Cross Country Paper Products, Inc.

Trademark Trial and Appeal Board

Dec 12, 2000

No. 75508058 (T.T.A.B. Dec. 12, 2000)

12/12/00
Paper No. 11
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cross Country Paper Products, Inc.
________
Serial No. 75/508,058
_______
Myron Amer for applicant.
Tarah K. Hardy, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Cross Country Paper
Products, Inc. to register the mark EXCEL for “plastic
gloves to be used once by and thereafter disposed of by
dentists.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
1 Application Serial No. 75/508,058, filed June 24, 1998, based
on a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/508,058
2
ground that applicant’s mark, if applied to applicant’s
goods, would so resemble the previously registered marks
EXCEL for “surgical instruments, namely, forceps, graspers,
scissors, dissectors, clamps, needles, needle holders,
probes, suction and irrigation instruments, trocars,
cannulae, [brushes] and cutting instruments”2 and EXCEL DR
for “surgical instruments, namely, needles, [and] needles
holders”3 as to be likely to cause confusion. Both
registrations are owned by the same entity.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Applicant contends that the cited marks are
suggestive, and that the surgical instruments listed in the
cited registrations are not used in dental procedures.
Applicant also asserts that “surgical instruments would
typically be purchased by a discriminating purchaser, such
as a hospital employee, whereas disposable plastic gloves
by a dentist’s assistant, the former being concerned with
quality of the purchased product and the latter by the
cost.” (brief, pp. 3-4) Applicant also is critical of the
third-party registration evidence, submitted by the
2 Registration No. 1,960,642, issued March 5, 1996.
3 Registration No. 2,011,191, issued October 22, 1996.
Ser No. 75/508,058
3
Examining Attorney, bearing on the relatedness of the
goods.
The Examining Attorney maintains that the marks are
identical or nearly so and that the goods are related.
Further, the Examining Attorney contends that the goods
would be encountered by the same groups of purchasers,
namely those in the medical and dental fields. The
Examining Attorney points to the third-party registrations
of record showing that the same entity has adopted a single
mark to identify both medical gloves and surgical
instruments.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. 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 first turn to compare the marks. Applicant’s mark
EXCEL is identical to registrant’s EXCEL mark, and is
substantially identical to registrant’s EXCEL DR mark. The
presence of the abbreviation for “doctor” in registrant’s
Ser No. 75/508,058
4
second mark does not serve to distinguish it from
applicant’s mark in any meaningful way. Simply put, the
marks are identical or substantially identical in terms of
sound and appearance. With regard to meaning, we take
judicial notice of the fact that the term “excel” means “to
surpass or outshine (as in some quality possessed).”
Webster’s Third New International Dictionary (unabridged
ed. 1993). Thus, we recognize that the cited marks, as
well as applicant’s mark, are laudatorily suggestive.
Nevertheless, the marks convey the same meaning, namely,
that the goods sold thereunder are superior in quality.
Because the marks are, in one instance, identical, and
in the other case, nearly identical, applicant’s goods need
not be closely related to registrant’s goods in order for
there to be a likelihood of confusion. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984). Indeed, “even when goods or
services are not competitive or intrinsically related, the
use of identical marks can lead to the assumption that
there is a common source.” In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). In the
present case, due to the identity or near identity between
the marks, if there is a viable relationship between
Ser No. 75/508,058
5
applicant’s goods and registrant’s goods, a likelihood of
confusion exists.
We find that there is a sufficient relationship
between, on the one hand, registrant’s surgical instruments
and, on the other hand, applicant’s plastic gloves, that,
when sold under identical or substantially identical marks,
purchasers are likely to be confused. Although applicant
would urge us to confine registrant’s goods to the medical
field, the goods are not so restricted. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987)[the goods must be compared as recited
in the involved application and registration]. Thus, some
of registrant’s surgical instruments, as identified in the
cited registrations, might also be used in the dental field
by oral surgeons. Registrant’s goods, therefore, would be
encountered by the same class of purchasers/users of
applicant’s goods. Although we find it reasonable for
applicant to assert that medical professionals are likely
to be somewhat sophisticated purchasers of medical
supplies, that sophistication would not ensure against
confusion here given the closeness between the involved
marks.
In finding that applicant’s plastic gloves to be used
once by and thereafter disposed of by dentists are related
Ser No. 75/508,058
6
to registrant’s surgical instruments, we have considered
the several third-party registrations based on use which
the Examining Attorney has submitted. The registrations
show marks which are registered for both types of goods.
Although these registrations are not evidence that the
marks shown therein are in use or that the relevant
purchasers are familiar with them, they nevertheless have
probative value to the extent that they serve to suggest
that the goods listed therein, including medical gloves and
surgical instruments, are of a kind which may emanate from
a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB
1988). Although we have taken into account applicant’s
critique of this evidence, the registrations remain
probative to the extent just indicated. To the extent that
applicant asserts that some of the registered marks are
house marks or trade names, we would point out that the
range of products listed thereunder are, nevertheless, all
confined to the medical/dental field.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Ser No. 75/508,058
7
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
supra.
We conclude that purchasers familiar with registrant’s
surgical instruments sold under the marks EXCEl and EXCEL
DR would be likely to believe, upon encountering
applicant’s mark EXCEL for plastic gloves to be used once
by and thereafter disposed of by dentists, that the goods
originated with or are somehow associated with or sponsored
by the same entity.
Decision: The refusals to register are affirmed.