Edwards Lifesciences Corporationv.Vigilanz Corporation

Trademark Trial and Appeal Board

Apr 14, 2010

No. 91154210 (T.T.A.B. Apr. 14, 2010)

Hearing: November 12, 2009 Mailed: April 14, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Edwards Lifesciences Corporation
v.
VigiLanz Corporation
_____

Opposition No. 91154210
to application Serial No. 76302366
filed on August 20, 2001
_____

Robyn L. Phillips and Richard C. Gilmore of Workman Nydegger
for Edwards Lifesciences Corporation.

Elizabeth C. Buckingham and Heather D. Redmond of Dorsey &
Whitney LLP for VigiLanz Corporation.
______

Before Bergsman, Wellington and Ritchie, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

VigiLanz Corporation (“applicant”) filed an intent-to-
use application for the mark VIGILANZ, in standard character
form, for “near real-time computer monitoring system
comprised of a software application and database that
anticipates and detects possible adverse drug events, and
alerts healthcare providers to adverse drug events,” in
Class 9.
Edwards Lifesciences Corporation (“opposer”) opposed
the registration of applicant’s mark on the ground of
priority of use and likelihood of confusion under Section
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91154210
2
2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
Specifically, opposer alleged that it is the owner of a
registration for the mark VIGILANCE, in typed drawing form,
for “heart monitors,” in Class 10 and that the registration
of applicant’s mark VIGILANZ for computer monitoring systems
in the field of adverse drug events so resembles opposer’s
registered mark as to be likely to cause confusion.1
Applicant denied the salient allegations in the notice
of opposition.
Evidentiary Issue
A. Testimony of Dr. Edward Finegan.
Opposer proffered the expert testimony of Dr. Finegan,
a linguist, regarding the pronunciation of applicant’s mark.
Applicant objected to the admissibility of Dr. Finegan’s
testimony on the ground that it is not helpful to the trier
of fact. Dr. Finegan’s testimony is admissible. It is
relevant. That Dr. Finegan’s testimony may have little
probative value is no reason to strike it. Therefore,
applicant’s objection to Dr. Finegan’s testimony is
overruled.
Having overruled applicant’s objection, we hasten to
add that applicant is correct in asserting that Dr.

1 Registration No. 1715415, issued September 15, 1992; Sections 8
and 15 affidavits accepted and acknowledged; renewed. Opposer
also pleaded a dilution claim but withdrew it during the
prosecution of the proceeding.

Opposition No. 91154210
3
Finegan’s testimony has little probative value. First, it
is well-settled that there is no single “correct”
pronunciation of a trademark that is not a common English
word because it is impossible to predict how the public will
pronounce a particular mark. Central Industries Inc. v.
Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006)
(acknowledging that “there is no correct pronunciation of a
trademark” and finding ISHINE likely to be confused with ICE
SHINE, both for floor-finishing preparations). Second, the
Board is responsible for determining whether the marks are
similar, and we will not substitute the opinion of a
witness, even an expert witness, for our evaluation of the
facts. Fisons Ltd. v. UAD Laboratories, Inc., 219 USPQ 661,
663 (TTAB 1983). However, “absent a competently designed
and executed survey of a cross-section of customers and
prospective customers of the products or services involved,
the deciding tribunal must make its own subjective
evaluation of what the average consumer will perceive the
mark to be as he encounters them in the actual or
hypothetical … marketing arena.” The Mennen Company v.
Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ 302, 305 (TTAB
1979); Ferro Corp. v. Nicofibers, Inc., 196 USPQ 41, 45
(TTAB 1977) (“understanding of the marks must be determined
in light of the relevant purchasing sector and not that of
linguistic experts or those familiar with the meaning or
Opposition No. 91154210
4
derivation of words”); see also Anheuser-Busch Inc. v. Holt,
92 USPQ2d 1101, 1106 (TTAB 2009).
B. Improper designation of confidential information.
The stipulated protective order applicable in this
proceeding covers information that “may constitute trade
secret, confidential research, development, or otherwise
confidential commercial information within the meaning of
Fed.R.Civ.P. 26(c) and 37 C.F.R. §2.120.” The order
provided for the following two levels of protection:
1. Confidential material is protected from public
access; and,
2. Trade secret/commercially sensitive material may
be limited to attorneys and experts.
Fed.R.Civ.P. 26(c)(7) protects confidential, trade
secret, and commercially sensitive information by allowing a
party to limit the access to trade secret or other
confidential information or by permitting the information to
be revealed only in a designated way. The Advisory
Committee Notes to the 1970 Amendment explain that the Rule
does not provide complete immunity against disclosure;
rather, in each case, the need for privacy must be weighed
against the need for disclosure. Accordingly, information
that is confidential or that imparts private information may
require a different level of protection than information
Opposition No. 91154210
5
that may be considered a trade secret or commercially
sensitive.2
During the trial, the parties improperly designated
testimony and exhibits as “Confidential Attorneys’ Eyes
Only.” For example, Exhibits 6 and 9 in David Snider’s
testimony deposition are user manuals for opposer’s heart
monitors and they were designated as “Confidential
Attorneys’ Eyes Only.”3 It is inconceivable that user
manuals distributed to opposer’s purchasers could be
confidential documents. To that end, we note that neither
document contains a warning or legend advising users that
the manuals contain trade secrets and should be kept in a
secure location.
Other examples of improperly designated testimony are
excerpts from the discovery depositions of Adam Klass,
Patrick Kullmann and David Goldsteen which were designated
as “Confidential Attorneys’ Eyes Only” for no apparent
reason (e.g., how applicant’s mark VIGILANZ was selected,
the products on which applicant intended to use its mark, to
whom applicant makes its initial sales contacts).

2 A “trade secret” is defined as “a formula, process, device, or
other business information that is kept confidential to maintain
an advantage over competitors.” In essence, a “trade secret”
derives its value “from not being generally known or readily
ascertainable by others who can obtain economic value from its
disclosure or use.” Black’s Law Dictionary (8th ed. 2004).
3 We find it ironic that opposer has asked us to find that its
mark is famous (i.e., the epitome of extensive public recognition
and renown), yet its user manuals are designated as trade secrets
comprising commercially sensitive information.
Opposition No. 91154210
6
Because of the overdesignation of testimony and
evidence by the parties, it is not clear to us what is
intended to be truly “Confidential” and “Confidential
Attorney’s Eyes Only.” Therefore, in rendering our
decision, we will not be bound by the parties’ designation.
Board proceedings are designed to be publicly available and
the improper designation of materials as confidential
thwarts that intention. It is more difficult to make
findings of fact, apply the facts to the law, and write
decisions that make sense when the facts may not be
discussed. The Board needs to be able to discuss the
evidence of record, unless there is an overriding need for
confidentiality, so that the parties and a reviewing court
will know the basis of the Board’s decisions. Therefore, in
this opinion, we will treat only testimony and evidence that
is truly confidential and commercially sensitive as
confidential. Further, while sales figures, advertising
expenditures and similar information are often designated in
Board cases as confidential, in this case, where such
figures appear in evidentiary submissions designated as
confidential but appear elsewhere in publicly available
documents or in submissions not designated as confidential,
we will refer to such figures, as necessary, in this
opinion.

