Nexense, Ltd.

Trademark Trial and Appeal Board

Sep 21, 2007

No. 78465875 (T.T.A.B. Sep. 21, 2007)

Mailed: September 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nexense, Ltd.
________

Serial No. 78465875
_______

Kenneth W. Farak of Renner, Otto, Boisselle & Sklar for
Nexense, Ltd.

Daniel Capshaw, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney)
_______

Before Drost, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Nexense, Ltd. to register
on the Principal Register the mark NEXAVER in standard
character form for the following goods, as amended:
“Medical devices, namely respiration sensors, pulse
sensors, blood pressure sensors” in International Class 10.1

1 Application Serial No. 78465875 was filed on August 11, 2004,
based on applicant’s assertion of its bona fide intent to use the
mark in commerce in connection with the goods, and claiming
priority under Section 44(d) of the Trademark Act. Applicant
subsequently perfected a Section 44(e) basis for application by
submitting a copy of its foreign registration.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78465875
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark NEXAVAR, previously registered on the
Principal Register in typed or standard character form for
“pharmaceutical preparations for the treatment of
cardiovascular diseases, central nervous system diseases,
cancer, respiratory and infectious diseases, diagnostic
reagents adapted for medical use” in International Class 5,2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal. In addition, applicant filed a reply
brief.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of

2 Registration No. 2745627 issued on August 5, 2003.

Ser No. 78465875
3
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider whether applicant’s mark and
registrant’s 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). In this case,
applicant’s mark, NEXAVER, is nearly identical in
appearance and sound to the registered mark NEXAVAR. The
marks differ by a single vowel that forms the penultimate
letter of each mark. Such difference does little to
diminish the otherwise identical appearance of the marks.
As to sound, the substitution of the letter “e” in
applicant’s mark for the letter “a” in that of registrant
does not necessarily mean that the marks will be pronounced
differently. It is well settled that there is no correct
pronunciation of a trademark. See In re Belgrade Shoe, 411
F.2d 1352, 162 USPQ 227 (CCPA 1969) and Interlego AG v.
Ser No. 78465875
4
Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
2002). See also In re Microsoft Corp., 68 USPQ2d 1195
(TTAB 2003) (it is not possible to control how consumers
will vocalize marks). Particularly in cases such as this
in which neither mark is a recognized term having an
accepted pronunciation, it is possible that consumers will
pronounce applicant’s mark in an identical manner to that
of registrant’s mark. In view of the nearly identical
nature of NEXAVER and NEXAVAR in terms of appearance and
sound, the marks convey highly similar commercial
impressions.
We are not persuaded by applicant’s argument that
because its NEXAVER mark “is the combination of Applicant’s
name and the word ‘saver’ as in life saver” (brief, p. 7)
the mark when viewed in relation to its goods “creates the
connotation that Applicant’s sensors save lives” (Id).
Applicant simply provides no evidence that consumers
encountering its mark on its identified goods would derive
either that or any other connotation therefor. Neither
does applicant provide any evidence to support its
suggestion that “NEX” in registrant’s NEXAVAR mark suggests
the word “next” or that registrant’s goods connote “a ‘next
Ser No. 78465875
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generation’ drug for treating diseases” (brief, p. 8).3 In
short, applicant’s assertions regarding the connotations of
its mark and that of registrant are speculative and
unsupported by the record in this case. Due to the nearly
identical nature of the NEXAVER and NEXAVAR marks, we find
that to the extent the marks convey a particular
connotation, those connotations are likely to be highly
similar.
Finally, there is no evidence of record that NEXAVAR
is anything but a strong, distinctive mark that is entitled
to a broad scope of protection.
Thus, despite the minor difference in spelling, the
marks NEXAVER and NEXAVAR are nearly identical in
appearance, sound, connotation and commercial impression.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
The Goods
Turning now to our consideration of the recited goods,
we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the goods at issue be similar or
competitive, or even that they move in the same channels of

3 We note, for instance, that neither mark appears to have an
accepted definition or meaning.
Ser No. 78465875
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trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective goods are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s goods include sensors used
to measure respiration, pulse and blood pressure.
Registrant’s goods include pharmaceutical preparations
used, inter alia, to treat cardiovascular disease and
respiratory disease. “Cardiovascular” is defined as “of,
pertaining to, or affecting the heart and blood vessels.”4
“Respiratory” is defined as “pertaining to or serving for
respiration.”5 We hereby take judicial notice of these
definitions. See University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982);
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Pulse
and blood pressure are, of course, cardiovascular
functions. Thus, as identified both applicant’s and

