissible hearsay. Applicant also submitted a
trademark search report for the mark ALAIR8 to which Opposers also object on the
same ground. Contrary to Applicant’s argument, Opposers have not waived their
right to object to the admission into evidence of either document on hearsay grounds

6 Some of the documents submitted consist of search summary results from the Google®
search engine. Such listings are of very limited probative value because they do “not show
sufficient context in which the term is used on the listed web pages.” Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 n.10 (TTAB 2014). Nevertheless,
we have considered the listings to the extent that we can glean from them any evidence of
value.
7 19 TTABVUE contains Applicant’s counsel’s affidavit identifying Exhibit 96 as a document
entitled “Strategem Healthcare Communications – Asthmatx”; the presentation itself is filed
under seal at 20 TTABVUE, Exhibit 96. The presentation was also made an Exhibit to the
testimony of Karen M. Passafaro, Opposer Boston Scientific Corp.’s Vice-President of
Marketing, at 22 TTABVUE, Applicant’s Exhibit 18 (confidential).
8 19 TTABVUE 96. The trademark search report was not submitted under seal. It was also
identified during Ms. Passafaro’s testimony, at 22 TTABVUE, Applicant’s Exhibit 1.
Opposition No. 91215699
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by failing to raise an objection to their overall inadmissibility during Ms. Passafaro’s
testimony. See Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §§
707.02(c); 707.04 (2016) (objections to testimony on substantive grounds, such as that
the proffered evidence constitutes hearsay generally not waived for failure to raise
them promptly). As the documents are relevant to the question of likelihood of
confusion, we consider them for what they show on their face, which is that Opposers’
employees may have been exposed to these internal reports and therefore may be
aware of the information contained therein. With respect to the Strategem report, we
have also considered Ms. Passafaro’s statements made on the basis of her personal
knowledge of events surrounding the presentation of the report. With respect to the
trademark search report, we note that despite Ms. Passafaro’s reading from the
report, she had no personal knowledge of the marks displayed or enumerated
therein.9 Statements regarding use or filing dates of any marks displayed or
enumerated in a trademark search report are not evidence that the marks are in use
or that the registrations are active. See, e.g., Centraz Indus. Inc. v. Spartan Chemical
Co., Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (trademark search report is not
credible evidence of the third-party uses or registrations listed in the report); 2
McCarthy on Trademarks and Unfair Competition § 11:89 (4th ed.).
B. Applicant’s Objections

9 21 TTABVUE 67. Ms. Passafaro testified that she was not employed by Opposer Boston
Scientific at the time the trademark search was conducted and the report prepared by outside
counsel.
Opposition No. 91215699
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Applicant objects to the introduction of statements made by Ms. Passafaro that
the ALAIR system was featured in news media,10 on the ground that such statements
constitute hearsay unsupported by record evidence. While we do not disregard Ms.
Passafaro’s testimony simply because she did not specifically identify supporting
documents, we disregard the testimony to the extent it refers to specific patient
testimonials supposedly contained in the media reports, as hearsay. We further
discount the probative value of the testimony because it is decidedly inconclusive as
to whether, and in what manner, the involved mark was used in any media piece.
Applicant further objects to internet evidence submitted by Opposers as hearsay.
For the reasons stated above, we consider the evidence but only for what it shows on
its face, namely, that the website pages may have been viewed by the public, and that
the public may therefore be aware of the information contained therein. Safer, 94
USPQ2d at 1040.
Applicant’s objection to the declaration testimony of Narinder Shargill, Vice
President of Clinical Strategy and Medical Affairs, Pulmonary Division at Boston
Scientific Corp., and the exhibits attached thereto is overruled.11 The testimony
directly rebuts Mr. Wahr’s testimony regarding potential uses of the parties’ medical
devices and the alleged overlap between asthma and chronic obstructive pulmonary
disease (“COPD”).12 We hasten to add that Mr. Shargill’s declaration and exhibits

