VisionQuest Industries, Inc.v.SurgiTech, Inc.

Trademark Trial and Appeal Board

Sep 4, 2008

No. 91163140 (T.T.A.B. Sep. 4, 2008)

Mailed:
September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

VisionQuest Industries, Inc.
v.
SurgiTech, Inc.
_____

Opposition No. 91163140
to application Serial No. 78266698
filed on June 24, 2003
_____

Kit M. Stetina of Stetina Brunda Garred & Brucker for
VisionQuest Industries, Inc.

SurgiTech, Inc., pro se.
______

Before Walters, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

SurgiTech, Inc. (“applicant”) filed a use-based
application to register the mark “SurgiTech Inc. Surgical
Technologies” and design, shown below (“SurgiTech”), for
goods ultimately identified as “orthopedic braces and
electronic treatment devices, namely a line of orthopedic
braces incorporating monitoring systems that record patient
activity such as motion, strain or shock that may also
incorporate or provide as stand alone electronic treatment
devices that administer rehabilitative therapies, such
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91163140
2
therapies including nerve stimulation, heating and cooling,
iontophoresis, ultrasonic, rf, magnetic and mechanical
message (sic),” in Class 10.1

VisionQuest Industries, Inc. (“opposer”) opposed the
registration of applicant’s mark on the ground of priority
and likelihood of confusion under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d). Opposer alleged
prior use of the following federally-registered marks:
1. SURGI STIM, in typed drawing form, for “medical
equipment and supplies, namely electronic nerve and muscle
stimulator, interferential stimulator, electrodes for
electronic nerve and muscle stimulator, lead wires for
electronic nerve and muscle stimulator, and battery pack for
electronic nerve and muscle stimulator,” in Class 10;2 and,

1 Application Serial No. 78266698, filed June 24, 2003.
Applicant claimed October 7, 1997 as its date of first use of the
mark anywhere and June 1, 1998 as its date of first use of the
mark in commerce. Also, applicant disclaimed the exclusive right
to use the words “Surgical Technologies.”

2 Registration No. 2734944, issued July 8, 2003, based on an
application filed September 9, 2002. Opposer claimed December
31, 1999 as its dates of first use of the mark.
Opposition No. 91163140
3
2. T.E.A.R. TECH 2000, in typed drawing form, for
“medical equipment, namely a handheld electronic nerve and
muscle stimulator; medical electrodes and lead wires for a
handheld electronic nerve and muscle stimulator,” in Class
10.3
In its answer, applicant denied the salient allegations
in the notice of opposition. Only opposer introduced
testimony and evidence, and only opposer filed a brief.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
1. The testimony deposition of Kevin Lunau, opposer’s
Vice President of Manufacturing, with attached exhibits;
and,
2. A notice of reliance on a copy of opposer’s first
request for admissions.
In its notice of reliance, opposer also proffered the
following items:
1. Copies of opposer’s pleaded registrations;
2. Copies of two unpleaded registrations;

3 Registration No. 2746498, issued August 5, 2003, based on an
application filed May 2, 2002. Opposer claimed December 1999 as
its dates of first use
Opposition No. 91163140
4
3. A copy of opposer’s first set of interrogatories
(not applicant’s responses); and,
4. A copy of opposer’s first request for production
of document (not applicant’s responses).
Although opposer claimed that it had submitted a
“certified status copy” of the registrations, it did not.
It simply filed photocopies of the registrations. The
photocopies of opposer’s pleaded and unpleaded registrations
do not make the registrations of record. Trademark Rule
2.122(d)(1), 37 CFR 2.122(d)(1). Accordingly, the
registrations filed through the notice of reliance have not
been given any consideration.
In addition, we note that opposer may not rely on
unpleaded marks to support its claims.4 TBMP §314 (2nd ed.
rev. 2004). See also Herbaceuticals Inc. v. Xel
Herbaceuticals Inc., 86 USPQ2d 1572, 1576 n.4 (TTAB 2008).
Accordingly, we have given no consideration to opposer’s
unpleaded marks. Nevertheless, we hasten to add that even
if we had considered these marks and their registrations,
they would not change our decision because to the extent

4 Registration No. 3277532 for the mark ORTHOSTIM 3 A T.E.A.R.
TECHNOLOGY PRODUCT, issued August 7, 2007, based on an
application filed October 26, 2005. Opposer claimed February 15,
2006 as its dates of first use of the mark.