4 Random House Unabridged Dictionary, © Random House, Inc. 2006.
5 Id.
Ser No. 78465875
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registrant’s goods are used in the fields of cardiovascular
and respiratory care. Specifically, applicant’s sensors
may be used to measure the same respiratory, pulse and
blood pressure values that are affected by registrant’s
cardiovascular and respiratory medicines. As such,
applicant’s goods as identified are related to those of
registrant.
In addition, the examining attorney has made of record
a number of use-based third-party registrations which show
that various entities have adopted a single mark for both
pharmaceutical preparations used to treat various
conditions as well as medical devices used to address the
same conditions. See, for example:
Registration No. 2639224 for, inter alia,
pharmaceutical preparations and formulations for
the treatment of respiratory disorders and
medical apparatus and devices, namely, finger
control adapter for medical nebulizers, nebulizer
sets comprised of a nebulizer, a tee, a
mouthpiece, a flexible tube, and a two-meter
connection tube sold as a unit for medical use;

Registration No. 1902350 for, pharmaceutical
preparations, namely, inhalant decongestants and
electric vaporizers for the inhalation of
medicaments, and electyrically [sic] activated
heating pads for medical purposes;

Registration No. 2505787 for, pharmaceutical
preparations, namely, respiratory medications and
insulin and medical and healthcare supplies,
namely, respiratory medication delivery devices,
glucometers, lancets, blood hemoglobin testing
Ser No. 78465875
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supplied, namely blood hemoglobin testing kits;
and

Registration No. 2843548 for, pharmaceutical
preparations, namely, analgesics, hormones,
psychotropics, anti-infectives, anti-
inflammatory, and anti-cancer agents for use in
the treatment of disease via application to the
lungs and medical apparatus, namely,
electronically-based devices used to deliver
drugs and biologics to the lungs.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record supports a
finding that the same marks are used to identify both
pharmaceutical preparations and medical devices in numerous
fields.
The identification of applicant’s goods as well as
those of registrant and the above evidence demonstrate the
related nature of the goods at issue, and this du Pont
factor also favors a finding of likelihood of confusion.
Channels of Trade
Furthermore, it is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See Octocom
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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, there
are no restrictions in either applicant’s or registrant’s
identification of goods as to the channels of trade in
which the goods may be encountered, or type or class of
customer to which the services are marketed. Accordingly,
both applicant’s and registrant’s goods are presumed to
move in all normal channels of trade and be available to
all classes of potential consumers, including consumers of
each others’ goods. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In addition, the examining attorney has
introduced evidence in the form of “screen shots” from
Internet web sites suggesting that both pharmaceutical
Ser No. 78465875
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preparations and medical devices move in the same channels
of trade and are available from the same retail outlets.
Conditions of Sale
Another du Pont factor discussed by applicant and the
examining attorney is that of the conditions of sale.
Applicant asserts that both its goods and those of
registrant “are administered under highly controlled
conditions” (brief, p. 10) by physicians and pharmacists,
who are careful and sophisticated professionals. However,
the marks NEXAVER and NEXAVAR are so similar that even
careful purchasers are likely to assume that the marks
identify goods emanating from a single source. Even
sophisticated purchasers are not necessarily knowledgeable
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Finally, applicant argues that the failure of the
owner of the cited registration, a European company, to
oppose registration of applicant’s foreign registration,
“is a strong indicator that confusion is not likely”
(brief, p. 11). However, applicant cites to no authority,
nor are we aware of any, to support its contention that the
actions of the owner of a registration cited as a bar to
registration under Section 2(d) with regard to an
applicant’s foreign registration has any bearing on our
Ser No. 78465875
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determination of likelihood of confusion in an ex parte
appeal.
In light of the foregoing, and resolving any doubt as
we must in favor of the prior registrant, we find that a
likelihood of confusion exists between the applied-for
NEXAVER mark and the NEXAVAR mark in the cited
registration. See Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal of registration is affirmed.