Invatec S.R.L.

Trademark Trial and Appeal Board

Jul 21, 2008

No. 79024620 (T.T.A.B. Jul. 21, 2008)

Mailed: July 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Invatec S.R.L.
________

Serial No. 79024620
_______

G. Franklin Rothwell, Anne M. Sterba and Thomas D. Lyford
of Rothwell, Figg, Ernst & Manbeck, P.C. for Invatec S.R.L.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Holtzman, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Invatec S.R.L. to register
on the Principal Register the mark ADMIRAL XTREME in
standard character form for “catheters,” in International
Class 10.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 79024620 was filed on April 6, 2006,
seeking an extension of protection under Section 66(a) of the
Trademark Act, as amended, based upon International Registration
No. 0886910.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 79024620
2
applicant’s mark, as used in connection with applicant’s
goods, so resembles the mark EXTREME, previously registered
on the Principal Register for “disposable laser angioplasty
catheters,” in International Class 102 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed main briefs
on the matter under appeal, and applicant filed a reply
brief.3
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key, though not exclusive, considerations are the
similarities between the marks and the similarities between

2 Registration No. 1741114 issued on December 22, 1992. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
3 We note that applicant enclosed as exhibits to its brief copies
of evidence previously submitted with its March 20, 2007 response
to the examining attorney’s September 20, 2006 Office action.
Inasmuch as these filings were already of record in this
proceedings, applicant’s submission of copies thereof with its
brief is unnecessary and duplicative.
Ser No. 79024620
3
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
We begin by comparing applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, applicant’s goods are identified as
“catheters” without limitation and registrant’s goods are
Ser No. 79024620
4
identified as “disposable laser angioplasty catheters.”
Thus, on the face of the goods as recited in the
application at issue, “catheters” encompasses registrant’s
more narrowly identified “disposable laser angioplasty
catheters.” Put another way, registrant’s “disposable
laser angioplasty catheters” are a subset of applicant’s
more generally identified “catheters.”
Thus, based upon the goods recited in the challenged
application and the cited registration, we find that
applicant’s goods encompass those provided by registrant.
We note in addition that applicant does not argue that its
goods are dissimilar to those of registrant. The legal
identity of the goods is a factor that weighs heavily
against applicant.
Channels of Trade
Neither applicant’s goods nor those of registrant
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the channels of trade, we must look
to the goods as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., supra; and Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
Ser No. 79024620
5
1973). Because the goods are legally identical and there
are no restrictions in the application or registration,
registrant’s goods are presumed to move in the same
channels of trade and be available to the same classes of
potential consumers. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Accordingly, this du Pont factor further
favors a finding of likelihood of confusion.
Strength of Registrant’s Mark
Prior to our consideration the involved marks, we will
consider applicant’s arguments that registrant’s EXTREME
mark is weak as a result of third-party registration of
similar marks for related goods. In support of its
argument, applicant has made of record copies of third-
party registrations from the United States Patent and
Trademark Office’s (USPTO) Trademark Electronic Search
System (TESS) database. These marks include Registration
No. 2472359 for the mark XTREME PLEASURE for condoms;
Registration No. 2564195 for the mark XTREME for prosthetic
limb components; Registration No. 2809777 for the mark
EXTREME for custom knee braces for medical use; Regstration
No. 2986890 for the mark EXTREME RESPONSE for medical and
emergeny rescue equipment; and Registration No. 2967408 for
the mark XTREME ZONE for heart-rate monitors, blood
pressure monitors and body fat monitoring apparatus.
Ser No. 79024620
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With regard to these third-party registrations, we
first note that such registrations are not evidence of use
of the marks shown therein and, therefore, are not proof
that consumers are familiar with said marks so as to be
accustomed to the existence of similar marks in the
marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co.,
476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-
Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB
1982). Second, these registrations identify goods which
are not as closely related to those in the cited
registration as applicant’s recited goods. As such, they
have very limited probative value for purposes of
demonstrating the asserted weakness of registrant’s EXTREME
mark for “disposable laser angioplasty catheters.”
In addition, applicant submitted from the Office’s
TESS database a summary page indicating a total of 1,400
live registrations and applications for EXTREME-formative
third-party marks. For the following reasons, we find this
submission to be unpersuasive. First, a mere summary
indicating a number of third-party applications and
registrations is insufficient to make them of record. See
In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he
submission of a list of registrations is insufficient to
make them of record.”) See also TBMP §1208.02 (2d ed. rev.
Ser No. 79024620
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2004) and the authorities cited therein. Second, there is
no indication of the marks that are the subject of such
applications and registrations, or the goods or services
recited therein. It is further settled that an application
made of record in a Board ex parte proceeding is of very
limited probative value, and is evidence only of its
filing. See In re Phillips-Van Heusen Corp., 63 USPQ2d
1047, 1049 n.4 (TTAB 2002).
We accordingly find that, on the record in this case,
the mark in the cited registration is entitled to more than
a narrow scope of protection, particularly in the field of
catheters. See Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub., (Appeal No.
92-1086, Federal Circuit, June 5, 1992). Cf. In re
Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996).
The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s ADMIRAL XTREME mark and registrant’s
EXTREME mark are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note initially
that the test under the first du Pont factor is not whether
Ser No. 79024620
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the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The marks ADMIRAL XTREME and EXTREME are similar in
appearance and sound. The word EXTREME is registrant’s
entire mark, and the nearly identical word XTREME is a
major component of applicant’s mark. XTREME is also a
visually significant component of applicant’s mark. The
words ADMIRAL and XTREME do not blend together in
applicant’s mark as a single term, but rather are separate,
giving the word XTREME separate visual prominence in the
mark.
In addition, the marks as a whole are substantially
similar in meaning and commercial impression. While we
agree with applicant that, based upon the dictionary
definitions made of record, the word ADMIRAL appears to be
arbitrary as applied to its goods, we do not agree that the
word EXTREME, defined as “existing in the highest or
Ser No. 79024620
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greatest possible degree; very great; very intense”4 is
highly suggestive or laudatory as applied either to its
goods or those of registrant. In other words, while the
term EXTREME or XTREME may connote a very high level of
utility or quality, there is no evidence of record that the
word has any particular significance in relation to
catheters. Further, to the extent EXTREME or XTREME may be
found to have a particular meaning with regard to such
goods, it would have the same connotation as applied to the
goods both of applicant and registrant. In that case, the
addition of ADMIRAL to applicant’s mark would simply
suggest a subset of EXTREME or XTREME catheters.
In making our determination that the marks as a whole
are similar, we note the line of cases holding that the
addition of other matter, such as a house mark, primary
mark or other material, to one of two otherwise similar
marks, will not necessarily be sufficient to distinguish
the marks as a whole. See, generally, First International
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988);
In re Champion Oil Company, 1 USPQ2d 1920 (TTAB 1986); In
re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); and In
re C. F. Hathaway Company, 190 USPQ 343 (TTAB 1976). The