Opposition No. 91154210
7
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:
A. Opposer’s evidence.
1. Notice of reliance on a copy of opposer’s pleaded
registration prepared and issued by the U.S. Patent and
Trademark Office showing both the current status of and
current title to the registration.
2. Notice of reliance on copies of abstracts from
seven printed publications referencing opposer’s VIGILANCE
trademark.
3. Notice of reliance on the Dictionary of Medicine
(English to German), compiled by J. Nöhring, p. 689 (1984)
to show that “vigilanz” is the German word for “vigilance.”
4. Notice of reliance on excerpts from the discovery
deposition of Adam Klass, applicant’s Chief Technology
Officer, with attached exhibits 15, 16, and 17.
5. Notice of reliance on excerpts from the discovery
deposition of Patrick Kullmann, applicant’s former Vice
President of Sales and Marketing, with attached exhibits 4,
12, 14, and 18-21.
6. Notice of reliance on excerpts from the discovery
deposition of Dr. David S. Goldsteen, applicant’s Chairman
Opposition No. 91154210
8
and CEO, with attached exhibits 3, 10, 11, 13, 18, 20 and
22.
7. Notices of reliance on applicant’s answers to
interrogatory Nos. 2, 3, 5, 6, 7, 8, 12, 13, 15, 20, 22, 26,
27, 42, 43, 49 and 51.
8. Notice of reliance on applicant’s answers to
requests for admission Nos. 22, 24, 39, 45, 69, 70, 77, 197,
258-276, 279-282, 285-300 and 303-304 with attached
exhibits.
9. Notice of reliance on official records of the U.S.
Patent and Trademark Office, namely portions of the file
contents from Opposition No. 91150468, portions of the file
contents from opposer’s pleaded registration, U.S. Patent
No. 6993402 and U.S. Patent Application Nos. 2008/00004906
A1 and 2008/0074715 A1.
10. Testimony deposition of David K. Snider, opposer’s
Senior Product Manager, with attached exhibits.
11. Testimony deposition of Dr. Edward Finegan, Ph.D.,
an expert on linguistics, with attached exhibits.
B. Applicant’s evidence.
1. Notice of reliance on seven third-party
registrations and one application for marks including the
Opposition No. 91154210
9
words “vigilant,” “vigilance” or “vigilan” for products
and/or services in the medical field.4
2. Notice of reliance on the discovery deposition of
Dr. David S. Goldsteen in accordance with Trademark Rule
2.120(j)(4) purportedly to explain incomplete or misleading
excerpts designated by opposer.
3. Notice of reliance on the discovery deposition of
Patrick Kullmann pursuant to a stipulation of the parties in
accordance with Trademark Rule 2.120(j)(2).
4. Notice of reliance on the discovery deposition of
Adam Klass in accordance with Trademark Rule 2.120(j)(4)
purportedly to explain incomplete or misleading excerpts
designated by opposer.
5. Notice of reliance on the discovery deposition of
David K. Snider, with attached exhibits.
6. Testimony deposition of Dr. David S. Goldsteen
with attached exhibits.
The Parties’ Marks and Products
A. Opposer
Opposer uses the mark VIGILANCE to identify heart
monitors. The VIGILANCE heart monitors measure “hemodynamic
parameters in a patient, including things like cardiac
output, blood temperature, pressures and volumes that

4 An application has “no probative value other than as evidence
that the application was filed.” In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
Opposition No. 91154210
10
reflect the - - the performance of the heart and lungs and
vascular system.”5 VIGILANCE monitors “enable clinicians to
assess a patient’s heart function, balance their oxygenation
and make treatment decisions if a patient’s hemodynamic
balance is compromised.”6
The monitor is designed for use with a catheter that
measures cardiac output.7 The monitor is connected to the
catheter which is placed in the pulmonary artery for right
heart and pulmonary hemodynamic measurements.8
The Vigilance monitor measures cardiac
output continuously by injecting small
pulses of electrical power into the
blood and recording the corresponding
blood temperature changes via the
catheter. The software based CCO
[continuous cardiac output] algorithm
within the monitor converts these power
and blood temperature measurements into
an estimate of cardiac output.9

The VIGILANCE monitor also has the capability to
connect with other peripheral devices such as electronic
medical records and bedside monitors.10

5 Snider Testimony Dep., p. 55 and Exhibits 6 and 9 (User
manuals); Snider Discovery Dep., p. 32. “Hemodynamic” means
“relating to the physical aspects of the blood circulation.”
Stedman’s Medical Dictionary (27th ed. 2000). “Cardiac output” is
the “volume of blood ejected per minute from the heart into
systemic circulation.” Snider Testimony Dep., Exhibit 9.
6 Snider Testimony Dep., Exhibit 42.
7 Snider Testimony Dep., pp. 55-56 and Exhibits 6 and 9; Snider
Discovery Dep., p. 32.
8 Snider Testimony Dep., Exhibit 8, p. 7 (a 501(k) Notification
filed with the FDA); see also Snider Testimony Dep., p. 38.
9 Snider Testimony Dep., Exhibit 8, p. 4; see also Snider
Testimony Dep., p. 39.
10 Snider Testimony Dep., pp. 27, 39, 61-63.
Opposition No. 91154210
11
The “Vigilance® Monitor is for use only as an adjunct
in patient assessment.”11 For example, it may be used to
monitor the effect of a drug treatment.
So, for example, if you have a situation
where a drug is delivered to the patient
and the drug has an adverse effect on
that patient, where it be, you know, for
example, it might be a vaso active drug
that causes a patient’s vessels to open
wide and then blood pressure to fall,
that would be directly -- that
information would be directly indicated
on the Vigilance monitor and we would
see it as impacted cardiac output, as it
impacted end diastolic volume, pressures
within the heart and the - - and the
major vessels of the body.
So when you - - you know, you look at
adverse events that occur to the
patient, they are reflected in
physiology, and then the Vigilance
monitor would pick those up and then
could alert the clinician with an
audible alert, a visual alert as to what
the circumstances and conditions are.12

The VIGILANCE heart monitors are designed for use in
critical care settings such as operating rooms, intensive
care units, recovery rooms, hospital emergency rooms and
burn units.13 In fact, opposer promotes the VIGILANCE heart
monitor at trade shows directed to critical care clinicians:
the Society of Critical Care Medicine; the American
Association of Critical Care Nurses; the American Society of

11 Snider Testimony Dep., Exhibits 6 and 9, p. 2-1 (User Manuals).
12 Snider Testimony Dep., p. 41; see also Snider Testimony Dep.,
pp. 60-61; Snider Discovery Dep., p. 35.
13 Snider Testimony Dep., Exhibits 6 and 9, p. 1-1, and Exhibit
21, p. 1-3 (User manual); Snider Discovery Dep., pp. 41 and 80.
Opposition No. 91154210
12
Anesthesiologists; the American College of Chest Physicians;
the American College of Emergency Physicians and the
American Association of Emergency Room Nurses.14 It does
not sell the heart monitors to pharmacies.15
The “list price” of the VIGILANCE monitor is
approximately $14,000,16 however, when the monitors are
actually sold, the price is subject to negotiation.17 A
typical sale involves multiple monitors.18
The sales process starts with the end-user.19
A. The initial contact is by the
direct sales rep to the end user or
the manager in the department who
would be the end user. And that
sales presentation and that sales
contact is really focused mostly on
features and benefits, what does
the device do, how does it operate,
what’s its clinical application.
And usually that process is focused
on getting an agreement to do a
trial period. So those first
contacts with the sales rep and
then - - and the and the (sic) end
user are very much practical kind
of processes.

If at the end of the - - the trial
period, which could last for 30
days or sometimes as much as six
weeks, the end user will make a
decision and determine whether or
not they want to buy the system or
don’t want to buy the system.

14 Snider Testimony Dep., pp. 76, 129 and Exhibit 33.
15 Snider Discovery Dep., p. 41; Snider Discovery Dep., p. 80.
16 Snider Discovery Dep., p. 44.
17 Snider Discovery Dep., p. 45.
18 Snider Discovery Dep., p. 46.
19 Snider Discovery Dep., pp. 59-60.
Opposition No. 91154210
13
At that point

Q. Is that decision to buy or not buy,
the process at that level the
ultimate purchasing decision?

A. No, no. That’s the decision for
that department. And particularly
for capital equipment, there’s a
whole other set of hurdles that
have to be overcome.

So from that point, once the
department says this is the kind of
system we would like to use and
want to use, then that’s taken to
the next level, which is usually
that capital equipment buying group
or buying committee that has
representatives on it from - - a
core group of representatives but
also may include representatives
from areas that have specific
interest in those things.

So for example, if - - the core
group in a hospital may include
purchasing, administration, biomed,
somebody from nursing service and
the medical staff. But then if
this is a unit that’s specific to
the operating room, then the
operating room supervisor will
become part of that committee for a
period of time.

