Synthes (U.S.A.)v.Charmant, Inc. U.S.A.

Trademark Trial and Appeal Board

May 30, 2000

No. 91100294 (T.T.A.B. May. 30, 2000)

Hearing: Paper No. 45
December 1, 1999 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 30, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Synthes (U.S.A.)
v.
Charmant, Inc. U.S.A.
_____
Opposition No. 100,294
to application Serial No. 74/618,022
filed on January 5, 1995
_____
John B. Pegram of Fish & Richardson P.C. for Synthes
(U.S.A.).
Brooks R. Bruneau of Matthews, Collins, Shepherd & Gould for
Charmant, Inc. U.S.A.
______
Before Cissel, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Charmant, Inc. U.S.A.
to register the mark SYNTHES-EYEZ for “eyeglass frames.”1
Registration has been opposed by Synthes (U.S.A.) on
the ground that applicant’s mark, when applied to
applicant’s goods, so resembles opposer’s previously used

1 Serial No. 74/618,022, filed on January 5, 1995, alleging a
bona fide intention to use the mark in commerce.
Opposition No. 100,294
2
and registered mark SYNTHES for instruments and apparatus
for surgical, medical and veterinary purposes, as to be
likely to cause confusion under Section 2(d) of the
Trademark Act. Opposer pleaded ownership of Registration
No. 999,397 for the mark SYNTHES for “instruments and
apparatus for surgical, medical and veterinary purposes
solely for bone surgery, namely, instruments and implants
for osteosynthesis, including bone screws, bone nails, bone
plates and splints; injection needles, and gum plates.”2
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; and trial testimony, with related
exhibits, taken by each party. In addition, opposer
submitted by way of notice of reliance a status and title
copy of its pleaded registration; and applicant submitted by
way of notice of reliance the discovery depositions of James
E. Gerry and Kevin Carouge; opposer’s responses to
applicant’s discovery requests; a copy of an agreement
between opposer and a third-party; and copies of third-party
registrations for marks which include “SYNT for various
medical products.”3 Both parties filed briefs on the case,

2 Issued December 10, 1974; renewed.
3 We note that opposer has objected to the agreement on the
grounds of hearsay and relevancy and to the third-party
registrations on the ground of relevancy. We have reviewed the
Opposition No. 100,294
3
and both were represented by counsel at an oral hearing held
before the Board.
The record shows that opposer manufactures, distributes
and sells orthopedic, maxillofacial, and spine instruments
and implants for use by surgeons and hospitals. Opposer
markets and sells its products to hospitals, clinics and
medical doctors. Through its Synthes Maxillofacial
Division, opposer sells implants and tools for use on the
human skull. With regard to the human eye, in particular,
opposer offers a series of plates and screws which are used
to reconstruct the orbit, which is the bony structure which
surrounds the globe of the eye. The customers of these
products are opthalmologists and oculoplastic surgeons.
Opposer’s sales of SYNTHES products have exceeded $100
million annually.
Opposer has spent many millions of dollars advertising,
promoting and marketing its products under the SYNTHES
mark.4 Opposer advertises by distribution of catalogs and
product brochures, which are sent or delivered to physicians
and hospital personnel. In addition, opposer conducts
continuing education programs in relation to the use of its
products. The SYNTHES mark appears on opposer’s products as

objections and accorded these materials such consideration and
weight, if any, as deemed warranted.
4 Opposer’s precise advertising figures have been made of record
under seal.
Opposition No. 100,294
4
well as on technique guides and sales brochures related
thereto.
Applicant is in the business of manufacturing eyeglass
frames for sale at retail stores throughout the United
States. Applicant has approximately 20,000 retail store
customers nationwide and primarily sells its eyeglass frames
to independent optician offices, optometry practices and
dispensing ophthalmology offices.
Applicant created the SYTNHES-EYEZ mark in 1994 for use
with an eyeglass frame with a screwless hinge. Because the
screwless hinge was a “synthesis” of ideas from a number of
people, e.g., consumers, retailers, applicant’s sales force
and other personnel, applicant came up with the mark
SYNTHES-EYEZ as a play on the word synthesis. The SYNTHES-
EYEZ mark appears on eyeglass frame cases and the
demonstration lenses that are placed into frames for display
at retail stores.5 Applicant’s SYNTHES-EYEZ eyeglass
frames retail for about $200.00 each.
As indicated above, opposer made of record a status and
title copy of its pleaded registration for the mark SYNTHES.
Thus, there is no issue with respect to opposer’s priority.
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).

