Sirona Dental Systems GmbH

Trademark Trial and Appeal Board

Jan 21, 2009

No. 79030514 (T.T.A.B. Jan. 21, 2009)

Mailed:
January 21, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Sirona Dental Systems GmbH
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Serial Nos. 79030513 and 79030514
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Adesh Bhargava and Michelle R. Osinski of Dykema Gossett
PLLC for Sirona Dental Systems GmbH

Katherine Stoides, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Walters and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sirona Dental Systems GmbH has filed applications for
GALILEOS in standard character form and GALILEOS and
design, as shown below, for goods ultimately identified as
“dental tomography apparatus and software” in Class 10.1
Registration of both applications has been finally refused
pursuant to Section 2(d) of the Act, 15 U.S.C. §1052(d), on
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 79030513 and 79030514
2
the ground that the marks so resemble the mark GALILEO,
registered for “medical imaging software and medical image
co-registration software,”2 that, when used on applicant’s
identified goods, they are likely to cause confusion or
mistake or to deceive.

Applicant has appealed the refusals of both applications.
Because the issues and records in the appeals are the same,
we are deciding both in a single opinion.
As a preliminary matter, we note that applicant has
submitted numerous exhibits with its reply briefs. This
material is manifestly untimely and has not been
considered. See Trademark Rule 2.142(d).3
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

1 Application No. 79030513 for GALILEOS and design, and
Application No. 79030514 for GALILEO, both filed on June 20,
2006, based on Section 66(a) of the Trademark Act.
2 Registration No. 3027414, issued December 13, 2005.
3 Even if the material had properly been made of record, it
would have no effect on our decision. Likelihood of confusion
must be decided on the basis of the goods identified in the
applications and the cited registration, not on what evidence
shows the actual goods to be.

Ser Nos. 79030513 and 79030514
3
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 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 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to the goods, “tomography” is defined as
“any of several techniques for making detailed x-rays of a
predetermined plane section of a solid object while
blurring out the images of other planes.”4 Thus,
applicant’s “dental tomography apparatus and software” is
used for medical imaging. The registrant’s “medical
imaging software,” as identified, encompasses imaging
software used in all medical fields, including applicant’s
tomography imaging software used for dental purposes.
Applicant does not dispute that the registrant’s
medical imaging software encompasses the software
identified in its applications. Rather, it argues that
there is no indication that the registrant sells any

4 The American Heritage Dictionary of the English Language, 3d
ed. © 1992, submitted with the November 13, 2007 Office action.
Ser Nos. 79030513 and 79030514
4
medical apparatus or device in conjunction with the
software. Thus, it appears to be applicant’s position that
because its software is sold with its tomography apparatus,
this is sufficient to differentiate the goods. The problem
with applicant’s position is that its software is not
limited to software sold only with its dental tomography
apparatus. As a result, applicant’s software can compete
with, or be sold as an alternative to, the registrant’s
medical imaging software. Moreover, because the
registrant’s software, as identified, can be used with
dental tomography apparatus, the goods must be considered
complementary.
For the foregoing reasons, the goods are related, and
this du Pont factor favors a finding of likelihood of
confusion.
We turn next to a consideration of the marks, keeping
in mind that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Applicant’s word mark differs from
Ser Nos. 79030513 and 79030514
5
registrant’s mark in that it has an additional letter “S,”
while its word and design mark also includes a design
element. However, these differences are not sufficient to
distinguish the marks. Although applicant asserts that its
marks are “an arbitrary or fanciful word,” we think that
consumers viewing the marks would immediately perceive the
word mark and the word portion of the word and design mark
as the name of the famous scientist Galileo, to which an
“S” has been added. As for the design element, generally
if a mark comprises both a word and a design, then the word
is normally accorded greater weight because it would be
used by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). When
the marks are compared in their entireties, they are
similar in appearance and pronunciation, and they are the
same in connotation and commercial impression. This du
Pont factor, too, favors a finding of likelihood of
confusion.
Applicant has argued that the conditions of purchase
indicate that there is not likely to be confusion. We
agree that, because of the very nature of applicant’s and
registrant’s goods, the purchasers will be sophisticated.
However, given the similarity of the marks and the related
nature of the goods, even sophisticated purchasers are
Ser Nos. 79030513 and 79030514
6
likely to be confused by the marks. That is, even if
consumers were to note that applicant’s marks contain an
additional “S” and, in the case of GALILEOS and design, a
design element, they are likely to assume that these marks
are merely variations of the registrant’s mark, and that
they all indicate goods emanating from a single source.
This is particularly likely given that there is no evidence
of any third-party use of GALILEO marks, thus showing that
registrant’s mark is a strong mark.
After considering all of the relevant du Pont factors,
and particularly the similarities of the marks and the
relatedness and/or legal identity of the goods, we find
that applicant’s marks, as used on its identified goods, is
likely to cause confusion with the cited registration.
Decision: The refusals of registration are affirmed.