10 22 TTABVUE 57 (confidential).
11 24 TTABVUE 9-11, 25 TTABVUE (confidential). See also 23 TTABVUE 8-67, Exhibits 69
and 74-77. (attached to Opposers’ Notice of Reliance of August 12, 2015).
12 Chronic obstructive pulmonary disease is defined as “pulmonary disease (as emphysema
or chronic bronchitis) that is characterized by chronic typically irreversible airway
Opposition No. 91215699
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have little bearing on our decision, because there are no limitations in either
Applicant’s or Opposers’ identification of goods of their respective application and
registration that restrict the goods to those for the treatment of only one type of
pulmonary lung disease, such as asthma, COPD, bronchitis or emphysema.
Applicant’s objection to the report of linguist Geoffrey Nunberg, Ph.D.13 as
unreliable and overstepping the province of the Board, goes to the probative value to
be accorded the evidence and not its admissibility. We overrule the objection but note
that we have not relied on Dr. Nunberg’s testimony on the ultimate issue of likelihood
of confusion. The “opinions of witnesses, including those qualified as expert
witnesses, on the question of likelihood of confusion are entitled to little if any weight
and should not be substituted for the opinion of the tribunal charged with the
responsibility for the ultimate opinion on the question.” Mennen Co. v. Yamanouchi
Pharmaceutical Co., Ltd., 203 USPQ 302, 305 (TTAB 1979).
II. Description of the Record
The record consists of the pleadings and the file of the involved application.
Trademark Rule 2.122(b)(1). The parties also stipulated that “documents produced
during the discovery period that were created by a party or Six Degrees14 are

obstruction resulting in a slowed rate of exhalation—called also COPD.” At
http://www.merriam-webster.com/dictionary/COPD. The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
13 13 TTABVUE 11.
14 “Six Degrees” refers to an independent branding company employed by Applicant.
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authentic, qualify as business records for purposes of [Fed. R. Evid.] 803(6)(B), and
may be introduced into evidence through the affidavit of a party’s counsel, subject to
any objections other than authenticity or objections cured by [Fed. R. Evid.]
803(6)(B).”15
In light of our evidentiary rulings, the following is of record in this case:
1. Opposers’ Evidence
a. Submitted under Notice of Reliance (filed May 6, 2015):

• Status and title copies of Reg. Nos. 2856168 and 3380080.16
• Applicant’s answers and supplemental answers to certain of
Opposer’s interrogatories and requests for admissions.17
• Printouts from the American Heritage Dictionary of the English
Language online dictionary of definitions for “all” and “whole;”
printouts from West’s online Legal Thesaurus/Dictionary of
synonyms for “apparatus” and “device”; and printouts from the
Merriam-Webster online dictionary for definitions of “all,”
“whole,” and “hola” and synonyms for the word “whole.”18
• Print-outs from websites focusing on lung diseases.19
• Copy of an article from Popular Science.20
• Copy of an official record regarding Opp. No. 91216205.21
b. Submitted under Opposers’ counsel’s affidavit pursuant to the
parties’ stipulation (filed May 6, 2015):

15 13 TTABVUE 9. The parties also stipulated that Opposers could offer the testimony of Dr.
Narinder Shargill through a declaration, subject to Applicant’s right to object to the
testimony and to take cross-examination. 24 TTABVUE 6. As noted supra, we sustain
Applicant’s objection to Dr. Shargill’s testimony.
16 12 TTABVUE 8 and 11, Exhibits 1 and 2.
17 12 TTABVUE 19-34, Exhibits 5-7.
18 12 TTABVUE 35-62, Exhibits 8-15.
19 12 TTABVUE 69-97, Exhibits 18-25.
20 12 TTABVUE 63, Exhibit 16.
21 12 TTABVUE 66, Exhibit 17.
Opposition No. 91215699
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• Parties’ stipulation regarding submission of evidence.22
• Expert Report of Geoffrey Nunberg, Ph.D and accompanying
exhibits.23
• Copies of marketing brochures distributed by Opposers.24
• Copies of web pages from .25

