Cynosure, Inc.

Trademark Trial and Appeal Board

May 8, 2009

No. 76653359 (T.T.A.B. May. 8, 2009)

Mailed:
May 8, 2009
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cynosure, Inc.
________

Serial No. 76653359
_______

John P. Iwanicki of Banner & Witcoff, Ltd. for Cynosure,
Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Grendel, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Cynosure, Inc. (applicant) has applied to register the
mark CYNERGY in standard characters on the Principal
Register for goods identified as “medical lasers for the
cosmetic and medical treatment of the face and skin, and
vascular treatment, sold directly to licensed medical
practitioners” in International Class 10.1

1 Application Serial No. 76653359, filed January 11, 2006,
claiming first use of the mark anywhere and first use of the mark
in commerce on March 7, 2005.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Serial No. 76653359
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s mark is likely to be confused
with the mark SYNERGIE PEEL, which is registered on the
Principal Register in typed form in Registration No.
2678708 for goods identified as “medical devices used for
microdermabrasion” in International Class 10. The
registration issued on January 21, 2003, and it is active.
The registration claims first use of the mark anywhere and
first use of the mark in commerce on January 18, 2001. The
registration includes the following statement: “The
English translation of ‘SYNERGIE’ is ‘synergy.’” The
registration also includes a disclaimer of PEEL.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
Serial No. 76653359
3
similarity of the marks and the similarity of the goods in
the application and the cited registration. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”). We will consider each of
the factors as to which applicant or the examining attorney
has presented evidence or arguments.
We will address the marks first. In comparing the
marks we must consider the appearance, sound, connotation
and commercial impression of the marks at issue. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Serial No. 76653359
4
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues that the Examining Attorney failed to
consider the marks in their entireties by ignoring the
disclaimed term “PEEL” in the cited mark. Applicant argues
further that when the marks are considered in their
entireties, there are significant differences in
appearance, sound and connotation. Applicant emphasizes
the differences in appearance and sound based on the
different number of letters in the respective marks, and
the difference in the first letter.
Applicant also asserts that its customers' familiarity
with its corporate name and other registered marks,
CYNOSURE and CYNOSURESPA, which share the same first three
letters, will influence the perception of its CYNERGY mark,
in particular, the connotation and sound. Applicant
suggests that the three marks form a “family of marks.”
Applicant’s Brief at 9. Based on the existence of a family
of marks, applicant argues that customers familiar with its
other marks will pronounce the first “Y” in CYNERGY like a
long “I” in contrast to the likely pronunciation of the “Y”
in the cited mark as a soft “I.”
The Examining Attorney agrees that the marks must be
viewed in their entireties but argues that greater weight
Serial No. 76653359
5
must be given to SYNERGIE in the cited mark because the
disclaimed term “PEEL” is merely descriptive. The
Examining Attorney also argues that SYNERGIE and CYNERGY
are phonetic equivalents and that they are also the most
important elements in the respective marks because SYNERGIE
is the first element in the cited mark and CYNERGY is the
only element in applicant’s mark.
We reject applicant’s family of marks argument. In an
ex parte appeal, the focus of the likelihood-of-confusion
analysis must be the mark applicant seeks to register, not
other marks applicant may have used or registered. In
other words, a family-of-marks argument is not available to
an applicant seeking to overcome a likelihood-of-confusion
refusal. In re Lar Mor International, Inc., 221 USPQ 180
(TTAB 1983) (“In reaching the conclusion of no likelihood
of confusion, we have given no weight to applicant's
argument … that it owns a family of French-word marks all
beginning with the word ‘TRES’….”); In re Ald, Inc., 148
USPQ 520, 521 (TTAB 1965) (“Likewise, in view of the
specific prohibition of Section 2(d) of the Statute, the
fact that applicant may possess a ‘family’ of marks
characterized by the term ‘ALD’ is of no particular
significance herein if the mark for which applicant now
seeks registration, ‘ALDPRESS’, when considered in its
Serial No. 76653359
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entirety, is confusingly similar to the previously
registered mark ‘ALLPREST’.” (footnote omitted)).2 See also
In re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445, 446
(TTAB 1972) (“Applicant's ownership and registration of
marks other than the mark sought to be registered herein is
immaterial and irrelevant to the specific issue before us,
and cannot justify the registration of what could be a
confusingly similar mark.” (citations omitted)).
Turning to the comparison of the marks at issue here,
we concur with the Examining Attorney and conclude that the
marks are similar. While there are specific differences
between the marks, we find that the points of similarity
are more significant. We, of course, recognize that we
must view the marks in their entireties, and we have. We
find that SYNERGIE is the dominant element in the cited
mark, and that it is highly similar to CYNERGY, the only
element in applicant’s mark.
As the Court of Appeals for the Federal Circuit
observed, “… in articulating reasons for reaching a

2 In an inter partes case a plaintiff may assert a family of
marks by showing that the marks containing the family feature
have been used and promoted together in such a manner as to
create public recognition and that the family feature is
distinctive. See Marion Laboratories Inc. v.
Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988)
and Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24
USPQ2d 1048, 1052-1053 (TTAB 1992) (Board denies
applicant/defendant attempt to assert family-of-marks argument).
Serial No. 76653359
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conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Thus, we consider the disclaimed, descriptive
term “PEEL” in the cited mark insufficient to distinguish
the marks.
Also, CYNERGY and SYNERGIE are highly similar, if not
identical, phonetic equivalents. We find applicant’s
arguments to the contrary unpersuasive, including the
argument that the first “Y” in CYNERGY will be pronounced
as a long “I”. Furthermore, it is significant that both
marks begin with words which are phonetic equivalents.
Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“… [it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). We also find applicant’s arguments that
the marks differ in connotation and commercial impression

