Uromedica, Inc.

Trademark Trial and Appeal Board

Aug 4, 2006

No. 78099133 (T.T.A.B. Aug. 4, 2006)

Mailed:
August 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Uromedica. Inc.
________

Serial No. 78099133
_______

Carolyn M. Sandberg and Charles E. Steffey of Schwegman
Lundberg Woessner & Kluth, PA.

Nora Buchanan Will, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Bucher, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On December 29, 2001, Uromedica, Inc. filed an
application to register on the Principal Register the mark
PROACT (in typed or standard character form) for goods
ultimately identified as “[a]djustable, surgically-
implantable devices for the treatment of incontinency” in
International Class 10.1

1 Application Serial No. 78099133, claims a bona fide intent to
use the mark in commerce under Trademark Act 1(b), 15 U.S.C.
§ 1051(b).
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 78099133
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark PROACT (also in typed or
standard character form) for “[s]urgical device for
adhesion control therapy consisting of an electronic
controller that monitors treatment parameters and an
applicator that contacts tissue to be treated” in
International Class 10.2 Adhesions are described as follows
in material submitted by the examining attorney with her
September 21, 2005 Office action, taken from
www.ellisdigital.com:
Adhesions are bands of tissue that connect
anatomic sites at locations where there should
not be connections. Adhesions can have a
significant impact on an individual’s health and
well-being ….

How do adhesions form?
Post-operative surgical adhesions are formed as a
result of trauma or injury to tissue such as the
surgical incision made into the abdominal wall.

* * *

When do post-operative adhesions form?
The development of post-adhesions is thought to
occur within the immediate 3-5 days following the
surgical procedure.

Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.

2 Registration No. 2747103, issued August 5, 2003. Registrant is
identified as NTERO Surgical Corp.
Ser No. 78099133
3
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 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, but not exclusive, considerations are
the similarities between the marks and the similarities
between the goods. 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).
The marks involved in this appeal are identical and
applicant has conceded their identity. Thus, the du Pont
factor involving the similarities of the marks weighs
heavily against applicant.
Applicant has argued that “PROACT is a mark which is
also widely used on a number of other products and
services, including Registration 2,358,470 for ‘[s]ervices,
namely, providing medical information and consultation to
organ transplantation candidates’ and Registration
2,045,233 (cancelled in 2003 for failure to file Section 8
Ser No. 78099133
4
Affidavit) for a ‘blood cholesterol monitor for medical
use.’” Brief at p 5. Inasmuch as applicant relies on a
cancelled registration and has not introduced a copy of any
other registration into the record, including Registration
No. 2358470, applicant's argument is without support.
Also, because there is no evidence of use of PROACT by
third parties or marks similar to PROACT in the record, and
because the record does not reflect that PROACT has any
meaning in connection with applicant's or registrant's
goods, we find that PROACT is a strong mark.
Turning next to applicant's and registrant’s goods, we
find that there are differences between the two.3 However,
it is well settled that goods need not be similar or
competitive in nature to support a finding that the goods
are related. See Helene Curtis Industries Inc. v. Suave
Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). It is sufficient
if the respective goods are related in some manner and/or
that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that

3 Applicant points out at p. 3 of its brief that while
applicant's device is implantable in a patient, registrant's
device is not implantable in a patient.

Ser No. 78099133
5
they emanate from or are associated with, the same source.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). Also, it is well established that when the
marks at issue are the same, “the relationship between the
goods on which the parties use their marks need not be as
great or as close as in the situation where the marks are
not identical or strikingly similar.” Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). See also In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993) (“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source.”).
The examining attorney takes the position that
“adhesions and incontinence are common medical conditions
which are often treated surgically in the same type of
medical facilities”; and that “applicant's and the
registrant’s goods will be encountered by the same surgeons
who treat these common post surgical conditions ….” Brief
at p. 7. In the Office action dated September 21, 2005, at
p. 3, the examining attorney specifies that such surgeons
include surgeons in the urology and gynecology fields. The
Ser No. 78099133
6
examining attorney cites to the following record evidence
in support of her position:
1. A webpage from www.ntero.com, which the examining
attorney attributes to registrant, that links adhesions to
almost any type of open surgery:

NTERO Surgical’s mission is to develop devices
and treatments to address common post-surgical
problems. Currently, the company is focusing on
preventing adhesion formation following open
surgical procedures performed by general,
colorectal and gynecologic surgeons.