2. Opposers’ Testimony:
• Testimony of Karen M. Passafaro, Opposer Boston Scientific
Corp.’s Vice-President of Marketing, with accompanying
exhibits.26
• Testimony of Matthew W. Sprague, Controller, Endoscopy
Division, Boston Scientific Corp.27
3. Applicant’s evidence:
a. Submitted under Notice of Reliance (filed July 6, 2105):
• Printouts from the Trademark Status and Document Retrieval
database (“TSDR”) of third-party registrations of marks including
the letter string “AIR.”28
• Printouts of websites purporting to show marks including
“AIR.”29
• Opposer’s answers to Applicant’s interrogatories.30
• Official records of the USPTO regarding Can. No. 92051129.31
b. Submitted under Applicant’s counsel’s affidavit pursuant to the
parties’ stipulation (filed July 6, 2015):

22 13 TTABVUE 8, Exhibit 26.
23 13 TTABVUE 11.
24 13 TTABVUE 82 and 87, Exhibits 62 and 63.
25 13 TTABVUE 90-100, Exhibit 64-67.
26 21 TTABVUE 2-191; 22 TTABVUE (confidential).
27 21 TTABVUE 329-352; 22 TTABVUE (confidential).
28 15 TTABVUE, Exhibits 1-41 and 16 TTABVUE Exhibits 42-44.
29 16 TTABVUE Exhibits 45-76.
30 16 TTABVUE Exhibits 77 and 78.
31 16 TTABVUE Exhibit 80 (Petition) and 81 (Answer).
Opposition No. 91215699
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• Copies of Opposers’ operating manuals.32
• Copies of screenshots of Opposers’ website .33
• Copies of a patient brochure.34
• Confidential documents (the Strategem report35 and a trademark
coexistence agreement36).
• Copies of the ALAIR trademark search report.37
4. Applicant’s testimony of its CEO, Dr. Dennis Wahr (taken July 2, 2015).38
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). Opposers’
standing to oppose registration of Applicant’s mark is established by the pleaded
registrations, which the record shows to be valid and subsisting, and owned by
Opposer Asthmatx, Inc. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs LLC, 105
USPQ2d 1252, 1254 (TTAB 2012). In addition, the record shows that Applicant first
used its mark in 2013,39 well after Opposer’s registrations issued, and subsequent to

32 19 TTABVUE Exhibits 83 and 84.
33 19 TTABVUE Exhibits 85-94.
34 19 TTABVUE Exhibit 95.
35 19 TTABVUE Exhibit 96.
36 19 TTABVUE Exhibit 98.
37 19 TTABVUE Exhibit 97.
38 30 TTABVUE 2-113; 29 TTABVUE (confidential).
39 29 TTABVUE 54.
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Opposers’ first use of its mark in 2010.40 However, because the pleaded registrations
are of record, priority is not an issue with respect to the mark and goods and services
covered thereby. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all 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, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services, the first two du Pont factors. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”). Opposer bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham, 55 USPQ2d at 1848.
We address in turn each of the du Pont factors for which the parties submitted
evidence or argument. We treat any other du Pont factors as neutral.

40 21 TTABVUE 14.
Opposition No. 91215699
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A. Similarity of the Goods
We start our analysis with the second du Pont factor, which assesses the
similarity or dissimilarity of the parties’ goods or services. For purposes of our
likelihood of confusion determination, we concentrate our discussion on Opposers’ use
and registration of the mark ALAIR in connection with medical goods, rather than
their use in association with educational services, because the services are
complementary to the goods, and because Applicant’s application does not include
services.
Applicant’s goods are described as “medical devices for treating obstructive lung
diseases; medical apparatus and instruments for treating obstructive lung diseases.”
The registered goods in Reg. No. 2856168 are “medical therapeutic devices for use in
the treatment of pulmonary diseases, namely, catheters, probes, generators,
bronchoscopes, and electrodes.” The goods are identical or overlapping as named.
Specifically, both the application and the registration identify medical devices that
treat pulmonary, i.e., lung diseases.41 Moreover, “obstructive lung diseases,” as
identified in the application, are a subset of “pulmonary diseases” as identified by the
registration, and the term “medical therapeutic devices” in the registration is
encompassed by the more broadly worded phrase “medical devices” in Applicant’s
application. The enumeration of the types of devices in the description of goods of the
registration does not eliminate the overlap.

