Teleflex Inc.

Trademark Trial and Appeal Board

Jan 16, 2004

No. 76279966 (T.T.A.B. Jan. 16, 2004)

Mailed: 1/16/04
Paper No. 7
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Teleflex Incorporated
________
Serial No. 76279966
_______
George A. Smith, Jr. of Howson & Howson for Teleflex
Incorporated.
Toni Y. Hickey, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Teleflex Incorporated has appealed from the final
refusal of the Trademark Examining Attorney to register
EASY CATH for "urinary catheters."1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15
1 Application Serial No. 76279966, filed July 3, 2001, and
asserting first use and first use in commerce on October 30,
1992.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76279966
2
U.S.C. 1052(d), on the ground that applicant's mark so
resembles the mark E-Z-CATH, previously registered for
"intravenous cannula placement units,"2 that, when used on
applicant's identified goods, it is likely to cause
confusion or mistake or deception.
Applicant and the Examining Attorney filed briefs. An
oral hearing was not requested.
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 Company, 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).
2 Registration No. 850,663, issued June 11, 1968; Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
This registration claims a date of first use in commerce of
January 31, 1967. The registration was originally issued to
Deseret Phamaceutical Company, Inc, of Sandy, Utah, but Office
records show the current owner as Becton, Dickinson and Company
of Franklin Lakes, New Jersey.
Ser No. 76279966
3
With respect to the marks, they are virtually
identical. They are, in fact, identical in pronunciation
and connotation, and they are virtually identical in
appearance. The "E-Z" which begins the cited mark is an
easily recognized alternative spelling for the "EASY" of
applicant's mark, and both marks end with the identical
"CATH."
With respect to the goods, there are clear
similarities between catheters and cannulae. The Examining
Attorney submitted definitions of “cannula” and “catheter.”
A cannula is defined as "a flexible tube, usually
containing a trocar at one end, that is inserted into a
bodily cavity, duct, or vessel to drain fluid or administer
a substance such as a medication."3 A catheter is defined
as "a hollow, flexible tube for insertion into a body
cavity, duct, or vessel to allow the passage of fluids or
distend a passageway. Its uses include the drainage of
urine from the bladder through the urethra or insertion
through a blood vessel into the heart for diagnostic
purposes."4 The Internet materials submitted by the
Examining Attorney also show that there is a close
3 The American Heritage Dictionary of the English Language, 3d
ed © 1992.
4 Id.
Ser No. 76279966
4
relationship between cannulae and catheters in general, and
to some extent the terms are used interchangeably. See,
for example, the following:
Cannulation of Blood Vessels
What is a cannula?
Intravenous therapy, or I.V. for short,
is a method for administering fluids
and or medications directly into the
venous system, usually into a patient's
vein. This is a primer, giving a brief
description of most of the basic
devices and concepts used in the
administration of I.V. fluids.
You must have venous access before you
can administer I.V. fluids. The most
common method is with an I.V. catheter,
technically known as a "catheter over
needle" (emphasis in original)
...
After the catheter is inserted into the
vein, the needle is withdrawn, leaving
only the semi-flexible catheter in the
vein. This method is safer and more
comfortable than a traditional metal
needle, since only the catheter is left
in the vein. There is very little
danger of the catheter breaking off.
The catheter itself is nothing more
than a tube, made from Teflon or other
synthetic material.
...
What are the problems of cannulation at
present?
A technique to place a catheter was
explained by Dr. Seldinger in 1953 and
the technique of using cannula
placement manually by the doctors was
Ser No. 76279966
5
introduced in 1960. The main aim of
this procedure is to place a catheter
(silicone rubber tube) in the lumen of
blood vessels.
www.users.bigpond.com/redpony/cancan.
htm
Of course, applicant's identified “urinary catheters”
are a specific type of catheter used for a specific
purpose, and this purpose is different from the
"intravenous cannula placement units" identified in the
cited registration. It is thus clear that applicant's
goods and those of the registrant would not be used
interchangeably. However, the question we must determine
is not whether consumers are to mistake the goods, but
whether they will mistake the source of the goods.
The Examining Attorney has submitted third-party
registrations which show that the goods are related.
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 (TTAB 1993).
We note that certain of the third-party registrations made
of record by the Examining Attorney are based on Section
44, rather than use, (e.g., Registration No. 2,619,737 for
JOMED) and we also note that some of the registrations are
Ser No. 76279966
6
for catheters which are specifically different from the
urinary catheters identified in applicant's application
(e.g., Registration No. 2,540,091 for balloon catheters;
Registration No. 2,542,310 for catheters for use in cardiac
surgery). However, there are several third-party
registrations which list catheters in general, and
therefore can be assumed to include urinary catheters.
See, for example, Registration No. 2,610,323 for EMBOL-X