Registration No. 3313947 for the mark SURGISTIM 3 A T.E.A.R.
TECHNOLOGY PRODUCT, issued October 16, 2007, based on an
application filed October 26, 2005. Opposer claimed February 10,
2006 as its dates of first use of the mark.
Opposition No. 91163140
5
that these marks have any probative value it is cumulative
inasmuch as the marks in the pleaded registrations are more
similar to applicant’s mark, and opposer did not prove its
priority of use with respect to the unpleaded marks. See
footnote No. 7 infra.
With respect to opposer’s first set of interrogatories
and first request for production of documents, it is not
clear why they were submitted. Opposer did not refer to
them in its brief. Moreover, because opposer did not file a
timely motion to compel discovery, we decline to draw any
inferences from applicant’s failure to respond to opposer’s
first set of interrogatories and first request for
production of documents.
On the other hand, pursuant to Fed. R. Civ. P. 36(a),
opposer’s requests for admission are deemed admitted if
applicant does not deny the requests or otherwise lodge an
objection. However, contrary to opposer’s contention, we do
not find that “Applicant’s admissions are largely
dispositive of this matter”5 because many of applicant’s
admissions go to the ultimate issue of likelihood of
confusion. To the extent that applicant has admitted facts
related to individual likelihood of confusion factors (e.g.,
the products identified by the parties’ marks are
identical), we have considered the admissions. However, to

5 Opposer’s Brief, p. 3.
Opposition No. 91163140
6
the extent that applicant has “admitted” that a particular
fact supports finding that there is a likelihood of
confusion, we have not considered the admissions because it
is our duty to decide, based on the facts, whether there is
a likelihood of confusion.
Standing
Opposer is required to prove standing as part of its
case. To prove standing, opposer must show that it has a
legitimate personal interest in the opposition. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-1026 (Cir.
1999); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 188-189 (CCPA 1982). We find that
opposer, by virtue of its use of the trademark SURGI STIM in
connection with a medical device that delivers electrical
stimulation signals between the device and a patient, has
established a real interest in the opposition and,
therefore, its standing to challenge the registration of
applicant’s mark. Lipton Industries, Inc. v. Ralston Purina
Co., 213 USPQ at 189.6

6 Opposer failed to properly make its pleaded registrations of
record. As noted above, opposer did not file copies of its
registrations prepared by the U.S. Patent and Trademark Office
showing the current status and title of the registrations. While
in the testimony deposition of Kevin Lunau, opposer established
its ownership of the registrations, Mr. Lunau offered no
testimony regarding the current status of the registrations. See
Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d
1710, 1713 (Fed. Cir. 1991); Cadence Industries Corp. v. Kerr,
225 USPQ 331, 332 n.2 (TTAB 1985).
Opposition No. 91163140
7
Priority
Because applicant did not proffer any testimony
regarding its first use of its “SurgiTech” mark, the filing
date of its application, June 24, 2003, is the earliest date
on which it may rely. Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
n.5 (TTAB 1985) (“The earliest date of first use upon which
Intelsat can rely in the absence of testimony or evidence is
the filing date of its application”).
Kevin Lunau, opposer’s Vice President of Manufacturing,
testified that opposer began using its SURGI STIM and
T.E.A.R. TECH 2000 marks in approximately 1995.7 “Oral
testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.” Powermatics, Inc. v Globe Roofing Products
Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). See also
National Bank Book Co. v. Leather Crafted Products, Inc.,
218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it
is based on personal knowledge, it is clear and convincing,
and it has not be contradicted); Liqwacon Corp. v. Browning-