And the thing that’s interesting
about this whole process for our
sales representatives is as it goes
from level to level, from the user
level to the purchasing level for
capital equipment and, if the PO
[purchaser order] is big enough, to
the next level, which would be an
administrator, the hospital
administrator or the hospital CFO,
these people are more and more
divorced from actual contact with
the product so they don’t draw
Opposition No. 91154210
14
connections between, oh, this is
the monitor we call Vigilance.

* * *

Q. Can you describe in a little bit
more detail the level of contact
that each of these levels has with
the product and the sales force
marketing the Vigilance monitors?

A. Sure. At the department level
where they’re doing the clinical
evaluation, they have very close
contact with the sales
representative and they have hands-
on experience with the monitor,
including the monitor and all of
the - - op manuals, operations
manuals and so on.

When you get to the next level, the
purchasing committee, typically
their interface, the sales
representative is not involved in
presenting usually to the - - to
the purchasing committee. Their
review is limited to a paper file,
which could include literature and
- - descriptions and internal forms
identifying it. And then at that
point, once you get up to the
administrative level, he’s probably
not only never seen a monitor, he
probably has no idea what the
monitor’s used for. He’s relying
only on the paper trail that’s been
developed during this purchasing
process all the way up until, you
know, he - - he really looks at,
okay, we’re going to spend X
dollars on this and what’s the
return on investment of that X
dollar. So his connection between
what he sees on paper and what’s
actually being used down in the
department is pretty tenuous.20

20 Snider Testimony Dep., pp. 99-103; see also Snider Testimony
Dep., pp. 85-86; Snider Discovery Dep., pp. 47-58.
Opposition No. 91154210
15
“[T]he sales cycle for Vigilance monitors can be …
long. It can be as much as six months. Usually between
three and six months, that process is done, depending on the
size of the sale.”21
After a sale is completed and the monitors are
installed, opposer’s sales representatives will make a
follow-up visit “to ask questions or to answer questions, to
make sure things are operating appropriately.”22 Opposer
also provides technical services for repair, if necessary.23
B. Applicant
Applicant is seeking to register the mark VIGILANZ for
a “near real-time computer monitoring system comprised of a
software application and database that anticipates and
detects possible adverse drug events, and alerts healthcare
providers to adverse drug events.” “An adverse drug event
is a negative outcome that causes harm to a patient during a
therapeutic treatment of a patient with a specific
medication.”24 Applicant’s system is a software application
that analyzes data from different sources within a hospital
by applying a large rule set “to identify pairs, drugs and

21 Snider Discovery Dep., p. 56.
22 Snider Discovery Dep., p. 59.
23 Snider Discovery Dep., p. 59.
24 Goldsteen Testimony Dep., p. 10; see also Snider Discovery
Dep., p. 33 (“an adverse drug event is one in which there may be
an unexpected or an untoward reaction to a specific drug or the
combination of drugs”).
Opposition No. 91154210
16
lab pairs, which could potentially lead to an adverse drug
event.”25
A rule engine is software that imbeds
rules that can be written by the user or
by [applicant]. Those rules identify
specific labs, specific pharmaceuticals,
as well as associations such as
additional labs and pharmaceuticals.
And the rule engine then runs those
rules against the database to see if
there’s any match. If there’s a match
against any abnormal lab within the
system, the solution then activates or
begins running, watching to see if
that’s a situation that will ultimately
be addressed or not addressed.26

Applicant’s VIGILANZ system receives data from the
hospital’s admission, diagnosis and transfer system, the
lab system, and the pharmacy system.27 If a patient has an
abnormal lab report and that patient has been prescribed a
drug for which there is a rule, applicant’s VIGILANZ system
monitors the patient’s records to make sure that
appropriate action is taken.28
Applicant’s VIGILANZ system is designed for the
pharmacy because pharmacists are the primary hospital staff
responsible for monitoring adverse drug events.29

25 Goldsteen Testimony Dep., p. 9. “Rules” are “[t]he programmed
criteria which an on-line, real-time system uses to make
operating decisions.” Computer Dictionary, p. 473 (3rd ed. 1984).
See also The Computer Glossary, p. 343 (7th ed. 1995) (“a set of
conditions or standards which have been agreed upon”).
26 Goldsteen Testimony Dep., p. 14; see also Klass Discovery Dep.
p. 88.
27 Goldsteen Testimony Dep., p. 12.
28 Goldsteen Testimony Dep., p. 17.
29 Goldsteen Testimony Dep., pp. 19, 26; Goldsteen Discovery Dep.,
p. 79; Klass Discovery Dep., p. 36; Kullmann Discovery Dep., pp.
Opposition No. 91154210
17
Applicant’s system is not designed or marketed to
physicians because physicians do not have “direct, day-to-
day” responsibility for monitoring adverse drug events.
According to Dr. Goldsteen, physicians rely on the pharmacy
to monitor for adverse drug events.30
Q. Was it also designed to target
physicians?

A. Not primarily because physicians
would not be interested in
receiving alerts for conflicts
between what was in the pharmacy
file and what the test lab results
came by [sic]. As I recollect they
wanted to delegate that to the
pharmacist because the pharmacist
is the chief medication safety
person in a hospital as well as the
chief distributor of medications.31

Applicant’s advertising corroborates the testimony that
applicant’s system is designed for pharmacists by explaining
how pharmacists interact directly with applicant’s system
and then contact appropriate staff. Kullmann Exhibit 21, an
advertising flyer for applicant’s system, states the
following:
PHARMACY

· Real-time analysis and reporting –
data is always at your fingertips

· No data entry required

38, 43 (“This system, however, was virtually focused on the
pharmacy”).
30 Goldsteen Testimony Dep., pp. 28-29, 56-57; Goldsteen Discovery
Dep., p. 80.
31 Kullmann Discovery Dep., p. 38; see also Kullmann Discovery
Dep., p. 39.
Opposition No. 91154210
18
· Saves time by streamlining the
gathering of information

MEDICAL STAFF

· Enhances clinically relevant
pharmaceutical reports from
pharmacy

· Improves overall communication
between the clinician and pharmacy

See also Opposer’s notice of reliance on applicant’s
responses to opposer’s request for admissions Exhibit 1 (an
excerpt from applicant’s website explaining that
pharmacists interact directly with applicant’s system and
that the pharmacists notify physicians of the problems),
Exhibit 6 (Hospital Pharmacy Regulation Report newsletter
explaining that “an alert will notify the pharmacist to the
problem”), and Exhibit 15 (an excerpt from applicant’s
website with scenarios of how applicant’s system works in
which the pharmacist receives the alerts and then notifies
other appropriate staff).
Every facility that licenses applicant’s system must
pay a one-time $47,000 installation fee in addition to a
yearly license. Applicant charges hospitals based on the
number of beds; for example, a 150-bed hospital would spend
about $46,000 per year to license applicant’s system.32

32 Goldsteen Testimony Dep., Exhibit 59 (Hospital Pharmacy
Regulation Report, November 2005, a newsletter); see also
Goldsteen Testimony Dep., pp. 32-33.
Opposition No. 91154210
19
Applicant relies on direct sales contacts, its website
and trade shows to market its system.33 Applicant’s sales
process begins with the pharmacy department at a hospital.34
Generally, the director of the pharmacy or a pharmaceutical
staff person has been directed to find a method to monitor
patients for adverse drug events.35
The pharmacy is the one that was either
going to say no or say a conditional yes
with additional above approval because
it was a pharmacy based system, it
actually resided in the pharmacy, so
they were the main drivers.36

Because applicant is licensing a software application,
the information technology department will have a
representative present to ensure that the system is
compatible with the hospital’s system and that the price is
within reason.37
Q. Once initial contact has been made
with a hospital, whether it be
pharmacy personnel or IT personnel,
how is that you have discussions or
demonstrate the product for them?
Can you tell us about that?

A. Generally, if they show interest,
we recommend that they pull
together a group of people to whom
we will do an online demonstration.

