Toshiba Medical Systems Corporation

Trademark Trial and Appeal Board

Jun 18, 2009

No. 79046106 (T.T.A.B. Jun. 18, 2009)

Mailed:
18 June 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Toshiba Medical Systems Corporation
________

Serial No. 79046106
_______

David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for Toshiba Medical Systems Corporation.

Marilyn D. Izzi, Trademark Examining Attorney, Law Office
112 (Angela B. Wilson, Managing Attorney).
_______

Before Seeherman, Drost, and Ritchie, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 17, 2007, Toshiba Medical Systems
Corporation (applicant) applied to register the mark
VANTAGE TITAN, in standard character form, on the Principal
Register for goods ultimately identified as “medical
magnetic resonance imaging diagnostic apparatus, namely,
MRI diagnostic apparatus” in Class 10. Serial No.
79046106. The application is a request for an extension of
protection under Section 66(a) of the Trademark Act (15
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 79046106
2
U.S.C. § 1141f(a)) based upon International Registration
No. 0943219. The application includes a claim of ownership
of Registration Nos. 2448220 (EXCELART and design); 3366176
(VANTAGE ATLAS); and 3366177 (EXCELART VANTAGE ATLAS).
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of the registered mark TITAN,
in typed or standard character form, for “medical
diagnostic apparatus, namely, medical ultrasound device” in
Class 10.1 When the refusal was made final, a request for
reconsideration and this appeal followed.
Issue
Is applicant’s mark VANTAGE TITAN for a medical
magnetic resonance imaging diagnostic apparatus, namely,
MRI diagnostic apparatus, likely to cause confusion,
mistake or deception under Section 2(d) of the Trademark
Act (15 U.S.C. § 1052(d)) in view of a prior registration
for the mark TITAN for a medical diagnostic apparatus,
namely, medical ultrasound device?
Facts
Both applicant’s and registrant’s goods are medical
diagnostic apparatus.

1 Registration No. 2978496 issued July 26, 2005.
Ser No. 79046106
3
Applicant’s goods use magnetic resonance imaging2
technology while registrant’s goods use ultrasound3
technology.
These machines can be used as part of a common
diagnostic approach and they can be used together:
Radiologist Suzanne LeBlang is moving a mouse and
firing away, feeling a bit like her kids do playing
videogames. She’s controlling a million-dollar
ultrasound machine that is heating up and destroying
jelly-bean size sections of a fibroid tumor that has
caused the patient in the next room serious discomfort
for ten years. LeBlang, who practices in Boca Raton,
Fla., is simultaneously using an MRI machine to guide
the zapping so it avoids healthy tissue.
Forbes, October 13, 2008.

In addition to digital mammography, Teton Radiology
Madison will offer MRI, ultrasound, bone densitometry,
CT and X-ray services.
Idaho Falls Post Register, October 7, 2008.

The new treatment magnetic resonance imaging
(MRI)-guided transurethral ultrasound uses heat from
focused ultrasound to treat cancer in the prostate
gland…
The therapy involves two different and naturally
incompatible technologies, ultrasound and MRI, which
Bronskill and Chopra spent 10 years making compatible.
“You have to make an ultrasound heating applicator
work inside a magnetic resonance imager, without the

2 “Magnetic Resonance Imaging (MRI) … uses powerful magnets to
polarise and excite hydrogen nuclei (single proton) in water
molecules in human tissue, producing a detectable signal which is
spatially encoded resulting in images of the body.” Final Office
Action, www.wikipedia.org. The “Board will consider evidence
taken from Wikipedia so long as the non-offering party has an
opportunity to rebut that evidence….” In re IP Carrier
Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007).
3 Ultrasound “uses high frequency sound waves of between 2.0 and
10.0 megahertz that are reflected by tissue to varying degrees to
produce a 2D image, traditionally on a TV monitor.” Final Office
Action, www.wikipedia.org.
Ser No. 79046106
4
two technologies interfering with each other,” says
Bronskill, who is a professor at the University of
Toronto. “The prostate cancer site is a natural for
this technology because it’s surrounded by structures
you want to spare.”
Pharma Investments, Ventures & Law Weekly, October 5,
2008.