41 “Pulmonary” is defined as “a : of, relating to, affecting, or occurring in the lungs b : carried on by the lungs .”
Opposition No. 91215699
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Applicant argues that the goods, by their nature, are specialized medical devices
that treat entirely different types of pulmonary disease. While the record is mixed, it
supports a finding that Applicant’s HOLAIRA device will only treat COPD through a
procedure Applicant calls “targeted lung denervation” while the ALAIR device will
only treat asthma through a procedure Opposers call “bronchial thermoplasty.”42
Nonetheless, there are no limitations in the application or registration restricting the
scope of goods covered by either mark. Applicant’s goods are medical devices,
apparatus and instruments that treat “obstructive lung diseases,” which
encompasses asthma. Likewise, Opposers’ catheters, probes, generators,
bronchoscopes, and electrodes treat “pulmonary disease,” which by definition may
include COPD.43 The parties’ goods, as described, are legally identical. As neither
Applicant’s application or Opposer Asthmatx’s registration specifies that the
treatment provided by the medical device is capable of treating one type of lung
disease to the exclusion of other types, we do not read such supposed “real-world
conditions,” to the extent any may exist, into the identifications. It is well established
that in deciding whether goods are related, we must focus on the wording of the

42 As described by Applicant, “targeted lung denervation” uses a catheter inserted through
the mouth that delivers thermal energy to a patient’s main right and left bronchus,
denaturing the nerves and allowing the airways to dilate. 30 TTABVUE 17. As described by
Opposers, “bronchial thermoplasty” is a procedure that uses a catheter inserted through the
mouth that delivers thermal energy to smooth muscle tissue inside of a patient’s lungs,
reducing the amount of tissue that might otherwise constrict the airflow. 21 TTABVUE 346;
Exhibit 17.
43 Further, Ms. Passafaro testified that although the Alair system is not presently indicated
for the treatment of COPD, Opposers’ future marketing plans may include the treatment of
COPD. 21 TTABVUE 13.
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application and registration, rather than what the record may reveal regarding the
nature of either parties’ goods. Stone Lion Capital Partners, L.P. v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for
the Board to focus on the application and registrations rather than on real-world
conditions, because ‘the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application.’”) (citing
Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990));
see also ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“In opposition proceedings in which the opposer has pleaded a registration, the
relatedness of the parties’ goods is analyzed by reference to the express wording of
the involved application and registration.”).
Because of the legal identity of the goods, this du Pont factor weighs heavily in
favor of a finding of likelihood of confusion.
B. Channels of Trade and Classes of Consumers
Despite Applicant’s arguments, where, as here, there are no restrictions on trade
channels or classes of consumers in either the application or registration, and the
goods are legally identical, we must presume that those goods move in the same
channels of trade and are available to the same classes of customers for such goods.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding
Board entitled to rely on this presumption); see also American Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods
Opposition No. 91215699
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are legally identical, they must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
Accordingly, the du Pont factors involving trade channels and classes of
purchasers also favor a finding of likelihood of confusion.
C. Consumer Sophistication
Applicant argues that the consumers are highly sophisticated. We have no doubt
that with respect to the physicians and hospital personnel responsible for purchasing
either an ALAIR or HOLAIRA device, we confront the highest level of sophistication.
The typical physician is an interventional pulmonologist, a highly specialized subset
within the field of pulmonology, of which there are only about 150 in the United
States.44 The goods are expensive.45 Prior to using the ALAIR device, physicians
undergo intensive training and are proctored in administering the treatment.46
Applicant intends to impose a proctoring requirement as well when its device is
available.47 These measures decrease the possibility that the physician or their
affiliated hospital purchasing staff would become confused as to the source of the
goods.48
The same level of sophistication cannot be attributed to that sector of the
consuming class that consists of the ultimate patients of the parties’ respective