5 Although applicant’s application was filed based on a bona fide
intention to use the mark in commerce, it appears from the record
that applicant has begun use of the mark.
Opposition No. 100,294
5
We turn then to the issue of likelihood of confusion.
Our determination under Section 2(d) of the Trademark Act is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to a consideration of the marks SYNTHES
and SYNTHES-EYEZ, we find that, when considered in their
entireties, they are dissimilar in appearance and
connotation. Although applicant’s mark encompasses
opposer’s entire mark, the addition of “EYEZ” in applicant’s
mark serves to distinguish it from opposer’s mark.
Opposer’s SYNTHES mark appears to be an arbitrary term,
whereas applicant’s SYNTHES-EYEZ mark appears to be a play
on the word “synthesize” incorporating a fanciful spelling
of “eyes.”
We turn next to the goods. Opposer contends that the
respective goods are “closely related as metal products for
correction of human body defects.” (Brief, p. 21).
However, in determining whether two or more products are
closely related, the inquiry should be whether they are sold
to the same market and not whether terminology can be found
that describes all the various products. See Harvey
Hubbell, Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517
(TTAB 1975). In this case, the respective goods are vastly
Opposition No. 100,294
6
different in nature and use. Opposer’s surgical implants
and instruments are highly specialized products used in bone
repair. Applicant’s eyeglass frames, on the other hand,
accommodate corrective lenses, which improve a person’s
vision.
The demarcation between the parties’ goods is further
highlighted by the differences in sophistication of
purchasers and users of the products. Opposer’s goods are
sold for use by surgeons and hospital personnel. These
well-educated and highly-trained individuals are likely to
be careful and discriminating in their selection of surgical
implants and instruments. We also note that opposer’s
surgical implants, in particular, are regulated by the Food
and Drug Administration and cannot be sold to the average
consumer who would be buying eyeglass frames.
We acknowledge that some overlap of the parties’
customers could occur, e.g., in the case of surgeons and
hospital personnel who wear eyeglasses and ophthalmologists
who dispense eyeglasses. However, we are constrained to
agree with applicant that the prospects for any kind of
confusion as to the source or sponsorship of the parties’
goods is de minimis. Surgeons, ophthalmologists, and the
relevant hospital personnel are small in number. Also, as
indicated above, they are highly sophisticated purchasers
who, considering the highly specialized nature of opposer’s
Opposition No. 100,294
7
goods, would not be likely to think that the parties’
products emanate from or are otherwise associated with or
sponsored by the same source.
In sum, there is no likelihood of confusion in this
case because the involved marks are dissimilar in appearance
and connotation, and the respective products are sold to
different purchasers for vastly different purposes.
In reaching our decision, we have accorded little
weight to the third-party registrations submitted by
applicant. According to applicant, “SYNT” is an
abbreviation of the word “synthesis,” and applicant contends
that marks containing “SYNT” are weak marks entitled to a
narrow scope of protection.
We note that the common element in most of the third-
party registrations is actually “SYNTH,” not “SYNT,” and in
reviewing the identification of goods in these
registrations, it appears that “SYNTH” connotes the word
“synthetic,” and not “synthesis.” Thus, we are unable to
conclude that opposer’s mark is entitled to a narrow scope
of protection because it includes “SYNT.”
Finally, although opposer contends that its mark is
famous, we agree with applicant that the evidence falls
short of establishing the fame of opposer’s mark. While it
appears that opposer has enjoyed a degree of success with
its surgical implants and instruments in the orthopedic,
Opposition No. 100,294
8
maxillofacial and spinal fields, we cannot conclude, based
on the present record, that the mark has achieved the status
of a famous mark. For example, opposer has not shown even
in rough terms its share of the relevant market. Compare:
Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
Decision: The opposition is dismissed.
R. F. Cissel
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board