33 Kullmann Discovery Dep., pp. 56-56; Goldsteen Discovery Dep.,
pp. 137, 141 (applicant also has a manufacturer’s
representative); Goldsteen Testimony Dep., p. 34.
34 Goldsteen Testimony Dep., p. 27; Goldsteen Discovery Dep., p.
50; Klass Discovery Dep., p. 123; Kullmann Discovery Dep., pp.
40-41, 43.
35 Goldsteen Testimony Dep., p. 27; Klass Discovery Dep., p. 84.
36 Kullmann Discovery Dep., p. 43.
37 Goldsteen Testimony Dep., pp. 27-28; Goldsteen Discovery Dep.,
pp. 51, 155; Klass Discovery Dep., pp. 123-14.
Opposition No. 91154210
20
It’s generally one or two
pharmacists and one or perhaps two
information technology people. And
we’ll show them a full
demonstration of our DPV product
online, and they will decide
whether they want to take that to
the next level.

Q. And what would the next level be?

A. The next level would probably be
pulling together some champions
within the administrative area.
Might be a vice president that the
pharmacy director reports to in
trying to help them prepare for
championing the capital process
when they put in for funding for
the solution.38

The final approval for licensing applicant’s system rests
with the director of the hospital pharmacy, the Chief
Operating Officer or the Chief Financial Officer.39 The
sales cycle generally takes twelve to eighteen months.40
After the license is signed, applicant has extensive
contacts with its licensees during the installation process.
It’s at that point we begin the
installation process, where we have at-
length discussions with the pharmacists
and the IT staff as to both how the
process is going to lay out time-wise,
who the key people are that will be
involved to work with us both on the IT
side and the pharmacy side, what
customization they may request in terms
of adapting or adjusting, what rules

38 Goldsteen Testimony Dep., pp. 29-30; see also Kullmann
Discovery Dep., pp. 40-41, 43-44.
39 Goldsteen Testimony Dep., p. 30; Goldsteen Discovery Dep., p.
160.
40 Goldsteen Testimony Dep., p. 33; Goldsteen Discovery Dep., p.
163.
Opposition No. 91154210
21
they may want. And then it’s the
education process to teach them how to
use the solution in terms of optimizing
their purchase of the license.41

The system will reside on a server located within the
hospital’s firewall or it will be supplied by applicant
through a remote data center.42
Applicant attends trade shows sponsored by the American
Society of Health System Pharmacists.43
Standing
Because opposer has properly made its pleaded
registration of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
mark and the product covered by the registration. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).

41 Goldsteen Testimony Dep., p. 39.
42 Goldsteen Discovery Dep., p. 59.
43 Goldsteen Testimony Dep., pp. 34, 35-36; Goldsteen Discovery
Dep., p. 185.
Opposition No. 91154210
22
Likelihood of Confusion
Our determination under Section 2(d) is based on 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, 567 (CCPA 1973). See also,
In re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
Opposition No. 91154210
23
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer has been using the mark VIGILANCE to identify
heart monitors since 1990.44 Opposer made of record the
sales figures and advertising expenditures for its heart
monitors. The sales and advertising figures were designated
confidential – and they are truly appropriate matter for a
confidential designation - so we may only refer to them in
general terms. On their face, the sales figures appear to

44 Snider Testimony Dep., p. 107.
Opposition No. 91154210
24
be relatively large. In that regard, opposer claims to have
captured 75% of the heart monitor market.45
With respect to the advertising figures, they are not
particularly impressive. Furthermore, the problem that we
have in assessing the effectiveness of the advertising
expenditures is that there is no testimony or evidence
regarding whether opposer’s advertising expenditures are
large or small vis-à-vis other comparable medical products.
Opposer has submitted references from medical journals
to show that its VIGILANCE mark has achieved fame. An
article in an unidentified periodical, referred to
“Vigilance … as the gold standard in this trial.”46 Opposer
also submitted abstracts from seven medical journals
referencing the use of VIGILANCE heart monitors in clinical
tests. The abstracts were from Anaesthesia, Journal of
Clinical Monitoring, Clinical Intensive Care, Journal of
Trauma, a Japanese publication and a German publication.
The articles have limited value in proving the fame of
opposer’s mark because they noted only opposer’s heart

45 Snider Testimony Dep., p. 76. The testimony regarding
applicant’s market share was made in the context of the
aforementioned “invasive” heart monitors (i.e., those employing
catheters to obtain the heart-monitoring data). While the term
“heart monitors” may include non-invasive heart monitors, we do
not have evidence regarding opposer’s market share in the broader
category of heart monitors. Thus, we can only conclude that
opposer’s “75%” market share is limited to the invasive-type
heart monitors which, as explained infra, are used in critical
care environments.
46 Snider Testimony Dep., pp. 109-111 and Exhibit 27.
Opposition No. 91154210
25
monitors as an instrument used in a particular study. They
did not demonstrate recognition of the mark by the relevant
purchasing public.
Although the medical journal articles are not
sufficient to establish fame for the mark, as evidenced by
opposer’s long use of its mark and market success, we find
that opposer has acquired niche market fame. That is,
within critical care settings such as operating rooms,
intensive care units, recovery rooms, hospital emergency
rooms and burn units, the VIGILANCE mark has achieved a high
level of renown.47
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). Opposer’s registered mark is
VIGILANCE and applicant’s mark is VIGILANZ.

47 As David Snider testified, outside the critical care setting
the hospital administrators do not associate the VIGILANCE mark
with any particular product. (Snider Testimony Dep., p. 101).
Opposition No. 91154210
26
The marks are similar in appearance. They both start
with the letters V-I-G-I-L-A-N. We find, therefore, that
VIGILANZ bears a clear visual resemblance to VIGILANCE.
In terms of sound, we likewise find that there are
clear similarities in the two marks. Applicant’s argument
that “[t]he ‘A-N-Z’ at the end of the VIGILANZ mark is
pronounced … differently from the “A-N-C-E” at the end of
the VIGILANCE mark” is not persuasive.48
We pronounce it “VigiLanz,” with a soft
G, a short A, and a hard Z. The A is
pronounced “chimpanzee,” short A
sound.49

Applicant’s advertising and marketing materials do not
feature a pronunciation guide. As indicated in the
discussion regarding Dr. Finegan’s testimony, it is well-
settled that there is no single correct pronunciation of a
trademark that is not a common English word because it is
impossible to predict how the public will pronounce a
particular mark. Central Industries Inc. v. Spartan
Chemical Co. Inc., 77 USPQ2d at 1701. Because applicant’s
mark is similar in appearance to the familiar word
“Vigilance,” most consumers will associate VIGILANZ with
VIGILANCE and pronounce VIGILANZ as “vigilance.” In
addition, both marks start “vigil” and end with a syllable
featuring “an.” In this regard, because applicant’s product

48 Applicant’s Brief, pp. 29-30.
49 Goldsteen Trial Testimony, p. 24.
Opposition No. 91154210
27
is a monitoring sytem for detecting adverse drug events, it
is likely that prospective purchasers and users of the
system will see a connection between the name VIGILANZ and
the purpose of the system, thereby associating the name with
the word “Vigilance.” Moreover, even if applicant’s
argument regarding the pronunciation of its mark were
correct, the pronunciation of the two marks is still similar
to the extent that both marks start with “vigil.”
In terms of connotation and commercial impression,
consumers will perceive the marks as meaning “watchful.”
The word “vigilance” means “watchfulness.”50 Likewise,
VIGILANZ conveys the same meaning and commercial impression.
Q. Can you describe for me the
circumstances in which the mark
VigiLanz was conceived?

A. To the best of my recollection, I
was trying to come up with a name
that would reflect our goal of
being an alert company in alerting
to potential adverse drug events.
The word vigilant came to mind.51

* * *

Q. Dr. Goldsteen, does the mark
VigiLanz owned by VigiLanz
Corporation have any connotation?

A. Yes, vigil, the first five letters
really means alert is truly what
attracted us to that name.

Q. Do you, does it mean anything else?

50 The Random House Dictionary of the English Language
(Unabridged), p. 2121 (2nd ed. 1987).
51 Goldsteen Discovery Dep., p. 28.
Opposition No. 91154210
28
A. Not that I know of.