44 29 TTABVUE 23.
45 For Opposers: 18 TTABVUE 152 (confidential); for Applicant: 29 TTABVUE 66
(confidential).
46 21 TTABVUE 89.
47 29 TTABVUE 64.
48 33 TTABVUE 38.
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medical apparatus on whom targeted lung denervation or bronchial thermoplasty
may be performed. Opposers have shown that they directly market to patients at
health fairs and “lung walks” and through their website.49 During her testimony,
Ms. Passafaro identified a brochure that “physicians could hand [] out to patients in
their waiting rooms.”50 The brochure includes the text: “[Y]ou might be a candidate
for Bronchial Thermoplasty (BT) delivered by the Alair ™ System. … BT, delivered
by the Alair System, is a safe outpatient procedure.” Ms. Passafaro explained how
Opposers use the brochure: “This could have been used at patient events. I mentioned
the American Lung Association, we do a lot of lung walks and asthma walks. And so
things -- health fairs where there might be all kinds of different vendors that are
there for different health things.”51 Opposers’ website also contains the tag line “BT,
delivered by the Alair ™ System”52 and a link to a survey for patients to fill out to
determine the impact asthma may have on their life.53 The survey results include a
statement that reads: “Be sure to share your answers with your doctor – and discover
how Bronchial Thermoplasty (BT) may help you live a fuller life. BT, delivered by the
Alair ™ system, is not another medication….”54

49 12 TTABVUE 36, 38, 52.
50 12 TTABVUE 36.
51 12 TTABVUE 36, Exhibit 3. See also at 20 TTABVUE 85 (“Your doctor wants to use the
Alair ™ System to treat your severe asthma. … The Alair System is the tool that your doctor
will use to perform BT.”).
52 13 TTABVUE 94, Exhibit 65; See also 13 TTABVUE 96, Exhibit 66 (“The procedure is
performed by a specially trained pulmonologist, using a device called the Alair System.”)
53 21 TTABVUE 49, Exhibit 6.
54 21 TTABVUE 315.
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Although Applicant has no current plans to market directly to patients,55 patients
are the ultimate decision makers as to whether to undergo treatment. Cf., Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991) (for
purposes of genericness in context of automobile washing services, relevant public
includes automobile owners and operators as well as operators and manufacturers of
car wash equipment); In re Artic Electronics Co., Ltd., 220 USPQ 836 (TTAB 1983)
(arcade customers, as the ultimate users but not the purchasers, are part of the
relevant public for purposes of likelihood of confusion). Adults browsing Opposers’
website or attending a health fair will confront Opposers’ use of the mark while
searching for treatments for asthma, and it is reasonable to conclude that such
individuals will associate the mark with the intended treatment and recollect the
mark when requesting treatment from their doctor. This appears likely despite the
more prevalent use of the term “bronchial thermoplasty” throughout Opposers’
advertising, as the tag line “delivered by the Alair ™ System” creates a separate
commercial impression that will be impressed upon consumers, and the use of the ™
symbol will reinforce the perception of ALAIR as a source indicator. And while the
market today may include no active competitors in the field of BT, the record suggests
that may very well not be the case in the future.56
Patients are not sophisticated consumers regarding available treatments for
asthma or obstructive pulmonary diseases. Applicant argues that despite a lack of