Toshiba Installs Vantage Titan System at Health Scan
Imaging…
Health Scan Imaging provides its customers access to
the industry’s most advanced technology, including
high-resolution multislice 3D CT, high-field open
concept multichannel MRI, ultrasound and digital X-
ray.
Business Wire, October 8, 2008.4

Series #2: Mary
Mary found a lump in her breast. To evaluate it
further, she had a full mammogram, followed by
ultrasound and MRI.
www.breastcancer.org

Ultrasound and Magnetic Resonance Portfolio
www.medical.philips.com

The same companies, including applicant itself,
produce both ultrasound and MRI medical diagnostic imaging
machines. See, e.g., Business Wire, October 8, 2008
(“Toshiba Installs Vantage Titan MR System at Health Scan
Imaging… Toshiba Medical Systems Corp. [applicant], an
independent group company of Toshiba Corp.,5 is a global

4 In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003)
(While “we are not saying that newswire stories are of the same
probative value as are stories appearing in magazines and
newspapers, we think that the situation has changed such that
said newswire stories have decidedly more probative value than
they [previously] did”).
5 See also Reg. No. 1923358 (TOSHIBA for, inter alia, “magnetic
resonance imaging machines for medical use; ultrasound diagnostic
machines for medical use”).
Ser No. 79046106
5
leading provider of diagnostic medical imaging systems and
comprehensive medical solutions, such as CT, Cath & EP
Labs, X-ray, Ultrasound, MRI and information systems);
Healthcare Mergers, Acquisitions & Ventures Week, October
11, 2008 (“GE Healthcare is the world’s largest
manufacturer of medical devices such as ultrasound and
CT/MRI”); www.medical.philips.com (Philips magnetic
resonance and ultrasound imaging systems);
www.medical.toshiba.com (Toshiba ultrasound and magnetic
resonance imaging systems); www.medical.siemens.com
(Siemens ultrasound and magnetic resonance imaging
systems); Reg. No. 2857363 (DOT MED for, inter alia,
“ultrasound diagnostic apparatus; MRI apparatus”); and No.
2436432 (EVERYTHING FOR YOUR IMPLANT PRACTICE BUT THE
IMPLANTS for, inter alia, “MRI, ultrasound and X-ray
diagnostic apparatus”).6
Discussion
We now must determine whether the examining attorney’s
refusal on the ground that there is a likelihood of
confusion in this application should be affirmed. In a
case involving a refusal under Section 2(d), we analyze the

6 Use-based, third-party registrations may “serve to suggest that
such goods or services are of a type which may emanate from a
single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n. 6 (TTAB 1988).
Ser No. 79046106
6
facts as they relate to the relevant factors set out 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003)
and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1896 (Fed. Cir. 2000).
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
registration. Here, registrant’s mark is TITAN and
applicant’s mark consists of registrant’s mark with the
additional word VANTAGE. Therefore, the marks are the same
because they consist of the same word TITAN and they differ
because applicant has added the word VANTAGE to
registrant’s mark.
The examining attorney has argued (Brief at 2) that
when “marks are virtually the same, the addition of a house
mark is more likely to add to the likelihood of confusion
than to distinguish the marks.” In response, applicant
argues (Reply Brief at 3) that it “is true that Applicant
uses its VANTAGE mark to identify three other products
(i.e., VANTAGE, VANTAGE ATLAS, and EXCELART VANTAGE), but
all of these products are MRI apparatus, fitting squarely
within the definition of product marks, rather than a house
mark.” Whether a mark is or is not a house mark is not
Ser No. 79046106
7
conclusive in determining whether there is a likelihood of
confusion. Compare In re Fiesta Palms LLC, 85 USPQ2d 1360
(TTAB 2007) (CLUB PALMS MVP confusingly similar to MVP; MVP
not shown to be highly suggestive term) with Knight Textile
Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005)
(No likelihood of confusion between NORTON McNAUGHTON
ESSENTIALS and ESSENTIALS where the evidence demonstrated
that “Essentials” was a highly suggestive term).
In this case, whether applicant’s VANTAGE mark is used
on a wide variety of goods or on other similar goods is not
outcome determinative. The addition of a distinctive term,
which is not a house mark, does not necessarily result in
marks that are dissimilar. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“The marks
SQUIRT and SQUIRT SQUAD are, however, of such similarity
that they are more likely to create confusion than prevent
it”). See also In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila
confusingly similar to GASPAR ALE for ale).
Here, applicant has taken the entire registered mark
and added a term that it describes as its product mark.
Even if VANTAGE is a product mark, there is no rule that
adding a product mark to a registered mark avoids confusion
while adding a house mark results in confusion. Such a
Ser No. 79046106
8
rule would be illogical.7 In re United States Shoe Corp.,
229 USPQ 707 (TTAB 1985) (Applicant’s CAREER IMAGE similar
to registrant’s CREST CAREER IMAGES) and In re Apparel
Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (“The words
‘by sassafras’ indicate to prospective purchasers that
‘sassafras’ is the name of the entity which is the source
of the ‘SPARKS’ brand clothing”). Inasmuch as the words
“Vantage” and “Titan” are not naturally associated, the
term TITAN will retain its identity as a separately
identifiable term in the mark. Squirtco, 216 USPQ at 939
(“[I]n SQUIRT SQUAD, SQUIRT retains its identity”).
Applicant also argues that the “evidence of numerous
third-party registrations for TITAN-formative marks for
medical apparatus establishes that the cited mark is highly
suggestive and accorded a very narrow scope of protection.”
Brief at 3. The Federal Circuit has made it clear that:
The probative value of third-party trademarks depends
entirely upon their usage. E.g., Scarves by Vera,
Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d
Cir. 1976) (“The significance of third-party
trademarks depends wholly upon their usage. Defendant
introduced no evidence that these trademarks were
actually used by third parties, that they were well
promoted or that they were recognized by consumers.”)…
As this court has previously recognized where the
“record includes no evidence about the extent of
[third-party] uses … [t]he probative value of this