7 Lanau Dep. p. 12. Mr. Lanau also testified that opposer began
using its unpleaded marks in February 2006. (Lanau Dep., pp. 12
and 13). Opposer filed its applications for those marks on
October 26, 2006. Because both opposer’s dates of first use and
filing dates are subsequent to applicant’s filing date, applicant
has prior use vis-à-vis opposer’s unpleaded marks.
Opposition No. 91163140
8
Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and
continuous use when the testimony is proffered by a witness
with knowledge of the facts and the testimony is clear,
convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB
1976) (oral testimony may establish prior use when the
testimony is clear, consistent, convincing, and
uncontradicted). Because Mr. Lanau’s testimony is clear,
convincing and uncontradicted, we find that opposer began
using its pleaded marks in 1995, and therefore opposer has
established priority of use.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In addition, in a likelihood
of confusion analysis involving medical products, greater
care should be taken in the use and registration of
trademarks to assure that no harmful confusion results.
Therefore, it is proper to require a lesser quantum of proof
Opposition No. 91163140
9
than for nonmedical products. Glenwood Laboratories v.
American Home Products Corp., 455 F.2d 1384, 173 USPQ 19,
21-22 (CCPA 1972) (due consideration should be given to the
fact that the products at issue are prescription drugs);
Clifton v. Plough, Inc., 341 F.2d 934, 144 USPQ 599, 600
(CCPA 1965) (“it is necessary, for obvious reasons, to avoid
confusion in the dispensing of pharmaceuticals”); Schering
Corporation v. Alza Corporation, 207 USPQ 504, 509 (TTAB
1980); Ethicon, Inc. v. American Cynamid Co., 192 USPQ 647,
651 (TTAB 1976); American Home Products Corporation v. USV
Pharmaceutical Corporation, 190 USPQ 357, 360 (TTAB 1976).
A. Opposer’s T.E.A.R. TECH 2000 mark vs. applicant’s
“SurgiTech” mark.

There is no reason why, in a particular case, a single
du Pont likelihood of confusion factor may not be
dispositive. The Court in du Pont recognized that “each
case must be determined on its own facts,” and that “each
[of the thirteen elements] may from case to case play a
dominant role.” Kellogg Co. v. Pack’em Enterprises Inc.,
951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). In
this case, the marks T.E.A.R. TECH 2000 and applicant’s
“SurgiTech” mark, shown below, are so different, that even
if the marks are used on identical products there would not
be any likelihood of confusion.
Opposition No. 91163140
10

See Kellogg Co. v. Pack’em Enterprises, Inc., 14 USPQ2d
1545, 1550 (TTAB 1990), aff’d 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991) (“Considering the marks in their
entireties, we are of the opinion that they differ so
substantially in appearance, sound, connotation and
commercial impression that there is no likelihood of
confusion . . . even if opposer offered evidence at trial
establishing that it has made prior and continuous use of
its mark on goods . . . which are very closely related to
the goods identified in applicant’s application”).
In view thereof, we find that applicant’s use of its
“SurgiTech” mark in connection with “orthopedic braces and
electronic treatment devices, namely a line of orthopedic
braces incorporating monitoring systems that record patient
activity such as motion, strain or shock that may also
incorporate or provide as stand alone electronic treatment
devices that administer rehabilitative therapies, such
therapies including nerve stimulation, heating and cooling,
iontophoresis, ultrasonic, rf, magnetic and mechanical
message (sic)” is not likely to cause confusion with
opposer’s T.E.A.R. TECH 2000 mark used in connection with
“medical equipment, namely a handheld electronic nerve and
Opposition No. 91163140
11
muscle stimulator; medical electrodes and lead wires for a
handheld electronic nerve and muscle stimulator.”
B. Opposer’s SURGI STIM mark vs. applicant’s “SurgiTech”
mark.

1. The similarity or dissimilarity and nature of the
goods.

Opposer uses its SURGI STIM mark to identify an
“electronic nerve and muscle stimulator . . . that delivers
electrical stimulation signals.”8 It is “used to administer
rehabilitative therapies.”9 According to opposer’s
advertising materials, the SURGI STIM stimulation system is
a non-narcotic, non-invasive treatment of pain relief, as
well as system to increase circulation, range of motion, and
reduce muscle spasms.10 By the same token, applicant has
identified its products as “electronic treatment devices
that administer rehabilitative therapies.” In addition,
applicant’s product is used as a “chronic pain
suppressor.”11 In fact, we note that applicant has admitted
that its orthopedic braces and electronic treatment devices
and opposer’s products are identical.12 Accordingly, the
parties’ products are closely related, if not identical, and
therefore we find that the similarity and nature of the

8 Lanau Dep., p. 8.
9 Lanau Dep., p. 10.
10 Lanau Dep., Exhibits 8 and 9. See also Lanau Dep., p. 43.
11 Applicant’s June 4, 2004 Response, Exhibit B Application Serial
No. 78266698.
12 Opposer’s First Request for Admission Nos. 1 and 2.
Opposition No. 91163140
12
goods is a factor that weighs in favor of finding that there
is a likelihood of confusion.
2. The similarity or dissimilarity of established,
likely-to-continue trade channels and classes of
consumers.