4 Webster’s Third New International Dictionary, (1993), submitted
with applicant’s June 20, 2007 request for reconsideration.
Ser No. 79024620
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additional matter has been found sufficient to distinguish
the marks under circumstances where:
(i) there are recognizable differences in the common
term. See, for example, Rockwood Chocolate Co., Inc. v.
Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA, 1967)
(ROCKWOOD BAG-O-GOLD for candy not confusingly similar to
CUP-O-GOLD for candy); or
(ii) the appropriated matter is highly suggestive or
merely descriptive or has been frequently used or
registered by others in the field for the same or related
goods or services. See, for example, Knight Textile Corp.
v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005); and In
re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974)
(MEN'S WEAR for a semi-monthly magazine not confusingly
similar to MMI MENSWEAR for fashion consulting for men
because “MENSWEAR” is merely descriptive of such services);
or
(iii) the marks in their entireties convey
significantly different meanings or commercial impressions.
See, for example, Lever Brothers Company v. The Barcolene
Company, 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (“ALL
CLEAR!” a play on an expression popularized in connection
with air raid drills, not confusingly similar to ALL, both
for household cleaning products); or
Ser No. 79024620
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(iv) the incorporated matter has been so merged with
the other matter that it “loses its separate identity.”
See In re Champion International Corporation, 196 USPQ 48,
49 (TTAB 1977). See also, for example, Castle & Cooke,
Inc. v. Oulevay, S. A., 370 F.2d 359, 152 USPQ 115, 115
(CCPA 1967) (FARENDOLE not confusingly similar to DOLE for
related food products; DOLE “is so merged into” FARANDOLE
“that it loses its individual identity therein”); and B.
Kuppenheimer & Co., Inc. v. Kayser-Roth Corporation, 326
F.2d 820, 140 USPQ 262, 263 (CCPA 1964) (the mark
KUPPENHEIMER SUPPANTS and design for pants is not
confusingly similar to SUPP-HOSE for hosiery; stating that
the house mark “is completely integrated with the other
portion of the mark” and noting that the result might be
different where the house mark word is “divisible from the
other word or words in the mark.”)
None of these circumstances exists here. In this
case, the common portions of the marks, i.e., EXTREME and
XTREME differ by a single letter. They are nearly
identical. Even assuming that EXTREME or XTREME is
laudatory or suggestive of the parties’ goods, there is no
evidence that the term is highly suggestive of the
identified goods or, as discussed above, that it has been
commonly used or registered by others for such goods. The
Ser No. 79024620
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commercial impressions created by the two marks are not
distinctly different, as we noted above. Nor is XTREME
indivisible from ADMIRAL or so merged therewith that it
loses its identity. To the contrary, XTREME still remains
a conspicuous and separately recognizable portion of
applicant’s mark.
Thus, based upon the foregoing analysis, we find that
applicant’s mark is highly similar to that of registrant in
appearance, sound, connotation and overall commercial
impression. As such, this du Pont factor also weighs
heavily against applicant.
Conditions of Sale
The next du Pont factor discussed by applicant is that
of the conditions of sale. Applicant asserts that
purchasers of its goods as well as those of registrant are
sophisticated medical personnel and will exercise care in
selecting catheters. However, given that applicant’s goods
encompass those of registrant, i.e., both provide catheters
of a general and more specific sort, even sophisticated
consumers may not realize that applicant’s recited goods do
not emanate from the same source as those of registrant.
Furthermore, even if some degree of care were exhibited in
making the purchasing decision, because of the similarities
between the marks, even careful purchasers are not likely
Ser No. 79024620
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to distinguish between them. As a result, we also find
this du Pont factor to weigh against applicant.
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.