Karl Storz Imaging, Inc.v.The Imaging Group, LLC

Trademark Trial and Appeal Board

Jul 31, 2009

No. 91169802 (T.T.A.B. Jul. 31, 2009)

Hearing: Mailed:
April 8, 2009 July 31, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Karl Storz Imaging, Inc.

v.

The Imaging Group, LLC
_____

Opposition No. 91169802
_____

Wesley W. Whitmyer, Jr. and James P. Jeffry of St. Onge
Steward Johnston & Reens LLC for Karl Storz Imaging, Inc.

David N. Schachter and Tobin D. Kern of Sherman & Howard,
L.L.C. for The Imaging Group, LLC.
______

Before Drost, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On November 26, 2004, The Imaging Group, LLC
(“applicant”) filed an application (Serial No. 76622434) for
the mark:

(in stylized form) for “radiology imaging, specifically;
general plain film, diagnostic, CAT scan, mammography, MRI,
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opp. No. 91169802
2
ultrasound, and interventional imaging” in International
Class 44. The application claims a bona fide intent to use
the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b).
Karl Storz Imaging, Inc. (“opposer”) has opposed
registration of applicant's mark. In its amended notice of
opposition, opposer claims ownership of two registrations.
The first registration is Registration No. 2605738 for the
mark IMAGE 1 (in typed form), which issued on August 6, 2002
(Section 8 affidavit accepted). The second registration is
Registration No. 2615958 for the mark:

which issued on September 3, 2002 (Section 8 affidavit
accepted). Both registrations recite the following
International Class 9 identifications of goods; “electronic
imaging equipment, namely, video cameras, computer hardware
and related software for operating said equipment, all for
industrial, scientific and medical use,” which the parties
have characterized as “endoscopes.”1 Opposer also claims
priority and likelihood of confusion under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), and that

1 The identification of goods in Registration No. 2615958 adds
“and manuals sold therewith.”
Opp. No. 91169802
3
applicant fraudulently made false and misleading statements
to the examining attorney regarding the trade channels for
applicant's services and opposer's goods which resulted in a
withdrawal of the assigned examining attorney’s refusal to
register applicant's mark based on opposer's registrations
for the IMAGE 1 marks.
Applicant has filed an answer denying the salient
allegations of the amended notice of opposition. The
opposition has been fully briefed.2 The Board conducted a
hearing on April 8, 2009.
The Record
The pleadings and the file history of applicant's
application are part of the record by operation of the
Trademark Rules. Trademark Rule 2.122(d), 37 C.F.R.
§ 2.122(d). In addition, opposer filed the following:
1. Opposer's first notice of reliance, submitting
(i) status and title copies of the two
registrations asserted by opposer in the notice of
opposition; (ii) applicant's responses to certain
discovery requests; and (iii) the non-confidential
exhibits to the discovery deposition of Laura
Mower, president of the imaging services division
of Hospital Corporation of America (“HCA”), a
company related to applicant, and applicant's Fed.
R. Civ. P. 30(b)(6) witness;3

2 In addition to paper copies of their briefs, the parties filed
electronic copies on CD-ROMs. Trademark Rule 2.126, 37 C.F.R.
2.126, amended August 31, 2007, no longer permits the filing of
submissions on CD-ROM.
3 Exhibits L and M to opposer's first notice of reliance are two
exhibits taken from a declaration by Ms. Mower submitted earlier
in this proceeding. Because the declaration appears to be an
exhibit to Ms. Mower’s discovery deposition, and applicant has
not objected to the submission of Exhibits L and M, we have
considered Exhibits L and M as part of the trial record.
Opp. No. 91169802
4

2. Opposer's second notice of reliance,
submitting portions of the confidential discovery
deposition testimony of Ms. Mower and confidential
exhibits to her deposition; and

3. The trial testimony of Ali Amiri, vice-
president of marketing and product development for
Karl Storz Endoscopy America, a company related to
opposer, both under seal and in redacted form.4

Applicant filed the following:
1. Applicant's first notice of reliance,
submitting (i) opposer's discovery responses, (ii)
the non-confidential deposition exhibits to
opposer's Fed. R. Civ. P. 30(b)(6) witness, and
(iii) third party registrations;

2. Applicant's second notice of reliance,
submitting (i) the discovery deposition of David
Chatenever, opposer's vice-president for
technology development and opposer's Fed. R. Civ.
P. 30(b)(6) witness, (ii) the discovery deposition
of Mr. Amiri, and (iii) certain pages from the
discovery deposition of Ms. Mower, applicant's
Fed. R. Civ. P. 30(b)(6) witness, which were not
submitted by opposer;5

4 Opposer also submitted third and fourth notices of reliance in
which opposer referenced the direct and redirect testimony of Mr.
Amiri and the cross and recross testimony of applicant's trial
witnesses, respectively. These notices of reliance are improper
and merely clutter the record. Trial testimony is made of record
pursuant to Trademark Rule 2.125, 37 C.F.R. § 2.125, which has
nothing to do with notices of reliance.
5 Messrs. Chatenever’s and Amiri’s discovery depositions were
filed under seal in their entireties. Board proceedings are
matters of public record, and therefore only truly confidential
material should be designated as such. Not all of opposer's
witnesses’ discovery testimony is confidential in nature.
Accordingly, opposer is ordered to file within thirty days from
the mailing date of this decision a redacted copy of the
transcript of Messrs. Chatenever and Amiri’s discovery
depositions, deleting only testimony which is truly confidential
in nature, and indicating which of the exhibits to Mr. Amiri’s
deposition should remain under seal. (No exhibits were
introduced in Mr. Chatenever’s deposition.) If opposer fails to
do so, the entire transcripts of Messrs. Chatenever and Amiri, as
well as all exhibits to Mr. Amiri’s deposition, will be treated
as a public record.
Opp. No. 91169802
5

3. The trial testimony, with exhibits, of Raymond
Yost, a diagnostic radiologist employed by
Diversified Radiology (discussed infra); and

4. The trial testimony, with exhibits, of
Ms. Mower.6

In addition, the parties’ joint motion filed on October 30,
2008 submitting the witness page and errata sheets for the
Chatenever, Amiri and Mower discovery depositions is
granted. The witness pages and errata sheets are part of
the record.
Standing/Priority
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing and priority is not an issue in this case.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).