55 29 TTABVUE 59, 105-6.
56 Some of Applicant’s confidential branding documents suggest that Applicant may view
patients in some role as consumers. 29 TTABVUE 405.
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sophistication, the patient is guided every step of the way by the physician, so that it
is impossible for the wrong treatment to be selected. However, the fact that the
physician may be the “gatekeeper” of the therapy doesn’t necessarily enhance the
patients’ sophistication as to which company is providing the system that their doctor
is using to treat their pulmonary condition. As the applicable standard of care for a
likelihood-of-confusion analysis is that of the least sophisticated consumer, and the
patient class of consumer is not sophisticated, this factor must be considered neutral.
See Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1163 (Fed. Cir. 2014) (affirming that precedent requires consumer
care for likelihood-of-confusion decision to be based “on the least sophisticated
potential purchasers”); Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913,
1921 (TTAB 2015); Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB
2004).
D. Similarity of the Marks
We turn next to the first du Pont factor, the similarity of the parties’ marks. In a
likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not
a side-by-side comparison of the marks, but instead whether the marks are
sufficiently similar in terms of their commercial impression such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach, 101 USPQ2d at 1721 (citation omitted). Where, as here, the parties use their
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marks in connection with goods that are legally identical, the similarity needed to
support a determination that confusion is likely declines. See Bridgestone Ams. Tire
Operations LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012).
Applicant seeks to register the mark HOLAIRA. Opposers’ mark is ALAIR. The
only difference between the marks is the initial syllable of each, and the addition of
an “a” at the end of Applicant’s mark. In appearance, the marks are similar due to
the presence of the shared “AIR” or “LAIR” portion in each. As to pronunciation,
Opposers submitted the expert report of Dr. Nunberg, who testified that the marks
would sound alike. He opined that HOLAIRA would be pronounced /hə’lerə/,57 that
ALAIR would be pronounced /ə’ler/, and that the initial “h” in Applicant’s mark might
be “suppressed.”58 Despite this testimony, it is well established that there is no correct
pronunciation of a mark that, like both terms here, is not a recognized word. StonCor
Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed.
Cir. 2014); In re Viterra, 101 USPQ2d at 1912. While we accord the Nunberg report
some probative value, it falls short of compelling a finding that the marks would
always sound alike. Nonetheless, we find that consumers are likely to vocalize the
words in a similar manner, given that the stressed, middle portion in each mark is
identical.

57 The upside-down e is pronounced like an “a” in the word soda or “u” in the word but.
58 13 TTABVUE 14-5.
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In addition to this strong visual similarity and somewhat similar pronunciation,
the marks evoke highly similar connotations. They suggest a sense of one’s “breathing
in all the air” or getting “air to the whole lung.” The word “all” (evoked by the “al” of
Opposers’ mark) and the word “whole” (evoked by the letter string “hol” in Applicant’s
mark) are established synonyms. The term “air” in both marks conveys the same
meaning in relation to the goods, that of a product that benefits a patient’s ability to
breathe. When considered in their entireties, we find that both marks create similar
overall commercial impressions when used on goods used to treat pulmonary or
respiratory disease.
The first du Pont factor favors a finding that confusion between the marks is
likely, particularly in light of the lesser similarity required because the respective
goods are legally identical.
E. Number and Nature of Third Party Uses
Applicant asserts that the use of the letter strings AIR and LAIR are exceedingly
common in marks related to respiratory treatments and that consequently,
consumers will look to nuanced points of differentiation to distinguish the parties’
marks. In support of this assertion, Applicant submitted copies of over 40 third-party
registrations containing the term “AIR” for asthma drugs, inhalers for delivery of
drugs to treat asthma and other respiratory conditions, and breathing apparatus,
such as nasal pillow masks or devices that fit over one’s nose or face to assist in
breathing. In addition, Applicant submitted copies of webpages showing that “AIR”
is common for marks used in connection with such goods. Opposers, on the other
hand, argue that while “AIR” may be a common element in these marks, the term
Opposition No. 91215699
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“LAIR,” shared by both Applicant’s and Opposers’ mark, is not; thus the evidence fails
to prove weakness of Opposers’ mark.
Third-party registrations can be used to demonstrate that a term may have a
commonly accepted meaning, and that consumers will recognize it as a weak element,
thereby distinguishing the marks based on other elements. “Such third party
registrations show the sense in which the word is used in ordinary parlance and may
show that a particular term has descriptive significance as applied to certain goods
or services.” Institut National Des Appellations D’Origine v. Vintners International
Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); see also Juice Generation,
115 USPQ2d at 1674 (third-party registrations can be used “show the sense in which
a mark is used in ordinary parlance”); In re Box Solutions Corp., 79 USPQ2d 1953,
1955 (TTAB 2006). However, the “existence of [third party] registrations is not
evidence of what happens in the market place or that customers are familiar with
them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973). See also Jack Wolfskin, 116 USPQ2d at 1136; In re Davey Products Pty
Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). Here, the evidence shows that asthma
drugs and related goods (such as inhalers or breathing apparatus) move along the
spectrum of treatments for asthma, and that even if such goods are not directly
competitive with Opposers’ ALAIR device, they would be considered as alternative
option treatments. Based on these registrations, the common English definition of
the word “air,” and the fact that many of the registered marks appear in the
marketplace as shown by the internet evidence, we find that the term “air” would be
Opposition No. 91215699
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considered a weak component of these marks. However, as a compound term,
Opposers’ mark ALAIR may be viewed not merely as a derivative of the word “air,”
but as a combination of the letter “A” and the term “LAIR.” Only seven of the third-
party registrations incorporate “LAIR.”59 Of these seven, two were registered on the
basis of Trademark Act Section 66(a) or 44(e) and are entitled to little if any probative
value because there is no basis for finding that they have ever been in use in
commerce. Cf. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993);
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The remaining five are:
1. Reg. No. 2659940 for the mark ALERE for “medical
monitoring apparatus used to monitor and communicate
data such as weight, blood pressure, blood glucose levels,
other blood chemistry data, heart rate, EKG, coagulation
time, peak flow, or other measurements of respiratory
function in patients with chronic diseases such as asthma,
diabetes, obesity, chronic hypertension, chronic renal
disease and chronic obstructive pulmonary disease”;
registered December 10, 2002; renewed.
2. Reg. No. 2144663 for the mark CIRCULAIRE for “medical
apparatus, namely, aerosol products comprising delivery
tubes, nebulizers and reservoir bags for use in delivering
pharmaceutical preparations in the form of inhalants”;
registered March 17, 1998; renewed.
3. Reg. No. 2048127 for the mark SINGULAIR for
“pharmaceutical preparations for the treatment of
respiratory disorders”; registered March 25, 1997, renewed.
4. Reg. No. 1566967 for the mark VENTILAIR for “medical air
compressor for respiratory therapy”; registered November
21, 1989; renewed.