7 Applicant’s reference to TMEP § 1402.03(b) (5th ed. September
2007) is not on point. That section deals with permitting an
applicant to identify its goods in the application as “a house
mark for …” rather than including a long list of goods.
Ser No. 79046106
9
evidence is thus minimal.” Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir.
2001) (emphasis added).

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1689, 73 USPQ2d 1689, 1693 (Fed.
Cir. 2005).
Here, applicant has presented no evidence of use so we
must accord this evidence minimal weight. Even if we
considered the registrations, we note that they often
involve different goods such as protective mouth guards
(No. 0829175), dental handpieces (No. 1031351), device for
the controlled delivery of light and energy for
dermatological applications (Nos. 3084944 and 3085072, same
registrant), penile prostheses (No. 2872319), and operating
tables (No. 3414719) or marks with other meanings such as
TITANIT (No. 2639655) and TITANO (No. 2774416).8
We add that it is proper to consider these types of
registrations as a form of a dictionary definition. In re

8 The last two registrations as well as No. 3233686 (MRP-TITAN)
and application Nos. 78594851 (TITAN B) and 79026283 (TITAN) are
not based on use. “Such registrations and applications are not
even necessarily evidence of a serious intent to use the marks
shown therein in the United States on all of the listed goods and
services, and they have very little, if any, persuasive value on
the point for which they were offered.” Mucky Duck, 6 USPQ2d at
1470 n.6. Further, the third-party applications submitted by
applicant have “no probative value other than as evidence that
the application was filed.” In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1049 n.4 (TTAB 2002).
Ser No. 79046106
10
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)
(“[T]hird-party registrations can be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry”). See also In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird
party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive
or descriptive of certain goods and hence is entitled to a
narrow scope of protection”).
Regarding the nature of the term “Titan,” applicant
points out that “the Board has expressly held that ‘TITAN’
is undoubtedly a laudatory term denoting enormous strength
or size which suggests why registrant, applicant, and the
many third-party registrants and others have adopted and
used or registered this term as trademarks for their
different goods and/or incorporated the term as a part of
their company names.” Reply Brief at 5, quoting In re
Bayuk Cigars Inc., 197 USPQ 627, 628 (TTAB 1977).9
Applicant maintains that “‘enormous strength or size’ [is]
the very same meaning it has in relation to both

9 See also Cabot Corp. v. Titan Tool, Inc., 209 USPQ 338, 343-44
(TTAB 1980) (“In view of the definition of the term ‘TITAN’ and
respondent’s third-party evidence, the following statement in In
re Bayuk Cigars Incorporated, 197 USPQ 627 (TTAB, 1977), relative
to the nature of the term, its ability to function as a
trademark, and the scope of protection to be afforded it, as
applied to particular goods, is equally applicable herein”).
Ser No. 79046106
11
Applicant’s and Registrant’s marks.” Brief at 5. In the
context of cigars, the term TITAN would be highly laudatory
in suggesting that the cigars were of great size. However,
in the context of diagnostic imaging machines, it is less
likely that prospective purchasers will look at an
ultrasound machine, such as registrant’s shown below (or an
MRI medical imaging machine10) and conclude that TITAN is a
laudatory term.