Q. Okay. Does it relate to, would you
agree that it has the connotation
of being vigilant?

A. You know, that’s in the ear of the
beholder I guess. But that was the
intent that somebody would want to
be alert, that it’s a name that
conveys a company that has a
product that is alerting.52

The marks VIGILANCE and VIGILANZ suggest products that
look or watch for specific clinical parameters.
In view of the foregoing, we find that the marks are
similar.
C. The similarity or dissimilarity and nature of the
products described in the application and registration
and likely-to-continue trade channels and classes of
consumers.

In determining whether the goods are related, it is not
necessary that the goods of the parties be similar or
competitive in character to support a holding of likelihood
of confusion; it is sufficient for such purposes that a
party claiming damage establish that products are related in
some manner and/or that conditions and activities
surrounding marketing of these goods are such that they
would or could be encountered by same persons under
circumstances that could, because of similarities of marks
used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same

52 Goldsteen Discovery Dep., pp. 74-75.
Opposition No. 91154210
29
producer. Schering Corporation v. Alza Corporation, 207
USPQ 504 (TTAB 1980); Oxford Pendaflex Corporation v.
Anixter Bros. Inc., 201 USPQ 851 (TTAB 1978).
Various points of similarity can undoubtedly be drawn
between the products of the parties (e.g., they are both
used in the medical field, specifically in hospitals, albeit
in different places within those hospitals, and they are
both used to monitor aspects of patient care). In fact,
opposer’s heart monitor may be used to monitor the effect of
a drug treatment. However, a finding that the goods are
similar is not based on whether a general term or
overarching relationship can be found to encompass them
both. Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188
USPQ 517, 520 (TTAB 1975) (“In determining whether products
are identical or similar, the inquiry should be whether they
appeal to the same market, not whether they resemble each
other physically or whether a word can be found to describe
the goods of the parties”).
Despite the superficial similarities between the goods,
we find that they are very different: opposer’s product is
a monitor (with associated operating software), used in
critical care settings such as operating rooms, intensive
care units, recovery rooms, hospital emergency rooms and
burn units to measure cardiac output while applicant’s
product is a computer monitoring system comprising software
Opposition No. 91154210
30
and a database used by hospital pharmacies to analyze
patient lab results and prescribed drugs to anticipate
adverse drug events. Opposer simply has not satisfied its
burden of proof of showing that the goods identified by the
application are sufficiently related to heart monitors as to
create a likely of confusion.
Opposer argues that the similarity of the goods must be
determined based on the description of the goods in the
application and that because the description of goods does
not specify all of the capabilities of applicant’s computer
systems, we should not artificially limit applicant’s goods
in the likelihood of confusion analysis.53 We agree.
However, applicant has submitted extrinsic evidence to
demonstrate the meaning of its description of goods, not to
restrict or limit the goods. Where, as here, applicant’s
description of goods provides basic information, and the
goods are of a technical nature, it is entirely appropriate
to consider extrinsic evidence to determine the specific
meaning of the description of goods. In re Trackmobile,
Inc., 15 USPQ2d 1152, 1154 (TTAB 1990); see also Pharmacia
Inc. v. Asahi Medical Co., Ltd., 222 USPQ 84, 85-86 (TTAB
1984) (the Board must be concerned that the uses and
meanings of technical or scientific terms in the description

53 Opposer’s Brief, p. 39.
Opposition No. 91154210
31
of goods have been made clear to properly assess the
relationship between the goods).
However, when there is a difference
between the marks and the goods, or
both, it is incumbent upon the plaintiff
to persuade us that there is a
reasonable likelihood of confusion * * *
If the goods are different, the proof is
perhaps more objective because then we
are looking for concrete facts about the
nature of the goods, their uses, the
channels through which they reach their
ultimate purchasers and users, the types
of persons who buy them, and the
marketing environment surrounding the
sale of the goods of the parties. In
the many cases, some of these facts will
be self-evident, a matter of common
knowledge or matters to be presumed from
the identifications of goods in
opposer's registration and applicant's
application. In other cases, however,
the relationship between the parties’
goods, particularly as that ultimate and
the underlying subsidiary facts impinge
upon the question of likelihood of
confusion, is not readily apparent and
some evidence is needed.

Hyde Park Footwear Company, Inc. v. Hamphsire Designers,
Inc., 197 USPQ 639, 641-642 (TTAB 1977).
Thus, we find that applicant has distinguished its
computer system from opposer’s heart monitors, whereas,
opposer has merely adduced testimony that applicant’s
computer system could theoretically interface with opposer’s
heart monitors. The essence of opposer’s argument is that
“[b]oth VIGILANCE® heart monitors and the VIGILANZ computer
systems are designed to be flexible enough to be used with a
variety of systems commonly used by healthcare facilities
Opposition No. 91154210
32
because healthcare facilities often use different systems
with various functions and capabilities.”54 However, with
respect to applicant’s description of goods, we are only
concerned with a computer system that monitors for adverse
drug events. The evidence is clear that opposer’s heart
monitors and applicant’s computer systems are separate and
distinct products that are not marketed to the same
consumers. Ultimately, purchasing decisions may be made by
some of the same capital equipment purchasing committees in
hospitals, albeit for their critical care and pharmacy
departments. However, the initial marketing and outreach
efforts by the parties are to different prospective end
users of the respective products. Furthermore, as
demonstrated by the facts of this case, the purchasing
process is so attenuated and lengthy for both products that
there is time for all involved to understand clearly and
completely the vendors with whom they are dealing. Opposer
did not submit any evidence that persuades us that the
description of goods in the application could reasonably
encompass products that are related to opposer’s heart
monitors.55

54 Opposer’s Brief, p. 39.
55 In analyzing the goods, the dissent focuses on the term
“healthcare providers” in applicant’s description of goods rather
than on the product that is described. The evidence is clear and
unequivocal that the healthcare provider that uses applicant’s
computer system is the hospital pharmacy.
Opposition No. 91154210
33
Opposer also argues that its heart monitors and
applicant’s computer monitoring system are complementary
products used by the same healthcare providers to monitor
information regarding patient health and to send alerts as
appropriate. Moreover, opposer asserts that applicant’s
computer monitoring system can interface with opposer’s
heart monitor.
First, the evidence demonstrates that the two products
are used by different personnel in the hospital. Opposer’s
monitors are used by the staff in critical care settings
such as operating rooms, intensive care units, recovery
rooms, hospital emergency rooms and burn units to measure
cardiac output. Applicant’s computer monitoring system is
designed for and used by the hospital pharmacy.
Second, the two products are not complementary
products. There is no testimony or evidence demonstrating
that the two products would be bought and/or used together
by the same personnel in the hospital. Thus, despite the
fact that a patient may be simultaneously monitored by
applicant’s system and opposer’s heart monitor, the same
hospital staff are not interacting with the two products.
Finally, the evidence regarding the complementary
nature of opposer’s heart monitors and applicant’s computer
Opposition No. 91154210
34
system is theoretical, not practical.56 Dr. Goldsteen
testified that the issue of who receives alerts from
applicant’s system and how the alerts are received is a
workflow issue, not a customization issue.57 The focus of
applicant’s system is analyzing lab results and medicines,
not monitoring vital signs.58
Q. Does the VigiLanz product use data
from devices that are used to
monitor the physiologic response to
medication?

A. So far not.

Q. Could it?

A. It could take output, for example,
for vital signs, for blood
pressure, for say oximetries,
temperature. So far we, we
haven’t, we’re kind of a long ways
from that.

Q. So would that include gathering
information from devices that are
used to, for hemodynamic monitoring
devices?

A. Generally there’s not a market
need, there’s not a call for that.
And the reason being is those
devices alert immediately in the
people that it needs to alert that
are in the immediate vicinity. So
there isn’t a, a hidden process
going on. Blood pressure drops,
you know, the blood pressure cuff
goes up, there’s a loud beep. A
person goes into dysrhythmia, the

56 Klass Discovery Dep., pp. 93-95; Goldsteen Testimony Dep.,
pp.49-51 (“Theoretically, it is technically possible” for
applicant’s system to monitor and analyze physiological data).
57 Goldsteen Testimony Dep., p. 42.
58 Klass Discovery Dep., p. 96.
Opposition No. 91154210
35
monitor alerts immediately. So
there isn’t a market call
necessarily. The potential would
only be if, if we wanted to try to
tie that drop in blood pressure to
a medication that the patient had
been given at some earlier time.