Serial No. 76653359
8
unpersuasive. Both marks connote “synergy,” and “synergy”
likewise dominates the commercial impression of both marks.
Accordingly, we conclude that the marks are similar.
Next, we consider whether the goods of the parties are
related. The goods in the application and the cited
registration need not be identical to find a likelihood of
confusion under Trademark Act Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods originate from or are
associated with the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
The proper inquiry is not whether the goods could be
confused, but whether the source of the goods is likely to
be confused. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993).
Applicant identifies its goods as “medical lasers for
the cosmetic and medical treatment of the face and skin,
and vascular treatment, sold directly to licensed medical
practitioners” in International Class 10; the goods
identified in the cited registration are “medical devices
used for microdermabrasion” in International Class 10.
Serial No. 76653359
9
Applicant’s arguments, which we will address below, focus
principally on the channels of trade and sophistication of
purchasers, rather than the relationship between the
respective goods as such.
The Examining Attorney argues that both the
application and the cited registration identify devices for
performing cosmetic procedures. In particular, the
Examining Attorney argues that both devices can be used to
remove dead skin cells.
In the evidence the Examining Attorney provided, we
note the following description of microdermabrasion: “The
principle of microdermabrasion is to remove surface dead
cells from the skin, bring forward plump, fresh, healthy
cells in conjunction with collagen and elastin tissue.”
See attachment to final Office action, dated June 26, 2008,
from drstooman.com. The evidence also shows that this
process is used, among other purposes, to diminish lines,
age spots and acne scars. Id. from speirsclinic.com.
Microdermabrasion devices spray abrasive crystals and use
suction in this process. Id.
Laser devices are used to treat these same conditions,
for example, acne scars, as well as for other purposes. We
recognize, as applicant argues, that the respective devices
employ different technology and that applicant’s device can
Serial No. 76653359
10
be used for a wider variety of conditions, as the
identification of goods indicates.
The Examining Attorney has also provided numerous
examples of facilities, spas and clinics, which offer both
microdermabrasion and laser procedures. See, e.g., Id.
from advancedlaserskin.com, speirsclinic.com,
drstolman.com, lasercosmetics.com, lalasercenter.com, and
lookgood90210.com.
Thus, the evidence shows that the goods in the
application and the goods in the cited registration are
used for overlapping purposes and that they are purchased
by the same entities for use in the same facilities.
Accordingly, we conclude that the respective goods are
related. Applicant does not directly dispute these facts.
As we noted, applicant rests its arguments with regard
to the goods principally on the restricted channels of
trade for its goods, as specified in the identification of
goods, and most emphatically on the sophistication of the
purchasers of its goods, as well as the goods identified in
the cited registration.
The identification of goods in the application
specifies that applicant’s goods are “… sold directly to
licensed medical practitioners.” Applicant argues, “These
lasers are FDA-approved medical devices and are not
Serial No. 76653359
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available except to doctors and medical practitioners.
These doctors are sophisticated purchasers who are careful
about the product and the brand they purchase.”
Applicant’s Brief at 3. Applicant also indicates that its
lasers range in cost from $90,000 to $170,000. Although
the identification of goods does not explicitly specify so,
applicant also argues that it sells its lasers through a
direct sales force which also assists purchasers with
installation and training. Even in the absence of evidence
on this specific point, we would conclude that this is true
based on the identification of goods and other relevant
evidence of record.
Applicant also asserts that the goods identified in
the cited registration typically cost between $8,000 and
$15,000. Applicant also states that persons who use these
devices must be trained and certified to do so. Although
applicant has not provided evidence to support its
assertions with regard to the cost and circumstances
surrounding the use of the devices identified in the
registration, here also we would conclude based on the
identification of goods and other relevant evidence of
record that the general circumstances applicant posits
would apply to the goods as identified in the cited
registration.
Serial No. 76653359
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While we acknowledge that the goods in question, both
applicant’s goods and those identified in the cited
registration, are relatively complex and expensive and that
the potential purchasers are relatively sophisticated in
their fields, we conclude that the level of care which
would attend the purchases is not sufficient to preclude a
likelihood of confusion under the totality of the
circumstances in this case. The Board has stated, “Even
technically trained purchasers who are extremely familiar
with expensive machinery may be confused when similar marks
are used with respect to the same goods. See Wm. K.
Stamets Company v. The Metal Products Company, 176 USPQ 92
(TTAB 1972).” In re N.A.D. Inc., 221 USPQ 1115, 1118 (TTAB
1984). See also In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
In conclusion, after considering all evidence and
arguments bearing on the du Pont factors, including those
not specifically discussed here, we conclude that there is
a likelihood of confusion between applicant’s CYNERGY mark
when used in connection with “medical lasers for the
cosmetic and medical treatment of the face and skin, and
vascular treatment, sold directly to licensed medical
practitioners” and the cited SYNERGIE PEEL mark when used
Serial No. 76653359
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in connection with “medical devices used for
microdermabrasion.”
Lastly, we note that we must resolve any doubt with
regard to a determination under Trademark Act Section 2(d)
in favor the owner of the cited, prior registration. See
In re The United States Shoe Corporation, 229 USPQ 707, 709
(TTAB 1985); In re Martin's Famous Pastry Shoppe, Inc., 221
USPQ 364, 367 (TTAB 1984); In re Apparel, Inc., 578 F.2d
308, 151 USPQ 353 (CCPA 1966).
Decision: We affirm the refusal under Trademark Act
Section 2(d).