Adhesion prevention remains one of the leading
unmet needs for surgeons and patients undergoing
surgery. It is well known that post-operative
surgical adhesions lead to small bowel
obstruction, chronic pelvic pain and infertility
resulting in additional health care costs. The
PROACTTM System, currently under investigation,
offers a unique approach to adhesion prevention.
It is not a barrier or gel product.

NTERO Surgical is committed to providing surgeons
with an effective easy to use product that
inhibits the formation of post-operative
adhesions in surgery.

Take control in the prevention of surgical
adhesions. Treat the tissue.

2. An excerpt from the Nexis database that links
incontinence to adhesions:

… Usually the symptoms include frequent, urgent
urination, getting up at night to void and
occasionally urinary incontinence. … Known
causes include anything that can irritate the
bladder, such as diverticulitis, endometriosis,
appendicitis, pelvic adhesions, interstitial
cystitis, urinary tract infections etc.
Hattiesburg American (Hattiesburg, MS)
September 19, 2002

Ser No. 78099133
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3. An abstract of an article from www.greenjournal.org
entitled “Labial Adhesions Presenting As Urinary
Incontinence In Postmenopausal Women,” by CJ Chuong and CP
Hodgkinson, which links complications due to adhesions to
incontinence, and states:

Most discussion on labial adhesions is about the
pediatric group. A case is presented of a
postmenopausal woman whose main complaint was
urinary incontinence.

4. A “case report” from www.ncbi.nlm.nih.gov entitled
“Vulval adhesions causing urinary incontinence” by
“Parkingson DJ” and “Alderman B.,” Postgrad Med. J. 1984
Sep;60(707);634-4, which also links complications due to
adhesions to incontinence.

Applicant maintains that its goods are used for
treatment for post-prostatectomy incontinent patients where
the incontinence results from radical prostatectomy for
prostate cancer or transurethral resection of the prostate
for benign prostatic hyperplasia.4 Applicant's argument is
unhelpful in this appeal - we are bound to consider the
goods as they are defined in the identifications of goods,
and applicant's goods as identified in the identification
of goods are not limited to use due to radical
prostatectomys or even to use in males. See Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)(“The authority

4 For support, applicant cites to two items submitted for the
first time with its appeal brief. This additional evidence is
untimely and is not further considered because under Trademark
Rule 2.142(d), the record in an application should be completed
prior to filing an appeal.

Ser No. 78099133
8
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 sales
of the goods are directed.”). The identification of goods
does not contain the limitations argued by applicant.
Upon consideration of the foregoing, and the other
evidence properly made of record by applicant and the
examining attorney, we find that applicant's “adjustable,
surgically implantable devices for the treatment of
incontinency” and registrant’s “surgical device for
adhesion control therapy …” are related goods. Both are
applied within a patient’s body, and hence require the
services of a surgeon. If the surgery involves the urinary
tract and/or urogenital system, the services of a
urological surgeon would be needed by the patient.
Additionally, even though one device is identified as being
for the treatment of incontinency and the other is
identified as being for the treatment of adhesions,
ultimately, they both may be used in the treatment of
incontinency - the record evidence shows that adhesions
cause incontinency. Further, even if the two medical
Ser No. 78099133
9
devices are used to treat different causes of incontinency,
i.e., one from a prostatectomy and the other from adhesions
formed because of surgery, they are still related; the
examining attorney has established that adhesions are of
concern in any surgical procedure. Finally, it is likely
that the same urological surgeon who undertakes the
prostatectomy would use registrant’s goods to address
potential adhesions, and would later implant applicant's
goods in the patient so that the patient could have a means
of controlling his bladder.
We next consider the similarity or dissimilarity of
established, likely-to-continue trade channels and the
conditions under which and buyers to whom sales are made.
Applicant argues that because applicant's goods are
implantable surgical devices, the “goods description …
calls for a narrow trade channel definition”; that buyers
of registrant’s goods are sophisticated purchasers; and
that neither applicant’s nor registrant’s products are
subject to impulse purchase.5