Q. Right. And it is possible to do if
it’s a result of the medication, is
that correct?

A. It depends on the system. It
depends on if it’s a stand alone
system that’s not integrated into
the hospital’s electronic record,
no.59

Q. But if it was a system that’s
integrated into the hospital’s
electronic system, the VigiLanz
product could –

A. We could theoretically create an
interface with that and use that
data.60

In analyzing the channels of trade and classes of
consumers, we must keep in mind that “although the two
parties conduct business not only in the same fields but
also with some of the same companies, the mere purchase of
goods and services of both parties by the same institution
does not, by itself, establish similarity of trade channels
or overlap of customers. (Internal citation omitted). The
likelihood of confusion must be shown to exist not in a
purchasing institution, but in ‘a customer or purchaser.’”

59 Applicant’s system is an independent system from the hospital
system. (Goldsteen Discovery Dep., p. 85; Goldsteen Testimony
Dep., p. 13).
60 Goldsteen Discovery Dep., pp. 91-92.
Opposition No. 91154210
36
Electronic Design & Sales v. Electronic Data Systems, 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (Emphasis in
the original).
Although opposer’s heart monitors and applicant’s
computer monitoring system are both used in hospitals to
monitor some aspect of patient care, this is the most that
can be said in support of their similarity. The decision to
purchase opposer’s heart monitors is made by the staff in
the critical care section of a hospital. David Snider,
opposer’s Senior Product Manager, testified that opposer’s
initial contact is with the end user and that “the end user
will make a decision and determine whether or not they want
to buy the system.”61 In fact, Mr. Snider noted that as the
decision moves to the purchasing committee for approval, the
people involved have little knowledge about the product.
[T]hese people are more and more
divorced from actual contact with
the product so they don’t draw
connections between, oh, this is
the monitor we call Vigilance.62

Their focus is on the return on investment.
On the other hand, applicant markets its computer
monitoring system to the hospital pharmacy. The testimony
of applicant’s witnesses, Adam Klass, Patrick Kullmann, and

61 Snider Testimony Dep., pp. 99-100.
62 Snider Testimony Dep., p. 101.
Opposition No. 91154210
37
Dr. David Goldsteen, is unequivocal and uncontroverted in
that respect.
There is no evidence that opposer’s heart monitors are
marketed to the pharmacy or that applicant’s computer
monitoring system is marketed to physicians, nurses, or
administrators in critical care settings. Furthermore, the
parties attend trade shows aimed at different health care
staff.
To support its position that the goods at issue move in
the same channels of trade, opposer argues that both parties
attend trade shows and market over the Internet and through
direct marketing. While true, opposer ignores the fact that
the evidence shows that opposer markets to the staff of
critical care units while applicant markets to hospital
pharmacies. Again, the burden was on opposer to submit
evidence to the contrary.
We are left with a record showing that the same people
do not encounter the marks and products; or, if they did,
they would do so only in the context of lengthy sales
processes leaving no room for misunderstanding about the
sources of the respective products. Opposer counters this
fact by arguing that because applicant did not restrict its
description of goods to computer monitoring systems designed
and sold to hospital pharmacies, the Board must interpret
Opposition No. 91154210
38
the description of goods to include doctors, nurses and
other relevant healthcare providers.
Opposer has properly recited the law that where there
are no restrictions, the trade channels and classes of
consumers are determined by the description of goods.
Because applicant’s description of goods is not restricted
to hospital pharmacies, in fact, it recites healthcare
providers, it must be presumed that applicant’s computer
monitoring system for anticipating and detecting adverse
drug events and sending alerts to healthcare providers moves
through all channels of trade suitable for that type of
product. The same holds true for opposer’s heart monitors.
The determinative question is whether there is an overlap in
the ordinary and usual trade channels for applicant’s
identified computer monitoring system for anticipating and
detecting adverse drug events and sending alerts to
healthcare providers and opposer’s identified heart
monitors. Triumph Machinery v. Kentmaster Manufacturing, 1
USPQ2d 1826, 1828 (TTAB 1987). There is no dispute that
opposer’s heart monitors are designed for use in critical
care settings such as operating rooms, intensive care units,
recovery rooms, hospital emergency rooms and burn units and
not pharmacies.63 With respect to applicant’s product, we

63 During oral argument, opposer explained that its heart monitors
are invasive devices that require a catheter. However, because
opposer’s description of goods is not restricted, we must
Opposition No. 91154210
39
are persuaded by the weight of substantial evidence that
applicant’s product is a highly specialized computer system
which, by its very nature, is designed for and used
primarily by hospital pharmacists. Applicant has shown
through the testimony of Adam Klass, Patrick Kullmann and
Dr. David Goldsteen that hospital pharmacists, not
physicians, are responsible for monitoring for adverse drug
events and that, in fact, physicians rely on pharmacists to
monitor patients for adverse drug events. Furthermore,
Patrick Kullmann and Dr. Goldsteen specifically testified
regarding why physicians were unsuited to receive alerts
from applicant’s system. Opposer did not counter this
testimony with contrary evidence. We reiterate that we
consider this extrinsic evidence regarding the description
of goods for the sole purpose of understanding the nature of
the goods. In re Trackmobile, Inc., 15 USPQ2d at 1154;
Pharmacia Inc. v. Asahi Medical Co., Ltd., 222 USPQ at 85-
86.
In view of the foregoing and in construing applicant’s
description of goods in a manner most favorable to opposer
(see CTS Corp. v. Cronstoms Manufacturing, Inc., 515 F.2d

interpret “heart monitors” to include all heart monitors, such as
heart monitors that a physician or nurse in a doctor’s office
would use or even a heart monitor connected to an exercise
machine at a health club. Nevertheless, the breadth of the term
heart monitors does not make the goods any more related. To the
contrary, the physicians and staff in a doctor’s office would be
even less likely to have any contact with applicant’s goods.
Opposition No. 91154210
40
780, 185 USPQ 773, 774 (CCPA 1975)), we find that opposer’s
heart monitors and applicant’s “near real-time computer
monitoring system comprised of a software application and
database that anticipates and detects possible adverse drug
events, and alerts healthcare providers to adverse drug
events” are not related products and that they move in
different channels of trade to different classes of
consumers.
D. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Just based on the products involved in this proceeding,
one would expect that all of the purchasers would exercise a
high degree of care when making their purchasing decision.
Nothing in the record is to the contrary. Both products are
expensive. Opposer’s VIGILANCE monitor has a list price of
$14,00064 with a typical sale involving multiple monitors.65
Licensing applicant’s computer system involves a one-time
$47,000 installation fee in addition to a yearly license
which for a 150-bed hospital would be about $46,000 per
year.66 Furthermore, the testimony proffered by both
parties confirms that opposer’s heart monitors are purchased
and applicant’s computer system is licensed only by

64 Snider Discovery Dep., p. 44.
65 Snider Discovery Dep., p. 46.
66 Goldsteen Testimony Dep., Exhibit 59 (Hospital Pharmacy
Regulation Report, November 2005, a newsletter); see also
Goldsteen Testimony Dep., pp. 32-33.
Opposition No. 91154210
41
experienced personnel after significant study and
negotiations. The sales cycle for opposer’s heart monitors
is between three to six months while the sales cycle for
applicant’s computer system is twelve to eighteen months.
Thus, we find that opposer’s heart monitors and applicant’s
computer system are purchased and licensed only after
careful consideration by persons who are highly
knowledgeable about the products.
E. Instances of actual confusion.
There have been no reported instances of actual
confusion.67 Opposer argues, however, that since applicant
has only licensed two systems, there has only been
de minimis opportunity for confusion. Applicant argues to
the contrary that the parties concurrently have been using
their marks since March 2001.
Although applicant has only licensed two systems, it
has given numerous demonstrations.
Q. [H]ow many Web demos have you
given?