Opposer is also ordered to file within thirty days of the
mailing date of this decision a copy of its trial brief and its
reply brief, redacting only those portions of the briefs that
contain information truly confidential in nature.
Applicant is ordered to file within forty days of the mailing
date of this decision a copy of its trial brief, redacting only
those portions of its brief that contain confidential
information, considering opposer's filings ordered in this
decision.
6 Trial testimony is identified through the term “test.” in the
citation. If the citation does not include “test.,” the citation
is to a discovery deposition.
Opp. No. 91169802
6
Background
Opposer sells medical imaging equipment throughout the
United States. It has enjoyed significant sales of its
goods under the IMAGE1 mark in the United States and its
advertising expenditures have also been significant.
Applicant is a joint venture between Diversified
Radiology of Colorado, P.C. (“Diversified”) and HealthOne
LLC. Applicant operates radiology imaging centers in
Denver, Colorado. Such centers are “freestanding,” meaning
they are not physically attached to any hospital. While
applicant performs the imaging, Diversified radiologists
provide an interpretive report on the images generated by
applicant to a patient’s referring physician for use in
diagnosis and treatment determinations. Additionally,
applicant has licensed HCA Outpatient Services Group, an
entity related to HealthOne LLC, to use IMAGEONE in
connection with eleven imaging centers in Florida. Yost at
5 – 10, 16 – 18, 23 – 30, 47 – 50 and 59; Mower at 33 - 43,
67 - 68, 70 and 75.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Opp. No. 91169802
7
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The Marks
We first consider the similarity or dissimilarity of
the marks as to appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1689, 73
USPQ2d 1689 (Fed. Cir. 2005).
Both marks are composed of two components, IMAGE and
either the number “1” or the word “one,” in the same order.
Because “one” is the word form for the symbol “1,” see the
number table in Merriam-Webster’s Online Dictionary located
at http://www.merriam-webster.com/table/dict/number.htm,7
they are pronounced the same and have the same meaning.
Indeed, applicant has acknowledged that the marks are

7 We take judicial notice of this number table. The Board may
take judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opp. No. 91169802
8
“phonetically identical.” Brief at p. 12. We thus find
that the marks, taken as a whole, are identical in sound and
meaning. Because of the identical meaning of “one” and “1,”
the commercial impression of the marks is the same. Indeed,
applicant's licensee uses both IMAGE1 and IMAGEONE
concurrently in Florida for the same services without any
apparent objection by applicant. Mower test. at 216. See
also, Mower (confidential) test. at 218 – 226, which we
refer to but do not discuss in view of the “confidential”
designation; and ex. 227 thereto. See also ex. J to
opposer's first notice of reliance.
With regard to the appearance of the marks, applicant
has admitted that applicant's mark “resembles” opposer's
mark in appearance. See opposer's first notice of reliance,
ex. F at 5 and ex. G at 4 (admission 18). We find the marks
to be similar in appearance in view of (a) applicant's
admission, (b) the fact that IMAGE appears as the first term
in both of opposer's marks and applicant's mark, (c) the
typed form of the IMAGE 1 mark in Registration No. 2605738
which accords the mark a variety of lettering styles
including the lettering style depicted in applicant's mark,
see Phillips Petroleum Co. v. C.J. Webb Inc., 442 F.2d 1376,
170 USPQ 35 (CCPA 1971); and (d) the ordinary lettering
styles of and of applicant's mark.
Opp. No. 91169802
9
Applicant argues that opposer's IMAGE1 mark is weak
because it “simply describes the end product of the Storz
camera – an image – and the ‘one platform’ functionality of
the Storz camera system.” Brief at p. 1. For support,
applicant relies on Mr. Amiri’s statements regarding the
significance of “image” with regard to opposer's goods and
dictionary definitions of “image” and “camera.” Applicant
also relies on ten third-party registrations for marks
containing IMAGE or IMAGING for goods and services involving
cameras or radiology or imaging for medical purposes, five
of which contain disclaimers of “image” or “imaging.” See
applicant's first notice of reliance exs. D1 – D10.
According to applicant, third-party registrations, “even
without proof of actual use, are probative of the mere
descriptiveness of the term ‘image’ consistent with the
dictionary definition.” Brief at p. 13.8 As for the number
“1” in opposer's mark, applicant maintains that it “adds
little distinctiveness or origin-indicating quality.” Brief
at p. 14. Applicant concludes that “the addition of ‘1’ to
the IMAGE1 mark is at best suggestive.” Id.