5 Applicant further argues that registrant’s goods are only used
in colorectal and gynecologic patients, citing to a page from
Respondent’s website submitted for the first time with
applicant's brief. Applicant's argument is not well taken
because applicant's identification of goods is not so limited and
there is no evidence which we may consider in support of
applicant's contention. (As noted earlier in footnote 4, the
submission of evidence for the first time with applicant's brief
Ser No. 78099133
10
Because there are no trade channel limitations in the
identifications of goods, we must assume that applicant’s
goods are sold in all channels that are appropriate for the
sale of medical devices for the treatment of incontinency
that are surgically implantable, and not “a narrow trade
channel,” which applicant attributes to its goods. In re
Elbaum, 211 USPQ 639 (TTAB 1981). Of course, the medical
devices that are the subject of applicant's application and
registrant’s registration would be purchased by hospitals
and medical personnel.6 Thus, the trade channels, as well
as the purchasers, of both goods overlap. Further, we
consider the hospitals and medical personnel to be
sophisticated purchasers, and find that they would not
purchase applicant's or registrant's goods on impulse.
Nonetheless, because of the identity of the marks, we note
that even these sophisticated purchasers are likely to be
confused as to the source of the two products. We hence
find that the du Pont factors regarding trade channels,
sales conditions and purchasers do not favor applicant.

is untimely, and such evidence will not be considered. See
Trademark Rule 2.142(d).)
6 Applicant maintains in his response filed January 25, 2005 that
applicant's goods are “sold to surgeons and not sold to consumers
generally.”
Ser No. 78099133
11
We now turn to applicant's contention at pp. 4-5 of
applicant's appeal brief, i.e., that “[t]here is no
evidence of actual confusion.”7 Applicant's contention is
not persuasive on the question of likelihood of confusion.
First, uncorroborated statements of no known instances of
actual confusion are of little evidentiary value. In re
Majestic Distilling Company, Inc., supra. Second, a page
from applicant's website submitted by the examining
attorney with her September 21, 2005 Office action states,
“ProACTTM is not currently available in the United States.”8
It is clear that there has not been a sufficient
opportunity for confusion to occur, even if it were likely
to occur.
Applicant maintains that it has adopted the PROACT
mark to “expand a family of closely related marks for its

7 Applicant adds that “[t]his is clearly true, because
Applicant's priority date is only a bit more than one month after
the date of first use alleged by Applicant.” Applicant’s
“priority date” is the date of filing of its intent to use
application, which is a constructive use date, not an actual use
date. We do not understand what applicant is trying to convey in
pointing out the proximity of the filing date of its application
to the first use date recited in registrant’s registration, in
the context of whether there have been any instances of actual
confusion.
8 Further, applicant’s August 15, 2005 response included a letter
dated August 8, 2005 from the Food and Drug Administration
(“FDA”) which states “your application is approved and you may
continue your investigation at the institutions enrolled in
accordance with the investigational site waiver granted in our
March 31, 2005 letter. Your investigation is limited to 10
institutions and 109 subjects.” Evidently, applicant's product
has not yet received FDA approval for sale in the United States.
Ser No. 78099133
12
line of implantable, adjustable urinary incontinence
control products.” To establish that it has a family of
marks, applicant must present evidence showing that the
marks it maintains are part of its family of marks are used
and promoted in such a way that the public associates not
only the individual marks, but the common characteristic of
the family, with applicant. See J& J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991). Applicant has introduced no evidence which we may
consider tending to show that it has a family of marks.
Because of this lack of evidentiary support, applicant's
contention that it has a family of marks is rejected.
In view of the foregoing, we find that the potential
for confusion between applicant's and registrant’s goods is
substantial; and that applicant's mark PROACT for
“adjustable, surgically-implantable devices for the
treatment of incontinency” is likely to cause source
confusion among purchasers with the identical registered
mark PROACT for “[s]urgical device for adhesion control
therapy consisting of an electronic controller that
monitors treatment parameters and an applicator that
contacts tissue to be treated.” We arrive at our decision
even if the du Pont factors not specifically discussed
Ser No. 78099133
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above but mentioned in applicant's appeal brief are
resolved in applicant's favor or are deemed neutral.
Decision: The refusal to register under Section 2(d)
is affirmed.