* * *

A. Too many to count, yeah.68

Q. And can you give me an idea of how
many such product demonstrations
VigiLanz Corporation has put on in
its history?

67 Snider Discovery Dep., p. 83; Goldsteen Testimony Dep., p. 26.
68 Klass Discovery Dep., p. 84.
Opposition No. 91154210
42
A. My best guess would be 3- to 400.69

Furthermore, both parties maintain a presence on the
Internet.70 Dr. Goldsteen testified that applicant’s
marketing efforts “have been more along the process of
driving potential customers to our web site, where we have
our names on several LISTSERVS that our customers
voluntarily go on and support the product. … We have
optimized, as much as we can, the searches on Google, for
example, to drive [customers] to our web site.”71
The evidence supporting the lack of any reported
instances of confusion, namely applicant’s product
demonstrations and the Internet presence both parties
maintain, as well as opposer’s 75% market share, corroborate
our previous finding on other evidence that the channels of
trade and classes of consumers are different.
F. Balancing the factors.
Despite the similarities of the marks and the strength
of opposer’s mark, we find that the differences between the
goods, channels of trade, and classes of consumers, as well
as the sophisticated decision-making process in purchasing

69 Goldsteen Testimony Dep., p. 31.
70 Kullmann Discovery Dep., p. 56; Goldsteen Dep. Exhibits 3 and
13; Snider Testimony Dep., pp. 68 and 126, Exhibits 20, 32, 38
and 40.
71 Goldsteen Testimony Dep., p. 34; see also Goldsteen Discovery
Dep., p. 141. “LISTSERV” is “an automated mailing list
distribution system” that users subscribe to exchange messages.
net.speak: the internet dictionary, p.112 (1994).
Opposition No. 91154210
43
and using the products at issue, warrant a finding that
there is no likelihood of confusion. In reaching this
conclusion, we have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto (including
any evidence and arguments not specifically discussed in
this opinion.
We find that there is not a practical likelihood of
confusion; rather the extent of any possible confusion is
de minimis. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion controversy
in this case:
We are not concerned with the mere
theoretical possibilities of confusion,
deception or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969).
Decision: The opposition is dismissed with prejudice.
* * *
Ritchie, Administrative Trademark Judge, dissenting:
The majority has determined that there is “no
likelihood of confusion.” I disagree. To explain why, I
set forth my own analysis of the du Pont factors.
Opposition No. 91154210
44
The majority has found opposer’s VIGILANCE mark to be
“strong.” For the reasons set forth in the majority
opinion, I agree that opposer’s mark has achieved at least
“niche market fame.” I do not, however, agree that the
majority has given this factor sufficient weight in its
analysis. As we have been instructed by the Court of
Appeals for the Federal Circuit, which we often refer to as
our primary reviewing court, a strong mark, “casts a long
shadow which competitors must avoid.” Kenner Parker Toys,
Inc. v. Rose Art. Ins., Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992). Thus, even if we were to consider
only niche market fame, the onus was on applicant to avoid a
similar mark that would be likely to cause confusion. This,
I do not believe applicant has done.
The majority finds that the marks are “similar.”
Indeed they are effectively identical. Their appearance is
almost entirely identical, with the clearly dominant section
being the shared first seven letters, V-I-G-I-L-A-N-. The
Federal Circuit has instructed that while we must not
improperly dissect a mark, certain features may be
considered dominant. In re National Data Corp., 224 USPQ
749, 751 (Fed. Cir. 1985) (“[T]here 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
Opposition No. 91154210
45
their entireties.”). I would expect that most consumers
would not notice the difference in the final eighth letter
in applicant’s mark (versus the ninth and tenth in
opposer’s). As we have often stated, the question is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods or services offered under the
respective marks is likely to result.
As acknowledged by the majority, the parties’ marks
have the same connotation and commercial impression.
Indeed, as the record shows, there is even a dictionary
entry showing “VIGILANZ” as the German translation of
“VIGILANCE.” (Dictionary of Medicine English to German,
compiled by J. Nohring, p.689 (1984)).72 Accordingly, I
would find that the marks not only sound the same, but look
the same, and mean the same thing. In short, they are for
all purposes effectively identical.
As instructed by the Federal Circuit, the more similar
the parties’ marks, the lesser the degree of similarity
between their goods necessary to support a finding of

72 Thus even if we were to consider this as a “foreign
equivalents” case, the words have the same meaning as well as an
almost identical appearance. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1696 (Fed. Cir. 2005); In re Spirits Int’l, N.V.,
563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009).
Opposition No. 91154210
46
likelihood of confusion. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993);
In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only
necessary that there be a viable relationship between their
identified goods to support such a finding. Id. The issue
is not whether consumers would confuse the respective goods,
but rather whether consumers would be confused into
believing that the goods are from the same source. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984). This is particularly
true where, as here, opposer enjoys the wide berth of
protection accorded its (at least) niche fame, and the
parties’ marks are effectively identical.
It is axiomatic that we compare the goods as they are
stated in the registration and the application, and not as
they are used in the marketplace. Indeed, the Federal
Circuit has been very specific about this. The second du
Pont factor precisely asks us to consider “[t]he similarity
or dissimilarity and nature of the goods or services as
described in an application or registration or in connection
with which a prior mark is in use.” In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
(emphasis added); see also Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). In Octocom Systems, the Court stated
“[t]he authority is legion that the question of
Opposition No. 91154210
47
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.” (citing various
cases). In that case, the Court affirmed the Board’s
decision not to consider an applicant’s arguments regarding
the market conditions of its product since they were not
reflected in its identification of goods. As the Court
stated:
Thus, it was not error, as OSI argues,
for the board to give no weight to OSI’s
evidence purporting to show that OCTOCOM
modems are bought by a particular class
of purchasers. It would have been error
to do otherwise. Because OSI seeks an
unrestricted registration, such evidence
as there is of a specific class of
customers did not relate to a material
fact. (emphasis in original). Id. at
1787-1788.

Here, as well, I believe it is error on the part of the
majority to give credence to applicant’s argument that the
market conditions are relevant where applicant seeks an
unrestricted registration for its goods.73 Nowhere does

73 The majority relies on extrinsic evidence offered by applicant,
citing In re Trackmobile, Inc., 15 USPQ 2d 1152, 1154 (TTAB
1990). However, that case is inapposite since the majority does
not actually rely on applicant’s evidence to clarify that a term
“has a specific meaning to members of the trade” Id. Rather,
applicant here seeks only to show how it, specifically,
understands the term “healthcare providers” as set forth in its
Opposition No. 91154210
48
applicant’s registration say that it is limited to use by
pharmacists, nor does that limitation ring true. One could
easily imagine this unrestricted registration including use
by the same “healthcare providers” who administer opposer’s
“heart monitors,” or even being used as a complementary
product thereto. See also Bose Corp. v. QSC Audio Products,
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1310-1311 (Fed. Cir.
2002) (affirming Board’s decision not to consider evidence
of different channels of trade where identification of goods
in the application was unrestricted). With the effectively
identical marks, and at least niche fame of opposer’s mark,
applicant should have stayed clear. I note again, the
instructions of the Federal Circuit, to us, as well as to
the parties, that a strong mark “casts a long shadow which
competitors must avoid.” Kenner Parker Toys, Inc,
22 USPQ2d at 1456.
Accordingly, unless otherwise restricted, the use by
either party may be expanded from whatever it is currently
to what is listed on their respective identifications of
goods. Therefore, we must assume that what is listed on its
identification, rather than what is argued by counsel on
brief and at the oral hearing, is what is sought by
applicant.