Therefore, considering the third-party registrations for
other less closely related medical products and the prior
case law, we find that the term TITAN for medical
diagnostic apparatus, to the extent that it is laudatory,
is only slightly laudatory, and it is not entitled to only
a narrow scope of protection.11

10 Applicant’s MRI apparatus “boasts a 71-centimeter [28 inch]
opening.” Business Wire, October 8, 2008.
11 We note that “titan” has numerous other meanings including a
character from classical mythology; a moon of Saturn; a person of
enormous size, strength, power, or influence; and an
intercontinental ballistic missile. See Response dated April 3,
2008, attachment.
Ser No. 79046106
12
In this case, the marks TITAN and VANTAGE TITAN are
more similar than they are different. Applicant has taken
registrant’s mark and added its “product mark” to it. It
is not clear why the addition of the word VANTAGE would
avoid confusion. It is more likely to be considered
another product from the previously anonymous source of
TITAN medical diagnostic apparatus, namely, medical
ultrasound devices.
Therefore, we find that the marks are similar and this
factor supports a conclusion that there is a likelihood of
confusion.
Another important factor is the question of whether
the goods are related. We must consider the goods as they
are identified in the application and registration.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant maintains that while “both marks identify some
type of medical diagnostic product in the broad sense, this
fact alone is not enough to support a likelihood of
confusion.” Brief at 13. However, “goods that are neither
used together nor related to one another in kind may still
‘be related in the mind of the consuming public as to the
origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.’” Shen
Ser No. 79046106
13
Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350
(Fed. Cir. 2004) (citing Recot, 54 USPQ2d at 1898). See
also McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898
(TTAB 1989) (“In order to find that there is a likelihood
of confusion, it is not necessary that the goods or
services on or in connection with which the marks are used
be identical or even competitive. It is enough if there is
a relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources”).
Here, several facts support the conclusion that
applicant’s medical magnetic resonance imaging diagnostic
apparatus, namely, MRI diagnostic apparatus, and
registrant’s medical diagnostic apparatus, namely, medical
ultrasound device, are related. First, both goods are
medical diagnostic apparatus with imaging functions.
Second, the facts show that MRI and ultrasound diagnostic
equipment originate from the same source.12 Third, the same
facilities (hospitals and diagnostic centers) have both MRI

12 While applicant points out that some of these companies are
“large international companies often engaged in vast and diverse
business areas” (Brief at 15), this fact would not mean that this
evidence is irrelevant. When applicant and its competitors are
the source of both applicant’s and registrant’s goods in the same
field, it is of no aid to applicant to show that its competitors
also make unrelated products.
Ser No. 79046106
14
and ultrasound equipment. Fourth, MRI and ultrasound
equipment can serve complementary purposes, for they can be
used by physicians and other medical personnel in the
treatment of the same patient for such diseases as prostate
and breast cancer or in the treatment of a patient with a
fibroid tumor. When we consider that applicant’s and
registrant’s goods are medical diagnostic equipment that
can originate from the same source (applicant itself is a
source of both types of equipment), that can be purchased
by the same facilities, and that are used on the same
patients to treat the same disease by the same physician,
we conclude that these goods are related.13
Applicant points to six pairs of registrations and
argues that the USPTO “has allowed similar marks for MRI
and ultrasound equipment.” Brief at 14 (PANACEA
DISCOVERY/QOUSTIC PANACEA14; AUTOALIGN/AUTOSOUND;
MICROMAXX/NEOMAXX; OPTISON/OPTI-GO; QUALITY FOR LIFE/MADE