for, inter alia, medical devices, namely cannulas,
catheters, introducers for use in medical procedures;
Registration No. 2,517,890 for SEMLER TECHNOLOGIES for
surgical instruments and tools for medical use, namely,
catheters, cannulae, sheaths...; and Registration No.
2,430,215 for VAS-CATH for medical devices, namely,
catheters and cannulae and procedure kits and trays for use
with such catheters and cannulae.
Applicant has asserted in its brief that these third-
party registrations do not, in fact, include urinary
catheters. For example, applicant contends that the
catheters involved in the EMBOL-X registration must be for
vascular use because the mark EMBOL-X is suggestive of the
avoidance of emboli, which occur in blood vessels. With
respect to the SEMLER TECHNOLOGIES registration, applicant
argues that the terms "instruments" or "tools" would not be
Ser No. 76279966
7
apt descriptions of urinary catheters, while, in connection
with the VAS-CATH registration, applicant asserts that
because trays are unnecessary in the case of urinary
catheters, the catheters identified in that registration do
not include urinary catheters.
We are not persuaded by applicant's arguments. The
EMBOL-X registration contains no limitation on the type of
catheters covered by that registration, and we decline to
read in such a limitation by speculating on what the
registered mark might suggest. As for the SEMLER
TECHNOLOGIES registration, whether or not "medical devices"
might be a more appropriate general introductory phrase
than "medical tools," it is clear from the items named
thereafter, "catheters, cannulae, sheaths, needles,
cutlery, hand-held and structurally supported clamps such
as artery clamps, and attachments for all of the above,"
that "medical tools" does not act to limit the type of
catheters covered by the registration. Finally, the
inclusion of "trays for use for such catheters and
cannulae" in the VAS-CATH registration does not mean that
the catheters and cannulae listed in the registration must
be items which are used with trays. We also point out that
there is no evidentiary support for applicant's statement
that urinary catheters cannot be used with trays.
Ser No. 76279966
8
Thus, the third-party registrations establish that
goods of the type identified in applicant's application and
the cited registration may be sold by the same entities
under a single mark.
We also see no reason why urinary catheters and
intravenous cannula placement units cannot be used by the
same personnel on a single patient during a single
treatment. For example, a patient may need to have a
urinary catheter inserted at the same time as a cannula is
inserted for I.V. introduction of fluids. It is also
possible that a sedative or anesthetic may be administered
by I.V. in order for a urinary catheter to be inserted.
Applicant's and the registrant's goods are also sold
to the same classes of purchasers. It is true that these
common purchasers are medical or hospital personnel, and
therefore more sophisticated than the general public.
However, even sophisticated purchasers are not immune from
confusion, particularly here, where the marks are virtually
identical and there is evidence that these types of goods
can emanate from a single source.
In arguing against the likelihood of confusion,
applicant points to the declaration of John Randall Golden,
the Director of Marketing of Urology at Inmed Corporation,
a subsidiary of applicant. Mr. Golden states, inter alia,
Ser No. 76279966
9
that EASY CATH urinary catheters have been sold since 1992;
that from 1992-2002 3 million units of the catheters, worth
$1.5 million, have been sold throughout the United States;
that neither the current or original registrant has
objected to applicant's use of EASY CATH; and that no
instances of actual confusion between applicant's EASY CATH
catheters and the registrant's E-Z-CATH intravenous cannula
placement units have come to his attention.
Although evidence of actual confusion may play a
strong role in finding likelihood of confusion, the absence
of such evidence does not have the same effect. See In re
Majestic Distilling Company, Inc., supra. In this case, we
do not have any information from the registrant as to its
experience with actual confusion. Further, although Mr.
Golden has stated in general terms that applicant's urinary
catheters have been sold "in substantial quantities
throughout the United States," his declaration does not
detail the years in which substantial quantities were sold
throughout the United States, such that we can determine
whether applicant's goods and the registrant's goods were
sold in any great quantities within the same localities.
Moreover, one of the primary methods in which instances of
actual confusion come to the attention of a company is
through complaints. Applicant's goods may well not have
Ser No. 76279966
10
generated any complaints, particularly in view of the fact
that they are quite inexpensive items, with the units
selling for an average of 50¢ each (3 million units sold
for $1.5 million).
In conclusion, in view of the strong similarity of the
marks, the evidence of relatedness of the goods, and the
common purchasers of the products, we find that applicant's
use of EASY CATH for urinary catheters is likely to cause
confusion with the registered mark E-Z-CATH for intravenous
cannula placement units. Any doubts on this issue must be
resolved in favor of the registrant, who registered its
mark more than twenty years before applicant adopted EASY
CATH as its mark. See TBC Corp. v. Holsa Inc., 126 F.3d
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.