8 While not proof of use of a mark, see AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973),
third-party registrations may be relied on to show that a word
common to each mark has a readily understood and well-known
meaning and that it has been adopted by third parties to express
that meaning. See Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17
USPQ2d 1467 (TTAB 1990).
Opp. No. 91169802
10
In considering opposer's marks as a whole, we reject
any suggestion by applicant that IMAGE1 is merely
descriptive of a feature or characteristic of the goods.
IMAGE1 is the subject of two registrations which are
entitled to the presumptions of validity of Section 7(b) of
the Trademark Act, 35 U.S.C. § 1057(b) and applicant has not
sought to cancel opposer's marks. See Contour Chain-Lounge
Co., Inc. v. The Englander Co., Inc., 324 F.2d 186, 139 USPQ
285 (CCPA 1963); and Trademark Rule 2.106(b)(2)(ii), 37
C.F.R. § 2.106(b)(2)(ii).
We do agree with applicant, however, that IMAGE is a
merely descriptive term when used in connection with
opposer's goods. “Image” is defined in Merriam-Webster’s
Online Dictionary (2009) as “a visual representation of
something: as (1): a likeness of an object produced on a
photographic material (2): a picture produced on an
electronic display (as a television or computer screen).”
See also Chatenever at 34 (under seal) regarding “images”
and opposer's goods. Certainly, images are created through
opposer's plain film, diagnostic, CAT scan, mammography,
MRI, ultrasound, and interventional imaging. Additionally,
the third-party registrations demonstrate that IMAGE has a
readily understood meaning in the medical imaging field.
As for the combination of IMAGE and the number “1,” Mr.
Amiri testified that IMAGE 1 may have several connotations.
Opp. No. 91169802
11
See Mr. Amiri’s testimony at p. 33 of his discovery
deposition, filed under seal. In view of these disparate
meanings for IMAGE 1, we find that IMAGE 1 is suggestive,
but not so highly suggestive as to be entitled to only a
very narrow scope of protection.
Applicant also argues that opposer “always uses the
family of marks ‘Karl Storz,’ ‘Karl Storz Endoscopy,’ or
both in conjunction with the IMAGE1 mark.” Brief at p. 15.
This argument regarding the manner in which opposer uses its
marks is irrelevant to the issues raised in this opposition.
Opposer has pleaded a likelihood of confusion under Section
2(d) of the Trademark Act with its two registered marks,
neither one of which includes KARL STORZ or KARL STORZ
ENDOSCOPY. Pursuant to the presumptions afforded registered
marks under Section 7(b) of the Trademark Act, we must
presume that the registered marks perform a trademark
function in and of themselves, without the additional KARL
STORZ terms. Any assertion to the contrary is in essence an
attack on the validity of the registrations which cannot be
entertained in this proceeding in the absence of a
counterclaim to cancel the registration. See Guerlain, Inc.
v. Richardson-Merrell Inc., 189 USPQ 116 (TTAB 1975). See
also, Chesebrough-Pond’s Inc. v. C.R. Bard, Inc., 216 USPQ
333 (TTAB 1982).
Opp. No. 91169802
12
In view of the foregoing, we find both of opposer's
asserted marks to be identical to applicant’s mark in sound,
meaning, and commercial impression and similar in
appearance. The du Pont factor regarding the similarity or
dissimilarity of the marks therefore strongly favors
opposer.
Classes of Consumers
We next consider the classes of consumers of opposer's
goods and applicant's services and whether they overlap.
Mr. Amiri has testified as follows regarding the
individuals and organizations to which opposer markets its
IMAGE1 products:
We market our products and services to
different market segments and different medical
specialties. Segments include physician offices,
surgery centers that would be either stand[-]alone
or part of a hospital, hospitals. There has been
a group purchasing organization that would cover,
obviously, multiple hospitals. They market to
different groups, as I said earlier, within an
institution.

You know, we have simple segments with a
physician office where a physician would make a
decision of his own, purchase out of his own
pocket, to more complex purchase decisions that
are typically large in size encompassing different
users.

Amiri test. p. 81 – 82. Regarding physician offices, Mr.
Amiri explained:
A physician office is obviously a space where a
physician would see their patient and, during
their interaction with the patient, could be
anywhere from a simple conversation to utilizing
different diagnostic tools, one of which could be
Opp. No. 91169802
13
endoscopy in which case IMAGE1 could be used, to
some minor reporting modalities which in today’s
world very often are minimally invasive in nature
and often would utilize an endoscopic approach in
which case, again, an IMAGE1 camera can be used.

Id. at 82. See also Amiri at 39 – 40, 45, 63 – 64, 76, 79,
87, 94, and 118 – 119, regarding sales to physician offices.
From this testimony we find that purchasers and
prospective purchasers of opposer's goods include groups of
doctors, surgical centers, hospitals and purchasing entities
that supply hospital groups, as well as physician offices.9
As far as institutional purchasers such as hospitals,
the record reflects that purchase orders are not made by
physicians, but that physicians participate in purchasing
decisions. Mr. Amiri testified that “[d]octors usually have
a heavy weight in the decision process in IMAGE1 products”;
and “[a]s a clinical user their vote is very important.”

9 Applicant contends that while opposer may market its goods to
physician’s offices, opposer has not identified any purchaser of
its IMAGE1 camera system other than hospitals. In making this
argument, opposer relies on ex. 11 to Mr. Amiri’s discovery
deposition and ex. 100 to Mr. Amiri’s trial deposition, both of
which were prepared by opposer, and Mr. Amiri’s testimony
regarding these exhibits. Exs. 11 and 100 have been designated
confidential, and we do not disclose their contents, except to
state they concern some of opposer's sales activities in Colorado
and Florida. Because of the limited contents of these exhibits,
because they do not include all of opposer's Colorado and Florida
customers and because of Mr. Amiri’s confidential testimony such
as that appearing at p. 170 of his discovery deposition regarding
surgery centers, we do not consider the channels of trade of
opposer's goods to be restricted to hospitals even if opposer's
evidence only shows sales to hospitals. We point out too that we
must consider all channels of trade that are normal for the goods
described in opposer's identification of goods and are not
limited in our consideration to those trade channels used by
opposer. See Packard Press Inc. v. Hewlett-Packard Co., 56
Opp. No. 91169802
14
Amiri test. at 166 and 167. Thus, for institutional
purchasers such as hospitals and surgical centers, we find
that physicians are involved in purchasing decisions and
that their input is given, as Mr. Amiri put it in his
uncontested testimony, “heavy weight.”
We also consider the areas of specialization of
physicians who are involved in the purchase of opposer's
goods.10 Mr. Amiri testified that surgeons, gynecologists,
urologists and ear, nose and throat (“ENT”) specialists use
opposer's goods. Id. at 25 – 30. The record includes
several of opposer's catalogs which are “intended to assist
… in the promotional efforts toward specialties, medical
specialties, arthroscopy, sports medicine, spine surgery,
gynecology, and neuro-endoscopy.” Id. at 57. Ex. 102 to
Mr. Amiri’s trial testimony, a general catalog for opposer's
goods, states that opposer's Image 1 platform is for “most
surgical specialties, from GI, urology and ENT to
orthopedics, GYN, neurosurgery and general surgery.” Ex.
104 to Mr. Amiri’s trial deposition is a “gynecology
catalog” containing information regarding “hysteroscopy and
intrauterine high frequency electrosurgery.” Id. at 54. We
therefore find that purchasers and prospective purchasers of