59 One of the seven is ALERE, considered as a phonetic equivalent to ALAIRE.
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5. Reg. No. 2998978 for the mark XOLAIR for “pharmaceutical
preparations for use in the treatment of asthma”; registered
September 20, 2005; renewed.
The probative value of Applicant’s evidence is further diminished inasmuch as the
third-party marks also include additional wording, not found in Opposer Asthmatx’s
registration or Applicant’s application, that engender a different commercial
impression from either parties’ mark.60 Overall, the evidence does not show that
Opposers’ mark is so weak that consumers will recognize the differences between the
marks. Cf. Jack Wolfskin, 116 USPQ2d at 1136 (third-party weakness evidence
characterized as “voluminous”).
F. Applicant’s Intent
Opposers contend that Applicant intended to trade on Opposers’ goodwill in
applying for its mark. The evidence in support of Opposers’ contention is mostly
contained in the confidential record, specifically in the Six Degrees branding
presentation and in internal emails. We find the evidence to fall short of showing that
Applicant intentionally sought to trade off the goodwill of Opposers’ ALAIR mark.
The fact that Opposers’ ALAIR system may be the only other device-based therapy
for treatment of obstructive lung disease, or that the companies have developed
similar marketing strategies does not prove Applicant’s intent to capitalize unfairly
on Opposers’ mark. This factor is neutral.

60 We further note that Reg. No. 2659940 for the mark ALERE was involved in Can. No.
92051129. Alere Medical Inc. had filed a petition to cancel Opposer Asthmatx’s registration
for the mark ALAIR on June 18, 2009. The petition was dismissed with prejudice on January
5, 2010 pursuant to the parties’ settlement agreement in that case.
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V. Conclusion
Considering all of the arguments and evidence of record as they pertain to the
relevant du Pont factors, in comparing Applicant's HOLAIRA mark to Opposers’
Registration No. 3848688 for the mark ALAIR, we conclude that the goods are legally
identical and are therefore likely to be sold through the same channels of trade to the
same classes of consumers, including those patients looking for treatment of severe
asthma or COPD whom we do not assume to have any heightened level of
sophistication. We find that the parties’ marks are similar in appearance,
pronunciation, connotation and overall commercial impression, and that consumers
are likely to confuse the marks, even given the presence of third-party uses and
registrations. On balance, we find the du Pont factors weigh in favor of finding a
likelihood of confusion.
Decision: The opposition is sustained pursuant to Trademark Act Section 2(d).