13 We are not basing our conclusion that the goods are related on
the simple fact that hospitals can purchase both applicant’s and
registrant’s goods. “The ‘hospital community’ is not a
homogeneous whole, but is composed of separate departments with
diverse purchasing requirements….” Astra Pharmaceutical Products
v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791
(1st Cir. 1983). However, the record in this application
contains reports that Teton Radiology and Health Scan Imaging use
both types of equipment for their specific diagnostic facilities
and it suggests that the same would be true of a hospital’s
comparable diagnostic facility.
14 This mark is still a pending application.
Ser No. 79046106
15
FOR LIFE; and STARLINK/PRINTLINK). We note that “the third
party registrations relied on by applicant cannot
justify the registration of another confusingly similar
mark.” Plus Products v. Star-Kist Foods, Inc., 220 USPQ
541, 544 (TTAB 1983). See also Curtice-Burns, Inc. v.
Northwest Sanitation Products, Inc., 530 F.2d 1396, 189
USPQ 138 (CCPA 1976):
[A]ppellant relies on Hunt [Foods and Industries, Inc.
v. The Gerson Stewart Corp., 367 F.2d 431, 151 USPQ
350 (1966)] to show that the facts here as to the
parties’ marks and products parallel those in Hunt,
which is not the case, on which precedential basis we
are asked to find likelihood of confusion, as we did
in Hunt. We said in Industrial Nucleonics Corp. v.
Hinde, 475 F.2d 1197, 177 USPQ 386 (CCPA 1973), as we
shall evidently have to continue saying ad nauseam:

As we have said innumerable times, prior
decisions on other marks for other goods are of
very little help one way or the other in cases of
this type. Each case must be decided on its own
facts and the differences are often subtle ones.

Accord In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett
Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court”).
We note that none of applicant’s pairs of
registrations involves an example where an applicant has
taken an entire registered mark and added an additional
word to it. In addition, the marks involved are so
Ser No. 79046106
16
different from the present case that, even if they were
relevant, they would merely stand for the principle that
the Office determines each case on its own merits.
Regarding the factors concerning purchasers and
channels of trade, the examining attorney has included
internet websites showing that MRI and ultrasound equipment
are sold in the same trade channels. See, e.g.,
www.amberusa.com (MRI and ultrasound equipment);
www.medical.philips.com (Imaging – Magnetic Resonance and
Ultrasound); www.absolutemed.com (Ultrasound and MRI
Machines). Also, inasmuch as physicians and other medical
professionals use both types of medical imaging equipment,
the same medical personnel are likely to be involved in, or
actually make, purchasing decisions for both products as
opposed to the purchasing agent who may merely complete the
purchase order. See Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d
1388, 1391 (Fed. Cir. 1992) (“[E]ven when there is an
overlap in purchasing persons due to a common purchasing
agent, such an agent is not necessarily a ‘relevant person’
for determining likelihood of confusion”). Therefore, we
conclude that the purchasers and channels of trade are
likely to overlap.
Ser No. 79046106
17
In response, applicant submits (Reply Brief at 7,
numbering corrected) that:
its evidence showing that MRI and ultrasound: (1)
utilize distinctly different technologies; (2) are
received by patients in very different ways (wand
placed against the body v. lying within a large
scanning machine); (3) are both highly complex and
expensive; (4) are purchased by very knowledgeable and
sophisticated doctors and hospital administrators; (5)
are taken with great care and consideration, should
have the same persuasive effect as in In re Digirad
[Corp., 45 USPQ2d 1841 (TTAB 1998)].

Applicant also refers to the cases of Astra
Pharmaceutical and Electronic Design. However, as
explained by the Electronic Design Court (21 USPQ2d at
1390-91), “Astra sold pharmaceutical products to hospital
pharmacies and Beckman sold laboratory instrumentation to
hospital laboratories.” In reaching a conclusion similar
to that in Astra Pharmaceutical, the Court held that:
“Although opposer’s services and applicant’s goods are
purchased by some of the same large corporations, the
individual departments therein may be as independent in
their purchasing activities as were the hospital
departments in Astra. In such corporations, it cannot be
presumed, as the Board apparently did, that the general
computer services are selected by the same individuals who
Ser No. 79046106
18
select battery chargers and power supplies.” Id. at 1391.15
Here, the facts are different, with both items likely to be
purchased by the same departments or diagnostic facilities
with the involvement of the same physicians in the
purchasing decision.
We have also considered the Digirad case but it does
not compel a conclusion that confusion is unlikely. In
that case, applicant sought to register the mark DIGIRAD
for solid state gamma radiation sensors, signal processors,
and display apparatus for use in medical isotopic tracing
and medical nuclear imaging. The examining attorney
refused to register the mark because of a registration for
the mark DIGIRAY for an electronic digital x-ray system.
In that case, the board found that purchasers “will easily
distinguish between the marks DIGIRAY and DIGIRAD based
upon the connotations of RAY and RAD in connection with the
parties’ respective goods” (Id. at 1845); that the
examining attorney’s registration evidence did not show “a