USPQ2d 1351 (Fed. Cir. 2000); and our discussion of trade
channels, infra.
10 The record reflects that non-physicians are involved in
purchases by hospitals and surgical centers. See Amiri at 173.
Opp. No. 91169802
15
opposer's goods at least include general surgeons and
surgeons with particular specialties, as well as
gynecologists, urologists and ear, nose and throat (ENT)
specialists.
The gynecologists, urologists and ENT specialists do
not restrict their use of opposer's goods to surgical
procedures. At trial, Mr. Amiri testified as follows:
Q. You also mentioned something called a colposcope.
What is a colposcope?

A. The colposcope is a device similar to a microscope
that is specifically designed for use by
gynecologists in their exam of their patients if
they are concerned about the potential development
of cervical cancer.

Q. And a colposcope can be used with IMAGE1 products?

A. Yes. An IMAGE1 camera can be connected to the
colposcope. And the images produced by the camera
would then be visualized on the screen.

Q. When the IMAGE1 products are used with the
colposcope, does any part of the colposcope or
IMAGE1 products enter into the human body?

A. No they do not. They would be external to the
body but directed at the location of the body that
needs to be visualized.

Q. Are you familiar with the term “noninvasive” as it
relates to medical imaging?

A. Yes, I am.

Q. What does noninvasive mean?

A. Noninvasive means that there is no tissue impact
by the modality that is used to perform the
diagnosis.

Q. Can the IMAGE1 products be used in noninvasive
procedures?
Opp. No. 91169802
16

A. Yes, they can.

Q. Can you tell us some examples of noninvasive
procedures with which the IMAGE1 products can be
used?

A. Colposcopy. There are a number of endoscopy cases
that would fall into that space. Otoscopy comes
in. Laryngoscopy comes in mind.

Any time that you actually can introduce an
endoscope into a natural orifice without really
impacting the tissue, I would consider that
procedure as a noninvasive procedure.

Q. When the IMAGE1 products are used with an
endoscope for a procedure, is it necessary to give
anesthesia to a patient?

A. Not in all cases.

Q. Can you tell us some examples of cases where it is
not necessary to give anesthesia to a patent who's
being looked at with an endoscope and IMABGE1
products.

A. Sure. There is actually a number of procedures.
Again, we talked about colposcopy, otoscopy,
laryngoscopy. You know, very often you don’t need
anesthesia for cystoscopy, which is the looking
into the bladder. Diagnostic cytology doesn’t
sometimes require anesthesia.

Q. Are you familiar with the term “outpatient?”

A. Yes, I am.

Q. What does outpatient refer to?

A. Outpatient means that a patient is in for
undergoing a diagnostic or therapeutic modality of
procedure. And that would not require an
overnight stay for that patient. So they can get
in and out of the location where the procedure is
performed without the need to stay overnight.

Q. Are there any endoscopy procedures that can be
done with the IMAGE1 products that are outpatient?

Opp. No. 91169802
17
A. There are many endoscopic procedures that can be
done in outpatient setting, indeed.

Amiri test. at 25 – 27. We therefore find that prospective
purchasers of opposer's goods include physicians in the
gynecology, urology and ENT fields who practice in their own
offices and who may or may not use opposer's goods for
surgical procedures performed in their offices. Prospective
purchasers also include surgeons and surgical specialists
who may use opposer's goods in a hospital or surgical center
environment.
Having found that opposer markets its goods to surgeons
and other physicians, we now turn to consumers of
applicant's services. Applicant maintains that the patient
is the primary purchaser of its services in consultation
with the patient’s physician who must issue a prescription;
that payment for applicant's services is made directly by
the patient or through a combination of Medicare or private
insurance and a patient cover payment; and that and “[a]ny
potential overlap of relevant persons in the marketplace is
limited to surgeons.” Brief at 1; Mower test. at 15 – 16.
Applicant points to Mr. Amiri’s statement in his deposition
that “[m]y understanding is that we market our Image1
products to specialty surgeons such as orthopedists, spine
surgeons, pain management specialists, gynecologists, et
cetera, who are also a referral base for the Imaging Group
Opp. No. 91169802
18
for potential patient clientele.”11 Amiri at 167 – 168;
brief at 21. Further, applicant, relying on Ms. Mower’s
testimony, maintains that it markets its IMAGEONE facilities
and services directly to the public and also through
physician referrals of patients; and that while its
physician referrals come from a broad array of medical
specialties, “the vast majority of physicians who refer
patients to Applicant for radiological services are family
doctors, internal medicine specialists or other ‘general
practitioners.’ Such general practitioners are not
surgeons.” Brief at 5 – 6.
No doubt, the patient pays for the imaging services and
physicians and their staffs refer patients for imaging
services. Indeed, the record reflects that applicant spends
a great deal of time and resources marketing its services to
physicians and their staffs so that they will refer patients
to applicant. We therefore must consider (a) whether the
referring physician participates in decisions to purchase
applicant's services; (b) whether the physicians who
purchase opposer's goods are the same as those physicians
who refer patients to applicant; and (c) if they are the
same, whether in the context of this case, the prohibitions

11 Despite opposer's designation of Mr. Amiri’s entire discovery
deposition as confidential, applicant has set forth portions of
Mr. Amiri’s testimony in the non-confidential copy of its brief.
Therefore, and because we have not received any objection from
Opp. No. 91169802
19
of Section 2(d) extend to referring physicians, who do not
actually pay for applicant's services.
i. Does the referring physician participate in
purchasing decisions for applicant's services?