identification to refer to pharmacists only (to the exclusion of
physicians) – a far-fetched argument indeed.
Opposition No. 91154210
49
Although there is no clear definition of “healthcare
provider” in the record, we need not be stuck with
applicant’s attenuated arguments that its system differs
greatly from opposer’s in that applicant’s is used by
pharmacists rather than physicians. In this regard, I would
follow the lead of the Federal Circuit in taking judicial
notice of well-known facts. The BVD Licensing Corp. v. Body
Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed.
Cir. 1988). There, the Court stated: “Courts may take
judicial notice of facts of universal notoriety, which need
not be proved, and of whatever is generally known within
their jurisdictions.” (citation omitted) (finding B.V.D. to
be a famous mark by judicial notice). Indeed, Judge Nichols
filed a concurrence in that case specifically to endorse the
use of judicial notice in Board decisions, noting:
“Arguably, if the parties on both sides fail to offer
evidence on a relevant point, they stipulate by implication
that the court will decide it by judicial notice . . . I am
pleased with the panel’s reference to so undermentioned a
rule.”74 Id. at 1722. As Judge Nichols pointed out, we

74 Incidentally, Judge Nichols noted that “[w]ith so little at
stake in the grant or refusal of a trademark or service mark
registration, it is often not worthwhile to fill the record with
proofs of every fact a court might wish to take into account.“
As to the amount at stake, I think most parties would take issue
with his characterization, and as to the records, we have
certainly seen them grow, and I do not believe that either the
Federal Circuit or the Board wishes to see a further unwarranted
increase. Rather, I agree with his next comment: “Judicial
notice fills the gaps.” Rather than stacking the record, parties
Opposition No. 91154210
50
look to the Federal Rules of Evidence in determining that we
may take judicial notice of facts “whose accuracy cannot
reasonably be questioned.” Fed. R. Evid. 201(a). The Court
further pointed out that the “territorial jurisdiction” of
the Board is the entirety of the United States. The Federal
Rules of Evidence state: “A court may take judicial notice,
whether requested or not.” Fed. R. Evid. 201(c). The rules
further state that judicial notice may be taken “at any
stage of the proceeding.” Fed. R. Evid. 201(f).
The Federal Circuit teaches us not to confine use of
judicial notice to dictionary definitions. The BVD
Licensing Corp., 6 USPQ2d at 1721. In another context, the
Court simply took judicial notice of the meaning of the
phrase “distal, middle, and proximal phalanges” as a
generally-known fact. Gart v. Logitech Inc., 254 F3d 1334,
59 USPQ2d 1290, 1296 (Fed. Cir. 2001). Although that was a
patent litigation, I don’t see any reason the rationale
could not be applied to (trademark) Board proceedings, as
the Federal Circuit has wisely cross-applied other doctrines
between patent and trademark law. See for example In re
Bose Corp, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)
(citing, on appeal from a (trademark) Board decision, among
other cases, a federal district court case involving patent

may ask us to take judicial notice pursuant to the Fed. R. Evid.
201(c).
Opposition No. 91154210
51
inequitable conduct, Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir.
2008).
In the present case, I would take judicial notice of
the fact “whose accuracy cannot reasonably be questioned”
within our “territorial jurisdiction” that “healthcare
providers,” as set forth in applicant’s identification,
include physicians and nurses.75 Accordingly, the clearly
defined identification in the application of a system that
“anticipates and detects adverse drug events” and “alerts
healthcare providers,” including physicians and nurses, may
easily comprise, at the very least, viably similar if not
complementary goods to opposer’s VIGILANCE “heart monitors,”
which, being unrestricted in their identifications as well,
could themselves be sold by prescription by the same
pharmacists which applicant claims are doling out its
VIGILANZ systems.76
I agree with the majority that we must rule on the
record, and that opposer has the burden of proving its case
at trial. However, I suggest that we must also use all

75 I would, on the other hand, have a much harder time applying
the definition of “healthcare providers” to “pharmacists” as
applicant seems to do, in its practice if not its identification
of goods.
76 As the majority recognizes in footnote 63, there is nothing in
oppposer’s identification of goods that limits it from selling
over-the-counter heart moniters. Neither is applicant restricted
from selling via any channels of trade.
Opposition No. 91154210
52
tools at our disposal. This includes using the rules of
construction, including looking at the plain meaning of the
parties’ respective identifications of goods. This also
includes, as instructed by the Federal Circuit and the
Federal Rules of Evidence, implementing judicial notice
where useful to our decision-making.
Moreover, in light of the majority’s finding of niche
fame, and of the identical nature of the marks, I believe
there is substantial evidence in the record to support a
finding of similarity of the goods between the parties.
This is analgous to the situation in Hewlett-Packard Press
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). There, the Federal Circuit reversed the
Board’s dismissal of opposition where the Court found by
“substantial evidence” a likelihood of confusion “as a
matter of law” despite an assertion by the Board (as by the
majority here) that opposer had not submitted sufficient
evidence of the relatedness of the parties’ goods and
services. The rationale of the Court was that the Board did
not need to base its determination on such third-party
evidence (or a lack thereof). Rather, the Court directed
the Board to make a direct comparison of “the services
described in [applicant’s] application with the goods and
services described in [opposer’s] registrations.” Id. at
Opposition No. 91154210
53
1004. Thus, the Board must not overlook key evidence in the
respective identifications themselves.
The majority has quoted some testimony from the record,
which I excerpt here. In particular, when asked if
Applicant’s VIGILANZ system is “also designed to target
physicians,” Mr. Kullman responded, “Not primarily …”
(Kullman Discovery Dep., p. 38). The majority also points
out that Exhibit 21 to the Kullman deposition, an
advertising flyer for applicant’s system, shows the
following:
PHARMACY

· Real-time analysis and reporting –
data is always at your fingertips

· No data entry required

· Saves time by streamlining the
gathering of information

MEDICAL STAFF

· Enhances clinically relevant
pharmaceutical reports from
pharmacy

· Improves overall communication
between the clinician and pharmacy

The issue before us is whether the goods and the
channels of trade as identified by the unrestricted
application and registration are likely to coincide. I
think they do. Clearly pharmacists are not the only group
targeted by applicant’s advertising efforts. Mr. Kullman’s
“Not primarily “ is a far cry from “No” and the listing of
Opposition No. 91154210
54
“Medical Staff” equally with “Pharmacy” on Exhibit 21
indicates, rather, that multiple users are contemplated,
including various “Medical Staff.”
Both applicant’s systems and opposer’s heart monitors
include goods that monitor information regarding patients’
health and alert healthcare providers when attention is
needed. Indeed, as pointed out by opposer, “the same
adverse drug event may cause both the VIGILANCE heart
monitor and the VIGILANZ computer system to issue an alert.”
(Opposer’s brief at 41). Accordingly, on this record, I
would find that the identification of goods in the
application is at least viably related to that in the
registration, along with the likely channels of trade.
I do not take issue with the majority’s findings on the
conditions of sale and sophistication of purchasers. With
complicated and expensive systems that monitor patients’
health, we would anticipate greater care on the part of the
purchasers. As the Federal Circuit has noted, however, even
sophisticated buyers are not immune from source confusion
where, as here, the marks are effectively identical.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed.
Cir. 2000).
In balancing the factors, then, I would find, as the
majority has, that opposer has shown at least niche fame of
its VIGILANCE mark for “heart monitors.” With that, I would
Opposition No. 91154210
55
find that opposer’s mark should be accorded a fairly wide
berth of protection. I would also find that the parties
have effectively identical marks. I would find that
applicant’s identification of “near real-time computer
monitoring system comprised of a software application and
database that anticipates and detects possible adverse drug
events, and alerts healthcare providers to adverse drug
events,” is likely to be a viably similar if not
complementary product to opposer’s heart monitors, as shown
by the parties’ unrestricted identifications, in goods as
well as channels of trade. Although the consumers are
likely to be sophisticated, and are shown to be so by the
record, I think this would have little effect on source
confusion given the effectively identical marks and the
niche fame of opposer’s mark on a similar good. Finally, I
would resolve what little doubt I may have for opposer as
the undisputed senior user, as we must. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
Hewlett Packard Co. v. Packard Press Inc., supra, 62 USPQ
1001 at 1003.
Accordingly, I would sustain the opposition and refuse
registration to applicant.