15 Applicant also relies on the case of In re N.A.D. Inc., 754
F.2d 996, 224 USPQ 969 (Fed. Cir. 1985). However, a key factor
in that case was the presence of a consent agreement from the
registrant, a fact not present in the instant case. Id. at 971
(“This consent, moreover, having been given by a competitor well
acquainted with the realities of the business suffices to
persuade us, when taken together with all of the other facts,
that the board and the Examining Attorney were simply wrong in
their opinions that there would be a likelihood of confusion, and
we so hold”).
Ser No. 79046106
19
single one includ[ing] both parties’ goods identified
herein” (Id. at 1844); and that there are “differences in
the relevant purchasers” (Id.). The record in the present
case is simply different. The TITAN part of the marks is
identical and it would not signal to potential purchasers
that the goods emanate from or are associated with
different sources; the involved goods do, in the
marketplace, originate from some of the same sources; and
the purchasers (or those involved in making purchasing
decisions) would overlap. Digirad does not establish a per
se rule that non-identical, expensive medical products are
unrelated. In the present case, the record supports a
conclusion that the goods are related.
Lastly, we address applicant’s argument about the
sophistication of the purchasers, which is coupled with the
expensive nature of the products. It seems beyond dispute
that ultrasound and MRI imaging equipment is expensive and
that the purchasers of these products would be
sophisticated. Sophistication of the purchasers is also an
important factor in avoiding confusion. Electronic Design,
21 USPQ2d at 1392 (internal quotation marks omitted)
(“Where the purchasers are the same, their sophistication
is important and often dispositive because sophisticated
consumers may be expected to exercise greater care”).
Ser No. 79046106
20
However, even sophisticated purchasers may be
confused. Imagineering Inc. v. Van Klassens Inc., 53 F.3d
1260, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995) (The “record
shows that the buyers of Imagineering’s and Van Klassens’
furniture are sophisticated. While a sophisticated
purchaser might more easily discern distinctions between
Van Klassens’ and Imagineering’s furniture, the record in
this case shows that even a trained furniture salesman
could not distinguish the two products”); Weiss Associates
Inc. v. HRL Associates Inc., 902 F.2d 1840, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990) (“On the issue of sophisticated
purchaser, this court also agrees with the Board… The Board
took into account the theory, but said that the
similarities in the products overshadow the sophistication
of the purchasers”); and In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful purchasers
are not immune from source confusion”).
Here, we cannot conclude that the sophisticated
purchasers of ultrasound and MRI medical diagnostic
equipment would not be confused when the marks TITAN and
VANTAGE TITAN are used on these goods. These purchasers
are likely to be aware that a single entity can be the
source of both such products. Palm Bay, 73 USPQ2d at 1695
(“And even more sophisticated purchasers might be aware
Ser No. 79046106
21
that champagne houses offer both types of products under
similar marks, and could easily conclude that VEUVE ROYALE
was Veuve Clicquot’s sparkling wine”). These purchasers,
familiar with registrant’s products, are likely to
participate in purchasing decisions involving applicant’s
goods, and assume that the products are associated or
related in some way. The fact that purchasers may study
the specimens and determine that applicant’s and
registrant’s imaging devices originate from different
sources is not relevant. We must consider whether the
marks TITAN and VANTAGE TITAN when used on the identified
goods are confusingly similar. Dan Robbins & Associates,
Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 104 n.6
(CCPA 1979) (“Likelihood of confusion occurs upon
observance of the mark and goods. It need not await a
reading of the book. The mark, not the specimen, is
submitted for registration”). In this case, after we
consider all the evidence of record, we conclude that there
is a likelihood of confusion.
To the extent that we have any doubt about this
conclusion, we must resolve this doubt in favor of the
registrant. In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004) and In re Hyper
Ser No. 79046106
22
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988).
Decision: The examining attorney’s refusal to
register applicant’s mark VANTAGE TITAN under Section 2(d)
of the Trademark Act is affirmed.