The record reflects that patients select radiology
imaging services in several ways. The patient may be
familiar with an imaging center through the imaging center’s
advertising. Alternatively, if the patient has health
insurance, the insurance company may require, or only cover,
services at certain imaging centers, thereby directing the
patient to a particular imaging center. However, the
patient may also obtain a referral from the prescribing
physician; it is this scenario that the parties discuss
extensively in their briefs.
Even if the patient or the patient’s insurance company
actually pays applicant for its radiology imaging services,
the referring physician is important to the selection
process which results in a patient obtaining radiology
imaging services. It is the referring physician who
prescribes the service and likely recommends an imaging
center in which to obtain an MRI, an X-ray or the like.
Mower test at 76 – 77.12 Dr. Yost indicated that proximity

opposer, we have identified Mr. Amiri’s testimony in his
discovery deposition.
12 According to Ms. Mower, the process in obtaining a radiological
images begins with the physician saying “You need to go have an
MRI, here’s a center you would want – probably want to go to, and
Opp. No. 91169802
20
to the referring physician is one factor that the referring
physician considers:
[I]f a physician is next-door to us, they would
generally use us if we’re providing the service
they want. Whereas, someone who has a patient in
the far south end of town would probably – they’d
probably use a clinic nearby them rather than
subjecting the patient to an hour and a half
commute to have it done at our facility.

Yost at 47. Once the service has been completed, a
radiologist such as Dr. Yost reviews the resulting images,
prepares a report and sends the report to the referring
physician, generally with the images obtained by applicant.
Yost at 16 – 17.
ii. Are the physicians who purchase opposer's goods
the same persons who refer patients to applicant?

Applicant contends that the referring physician for
applicant's services is generally a family doctor, internal
medicine specialist or other general practitioner. Brief at
6. The record does not support applicant's contention that
the universe of referring physicians is so restricted. The
evidence reflects that opposer's goods are marketed at least
to surgeons, gynecologists, urologists and ear, nose and
throat (“ENT”) specialists and that physician referrals for
applicant's services come from a broad array of medical
specialties, which include surgery, gynecology, urology and
ENT. The evidence also reflects that opposer and applicant,

here’s even how you can get more information,” referring to
applicant's website. Mower test. at 106.
Opp. No. 91169802
21
whose business is limited to the Denver, Colorado
metropolitan area, and opposer and applicant's licensee,
whose business is limited to certain locations in Florida,
have each marketed their respective goods or services to
some of the same doctors, including one of applicant's top
referring physicians in Colorado. The document at ex. L to
opposer's first notice of reliance, which is a list of top
ten referring physicians to applicant's various imaging
facilities in Denver, includes the following specialty areas
for such physicians: OBGYN, Orthopedic, Pain Management,
and Pediatric Urology. Dr. Yost testified that in addition
to internal medicine physicians, family doctors and
pediatricians, applicant obtains referrals from:
[M]ostly people in the neurologic fields,
orthopedic fields. We get some gynecological
referrals for ultrasounds. We get a lot of
referrals from internists and general medicine.
And occasionally we’ll get requests from
urologists, ENT. And a lot of our referrals come
from medical oncologists who are following their
cancer treatments.

Yost at 41. See also confidential exs. 227 and 228 to Ms.
Mower’s trial testimony and Ms. Mower’s trial testimony
related to these exhibits, concerning numbers of referrals
arranged by medical practice areas.
Thus, despite applicant's contentions to the contrary,
we find that certain consumers of opposer's goods overlap
with certain physicians who refer patients to applicant and
who review the images and reports created by applicant.
Opp. No. 91169802
22
Such consumers include surgeons and non-surgeons who have
the specialties noted by Mr. Amiri, namely, GI, urology,
ear, nose and throat, orthopedics, gynecology, neurosurgery
and general surgery.13 Indeed, opposer and applicant market
their goods and services to the same actual physicians.
We make clear that to the extent that we have
identified particular medical practice areas for overlapping
consumers of opposer's and applicant's goods, we do not
regard such practice areas limited to surgeons who
specialize in those practice areas. Because there are no
restrictions in the identifications of goods and services,
those doctors, such as gynecologists, who are not surgeons,
and who use imaging equipment for diagnostic purposes in
their offices such as the equipment offered by opposer, are
also the same individuals who would refer a patient to one
of applicant's facilities for, e.g., an MRI. See Amiri at
27. We are guided by the identifications of goods and not
opposer's or applicant's current business practices. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.
Cir. 1983).
iii. Do the prohibitions of Section 2(d) extend to
referring physicians, who do not actually purchase
applicant's services?

13 Applicant argues that the primary purchaser is the patient, in
consultation with the physician who issues a prescription, citing
Mower at 76. The fact that applicant markets its services by
visiting physicians’ offices and submitting materials to
physicians undercuts applicant's argument.
Opp. No. 91169802
23
We now consider whether the prohibitions of Section
2(d) extend beyond actual purchasers of services to those
who recommend the purchases of services. The Federal
Circuit, our primary reviewing court, has stated that
For determining likelihood of confusion, …
‘relevant persons’ is not always limited to
purchasers, past or future. For some owners of
marks, such as the American Red Cross with its
well-known mark, there are no purchasers. In
these instances, ‘relevant persons’ would
encompass all who might know of their services and
then become purchasers of goods or services of
others.

Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1390 (Fed. Cir. 1992).
Further, the court stated that “purchasers and potential
purchasers [are broadly construed] to include those persons,
such as some users, who might influence future purchasers.
For commercially sold items, only those users who might
influence future purchasers can be considered ‘relevant
persons.’” Id. at 1392.
As mentioned above, it is the physician that prescribes
applicant's service and likely recommends an imaging center
in which to obtain an MRI, an X-ray or the like. Mower test
at 76 – 77. Additionally, Dr. Yost explained:
Q. When you provide a report to an attending
physician, is that intended for that physician’s
use?

A. Yes.

Q. Is it intended for a layperon’s use?

Opp. No. 91169802
24
A. Generally not.

Q. And when you provide an image to an attending
physician, is that for the physician’s use?

A. Yes, it is.

Q. And is the image intended for a layperson’s
use?

A. No.14

Yost at 17 – 18. Further, Ms. Mower testified that the
patient and the physician “are both our customer, and we
know they are both the decision makers ….” Mower test. at
81. See also, id. at 91 (“[Exhibit] 210 is another flier,
again, aimed at two components of our customer base: the
patient and the physician office.”) Dr. Yost testimony is
consistent with Ms. Mower’s testimony; he stated that he
agrees that referring physicians are customers of opposer's
clinics. Yost at 78. We therefore find that referring
physicians do influence the purchasing decisions made by the
actual purchasers of the applicant's services. They hence
satisfy the Federal Circuit’s requirement that they be
“users who might influence future purchasers,” that is,
users in the sense that they make use of the product of
applicant's services.

14 The physician certainly would know of the imaging center,
either through the imaging center’s promotional efforts or
through the reports and images sent to the physician by the
imaging center.

Opp. No. 91169802
25
Applicant has argued that in most instances, its
marketing representatives, when visiting physicians’
offices, meet with the physician’s staff and not the
physician. According to Ms. Mower, seventy to eighty
percent of the time applicant's marketing representatives
meet with the physician’s staff and not the physician.
Mower test. at 127 - 128. We do not view this fact as
diminishing the role of the physician with regard to the
selection of an imaging center by the patient. First, Ms.
Mower also testified that the physician is the “target”; “we
want to be able to get in and talk to the physicians about
the particular procedures we offer.” When the marketing
representative is unable to meet with the physician, “the
physician’s front office sort of says, ‘We’ll take the
information,’ or, ‘Thank you. We’ll let the physician
know.’ They’re protecting him or her.” Mower test. at 127.
Second, there is no indication that the percentage quoted by
Ms. Mower reflects the norm in the industry. Third, it may
well be that while the solicitations are made to the
physician’s staff, the staff passes the information on to
the physician, and makes referrals pursuant to guidelines
established by physicians. As mentioned above, Dr. Yost
testified that the physician reviews the radiological
reports and images created by the imaging service. If the
physician is dissatisfied with the images or radiologist
Opp. No. 91169802
26
report provided by the imaging facility, the physician will
likely instruct his or her staff not to refer a patient to
that imaging facility.
Mr. Amiri has confirmed that referring physicians who
also purchase opposer's goods are a concern to opposer. He
explained that opposer is concerned about the lack of
control over the quality of applicant's services:
Well, one of the brand attributes for any and all
doctors’ products, in particular, the IMAGE1
products[,] is the pride we take actually in the
quality and reliability of those products. And
since we have no means of controlling the quality
of products and services that might be provided by
The Imaging Group or the HCA Group, we are
obviously concerned that as a result of confusion,
there might be damage in the perception and in the
eyes of the customers as they look at our IMAGE1
products.

Amiri test. at 124.
From the forgoing, we find that the referring
physician, although not the purchaser because he or she does
not actually pay for the service, is a “relevant person,”
see Electronic Design & Sales, supra; the referring
physician generally makes the decision regarding which
radiological imaging service to refer the patient to, is the
one who actually receives the radiologist’s report and is
the one who determines the adequacy of the services
performed by the imaging service.15 We therefore find that

15 Implicit in our finding is that the patient has a choice in
which imaging service to use.

Opp. No. 91169802
27
the referring physician plays a significant role in the
decision to obtain, and the selection of, radiological
imaging services. Consumers of opposer's goods and
applicant's services therefore overlap.
Goods and Services

Turning next to the du Pont factor regarding the
similarity or dissimilarity of the goods and services, we
may find the goods and services to be similar if they are
related in some manner. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Moreover, the
greater the degree of similarity between the applicant's
mark and the opposer's registered mark, the lesser the
degree of similarity between the applicant's goods or
services and the opposer's goods or services that is
required to support a finding of likelihood of confusion.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
In view of Mr. Amiri’s testimony, described below,
regarding the ability of opposer's electronic imaging
equipment to display two images concurrently from different
sources, we find the goods and services to be related.
Additionally, the record reflects that developing technology
will allow two images to be superimposed on each other.
Opp. No. 91169802
28
Mr. Amiri testified that the IMAGE1 imaging equipment
“is capable of accepting other inputs from other sources
such as X-rays or archived X-rays and other radiologic
images so that both [an] endoscope image as well as an image
from a different source can be displayed on the same monitor
at the same time for [the] convenience of the physician.”
Amiri test. at 13. He also testified that today, “there are
a number of procedures that require the simultaneous looking
of images produced by endoscope and produced by different
sorts of imaging,” namely “urethroscopy … [p]ercutaneous
retrograde endoscopy … where[] you physically would look
inside the kidney, nephroscopy[,] [f]luoroscopy is used to
generally show the physician your instrument or probes
within the ureter or inside the kidney.” Id. at 37.
Further, exhibit 225 to Ms. Mower’s trial testimony reflects
that applicant's licensee places the IMAGE1 trademark on its
images. See Mower test. ex. 225. Indeed, Mr. Amiri
testified that opposer places an IMAGE1 “watermark” on its
captured images and that it is feasible that another company
would do the same thing. Amiri test. at 24 – 25. Thus,
physicians will encounter applicant's IMAGEONE mark on an
image produced by applicant while simultaneously using
opposer's IMAGE1 imaging equipment.
Mr. Amiri also testified that opposer is “working on
some technologies that allow soft tissue even to overlap an
Opp. No. 91169802
29
endoscopic image with an image from a different diagnostic
source such as ultrasound or CT or MRI.” Id. He explained
the benefits of overlapping images:
[A] good example to portray the benefit of such
technology overlap, when you are performing your
laparoscopic liver surgery, the endoscopic image
would only provide the physician to visualize the
surface of the liver. Now, imagine that the same
patient may have a tumor that is below the
surface. That would obviously not be visualizable
and not necessarily palpable because you don’t
have your hands in the abdominal cavity. Your
tactile sensation is limited to what you can feel
with the tip on an instrument. So to be able to
use yet another modality, imaging modality[,] to
see what is under the surface and where the tumor
might be located, by superimposing an endoscopic
image on top of another image enables the
physician to know where to cut, where to
potentially put the probe ….”

Id. at 38.
He testified too that this technology will be used in
the next few years. “It is a rational progression that is
available today already for the fields of neurosurgery,
orthopedic, spine surgery, ENT where surgeons don’t want to
rely only on the endoscopic image to know where they are
within the anatomy but actually tap into, you know, images
from a variety of sources to position their – to know the
position of their instrument to avoid potential injury to
the patient.” Id. at 38.
Because images produced through applicant's services
may be used on opposer's imaging equipment today, and, to a
greater extent, in the future, we find opposer's goods to be
Opp. No. 91169802
30
related to applicant’s services and hence find that the
goods and services are similar.
Trade Channels
“When [a] registration does not contain limitations
describing a particular channel of trade or class of
customer, the goods or services are assumed to travel in all
normal channels of trade.” Packard Press Inc. v. Hewlett-
Packard Co., 281 F.3d 1261, 56 USPQ2d 1351, 1357 (Fed. Cir.
2000). We have found above that certain classes of
consumers overlap, and, the asserted registrations do not
contain limitations describing particular channels of trade.
Indeed, the evidence reflects that opposer and applicant
promote their respective goods and services in a similar
manner.
Both opposer and applicant send marketing
representatives to physician offices to promote their
respective goods and services. The marketing
representatives meet with the physician, or the physician’s
staff. The marketing representatives leave brochures and
other information with those they meet. Ms. Mower has
testified that applicant's representatives also leave
“trinkets” at physician’s offices such as note pads or pens
with applicant's name on them. Mower test. at 81 – 82. Mr.
Amiri indicated that opposer provides “giveaways” such as
coasters, mouse pads, pin labels, surgical caps, and note
Opp. No. 91169802
31
cards, which bear the IMAGE1 name and which are left in a
physician’s office. Amiri test. at 86 and 88.
Additionally, both parties mail marketing materials such as
brochures and advertisements to physicians’ offices. Amiri
test. at 40 – 55; Mower test. at 77 - 78.16 Mr. Amiri added
that opposer also mails “sales sheets,” intended for mass
circulation, possibly in conjunction with mailings, and for
“vast distribution” at conventions. Amiri test. at 64.
We have already found that the parties market their
goods to the same physicians. From the evidence described
in the proceeding paragraph regarding marketing to
physicians, it is apparent that opposer and applicant market
their respective goods and services in an identical manner.
However, because both parties use marketing representatives,
and those marketing representatives meet with the physician
in person, thereby allowing the marketing representative to
directly inform the physician, and the physician to inquire
of the marketing representative, about the source of the
goods, the opportunities for confusion through the
particular trade channels used by both parties are reduced.
See discussion regarding purchaser conditions, infra. Thus,
the du Pont factor regarding the similarity of trade
channels weighs slightly in opposer's favor.

16 Like many commercial enterprise these days, both opposer and
applicant have websites.

Opp. No. 91169802
32
Purchasing Conditions
Applicant contends that “extraordinary purchaser care
is required for both Applicant's and Opposer's goods and
services”; that the cost of opposer's goods “play a huge
role”; that the only overlapping “purchasers” are surgeons;
that “[s]urgeons are likely to exercise the utmost care in
selecting medical equipment to be used during surgery”; and
that “[s]urgeons are perhaps the most highly-sophisticated
consumers of medical equipment imaginable.” Brief at 22 and
26.
Applicant’s showing fails to persuade us that this
factor should be accorded the weight urged by opposer.
First, Mr. Amiri’s discovery deposition testimony, on which
applicant relies heavily, does not describe the purchasing
process for opposer's goods in sufficient detail for us to
conclude that “extraordinary purchaser care” is taken when
opposer's goods are purchased. We are unable to determine,
for example, what is stated, if anything, regarding the
source of the goods which would reduce the chances of source
confusion; how frequently the marketing representatives meet
with potential purchasers; and whether physician involvement
is limited to clinical demonstrations. Second, as discussed
earlier in this opinion, opposer's purchasers are not
limited to surgeons, but include other physicians who
purchase opposer's imaging equipment for use in their own
Opp. No. 91169802
33
offices. We cannot determine from the record whether these
other physicians purchase opposer's goods in the same manner
as institutional purchasers. While physicians are obviously
highly educated and the cost of opposer's goods are not
minor, we cannot discount that both opposer's goods and
applicant's services are both in the imaging field, and that
the marks are virtually identical, with opposer's licensee
using both opposer's mark and applicant's mark. Third, the
record reflects that clinical evaluations are not always
part of the purchasing process. See Amiri at 67. We
cannot determine how clinical demonstrations, or the lack of
clinical demonstrations, affect the level of purchaser care.
Thus, on balance, we find that the du Pont factor
regarding consumer sophistication and purchasing conditions
weighs in applicant's favor, but only slightly. In any
event, it is settled that even sophisticated purchasers are
not immune to source confusion which would otherwise result
from the use of confusingly similar marks. See, e.g.,
American Optical Co. v. Synthes AG, 156 USPQ 344 (TTAB
1967).
The extent of potential confusion
Applicant argues that “there is no question that
Applicant seeks physician referrals to IMAGEONE radiological
facilities, including surgeon referrals, and that Opposer
solicits surgeons to purchase its IMAGE1 camera equipment.
Opp. No. 91169802
34
However any potential market overlap among surgeons is de
minimis.” Brief at 25. As support for its argument,
applicant points to the percentage of surgeons who refer
patients to applicant for imaging services, based on the
total number of referrals to applicant by physicians, for
the past three years. This percentage has been designated
confidential and we do not reveal it in this opinion.
We find the potential market overlap among surgeons17
to be more than de minimis. Moreover, to the extent that
applicant is arguing that the extent of potential confusion
is de minimis, we disagree. First, the percentage of
surgeons referring patients to applicant certainly is not
insignificant. Second, the percentage only reflects
applicant’s experience in one metropolitan area for a period
of three years. Third, the specific percentage likely bears
a direct relationship to applicant's targeted advertising
efforts or business relationships, which may not emphasize
surgeons. Fourth, we have no basis for comparing
applicant's percentage to comparable industry standards;
applicant has not introduced any such evidence. Fifth,
applicant has only considered surgeons and not other
physicians in practices such as gynecology and ENT who are

17 We interpret applicant's reference to “surgeons” in this
context as including those physicians who do surgeries on an
outpatient basis, including minor surgical procedures in their
offices.

Opp. No. 91169802
35
not surgeons but who would refer patients for radiological
imaging services and also use opposer's goods for, inter
alia, diagnostic purposes. Se Amiri at 27.
Thus, the du Pont factor regarding the extent of
potential confusion is neutral in our analysis.
Lack of Actual Confusion
Applicant maintains that both opposer and applicant
have used their marks in the same geographic areas,
soliciting the same individuals for a period of three years
and there has been no reported instances of actual
confusion. Further, applicant maintains that it is “proper
to infer no likelihood of confusion where there is no
evidence of historical actual confusion in the marketplace
over a significant period of time,” relying on McGregor-
Doniger v. Drizzle Inc., 599 F.2d 1126, 202 USPQ 91 (2d Cir.
1979). Brief at 29. Applicant's argument is not persuasive
because there has only been minor geographic overlap in two
metropolitan areas and the duration of overlapping use has
not been so significant. Additionally, the Federal Circuit,
our primary reviewing court, has stated that “it is
unnecessary to show actual confusion in establishing
likelihood of confusion.” Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 396 (Fed.
Cir. 1983), citing In re Marriott Corp., 517 F.2d 1364, 184
USPQ 53 (CCPA 1975). “Absence of proof of actual confusion
Opp. No. 91169802
36
is of minor relevancy in the resolution of the issue” of
likelihood of confusion. J.C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Therefore, this factor is also neutral in our analysis.
Conclusion
In balancing the above factors, and particularly
considering the identity of the marks in sound, meaning and
commercial impression, we find that opposer has established
by a preponderance of the evidence that there is a
likelihood of confusion between its pleaded marks and
applicant's mark. We have found that the marks are
identical in certain respects, the classes of consumers
overlap, and the trade channels to be the same.
Additionally, we have also found the goods and services to
be related in that opposer's goods and the images created by
applicant's services could be used concurrently, with the
images containing the “watermark” of the imaging facility.
We have given limited weight to the factor regarding
purchasing conditions partly because of the limited evidence
on this factor. Further, we have considered all of
applicant’s arguments, including any arguments not
specifically discussed in this opinion, but are not
persuaded by them that applicant should prevail in this
proceeding. We conclude that applicant's mark, when used in
connection with its services, is likely to cause confusion
Opp. No. 91169802
37
with both of opposer's marks as used on opposer's goods. To
the extent that any doubts might exist as to the correctness
of this conclusion, we resolve such doubts in opposer’s
favor as the registrant. See Starbucks U.S. Brands, LLC v.
Ruben, 78 USPQ2d 1741 (TTAB 2006).
Fraud
Because we have found for opposer on its likelihood of
confusion claim, we need not reach its claim of fraud.

DECISION: The opposition is sustained on the ground of
likelihood of confusion and registration to applicant is
refused.
As noted in footnote 4:
(i) opposer is ordered to file within thirty days
from the mailing date of this decision a
redacted copy of the transcript of Messrs.
Chatenever and Amiri’s discovery depositions,
deleting only testimony which is truly
confidential in nature, and indicating which
of the exhibits to Mr. Amiri’s deposition
should remain under seal;

(ii) opposer is ordered to file within thirty days
of the mailing date of this decision a copy
of its trial brief and reply brief redacting
only those portions of its briefs that are
truly confidential in nature; and

(iii) applicant is ordered to file within forty
days of the mailing date of this decision a
copy of its trial brief, redacting only those
portions of its brief that contain
confidential information, considering
opposer's filings ordered in this decision.