Opposer sells its SURGI STIM stimulation system to
physical therapists, occupational therapists, hand
therapists, chiropractors, physicians, surgeons, and
podiatrists.13 Opposer has a sales staff that makes direct
calls on the previously identified prescribers and
clinicians of the product.14 Opposer has also promoted its
products at the American Academy of Orthopedic Surgeons
trade show.15
Because we have found that the parties’ products are
closely related, if not identical, we must presume that the
channels of trade and classes of purchasers
are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part (sic) identical and in-part
(sic) related nature of the parties’ goods, and the lack of
any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are

13 Lanau Dep., pp. 20 and 43-44.
14 Lanau Dep., pp. 44-45.
15 Lanau Dep., pp. 40-41.
Opposition No. 91163140
13
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
In addition, because there are no limitations as to
channels of trade or classes of purchasers in the
application, it is presumed that the application encompasses
all of the goods of the type described in the description of
goods, that the goods so identified move in all channels of
trade normal for those goods, and that the products are
available to all classes of purchasers for the listed
products. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). See also Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”); In re
Elbaum, 211 USPQ 211 USPQ 639, 640 (TTAB 1981).
Moreover, we note that applicant has admitted that the
goods are sold through the same channels of trade16 and that
the prospective purchasers of the parties’ goods are the
same.17 Accordingly, we must presume that the channels of
trade and classes of consumers are the same.

16 Opposer’s request for admission No. 8
17 Opposer’s requests for admission Nos. 7 and 8
Opposition No. 91163140
14
3. The similarity or dissimilarity of the marks in
their entireties as to appearance, sound,
connotation and commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are closely related, if not
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One, Inc.
v. Real Estate 100 Enterprises Corporation, 212 USPQ 957,
959 (TTAB 1981); ECI Division of E-Systems, Inc. v.
Environmental Communications Incorporated, 207 USPQ 443, 449
(TTAB 1980).
In addition, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
Opposition No. 91163140
15
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this
case, the relevant public would be physical therapists,
occupational therapists, hand therapists, chiropractors,
physicians, surgeons, and podiatrists.
Opposer’s mark is SURGI STIM and applicant’s mark is
SurgiTech shown below.

The only point of similarity is that both marks begin
with the highly suggestive term “Surgi.” “Surgi” is
suggestive of a surgical product. In this regard, we note
that a “surgicenter” is “a surgical facility, not based in a
Opposition No. 91163140
16
hospital, where minor surgery is performed on an outpatient
basis.”18 In addition, opposer promotes its SURGI STIM
electronic treatment device as a “Post-surgical Stimulation
System.”19 Its sales are targeted to, inter alia, post-
surgical patients and surgeons.20 According to opposer, the
SURGI STIM system “[p]rovides symptomatic relief of chronic
intractable pain and as an adjunctive treatment in the
management of post-traumatic and post-surgical pain relief”
and it is “[u]tilized throughout the post-surgical period as
an adjunct to physical therapy.”21 Because of the highly
suggestive nature of the term “surgi,” we do not think that
this common element is sufficient to warrant a finding that
the marks are similar where the marks as a whole are
visually and aurally distinguishable. United Foods Inc. v.
J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987); Wooster
Brush Co. v. Prager Brush Co., 231 USPQ 316, 318 (TTAB
1986); Mead Johnson & Co. v. Peter Eckes, 195 USPQ 187, 191
(TTAB 1977).

18 The Random House Dictionary of the English Language
(Unabridged), p. 1915 (2nd ed. 1987). We may take judicial notice
of dictionary definitions. University of Notre Dame du Lac v. J.
C. Gourmet Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
19 Lanau Dep., Exhibits 8-10.
20 Id.
21 Id.
Opposition No. 91163140
17
In view of the foregoing, we find that dissimilarity of
the marks is a likelihood of confusion factor that weighs
against finding that there is a likelihood of confusion.
4. The conditions under which sales are made.

The respective goods of the parties are complex
medical products that would be selected with great care by
purchasers familiar with the source or origin of the
products. The physical therapists, occupational therapists,
hand therapists, chiropractors, physicians, surgeons, and
podiatrists who would buy or prescribe the products are
clearly highly educated, sophisticated purchasers who know
their equipment needs and would be expected to exercise a
great deal of care in its selection.
5. Balancing the factors.
In analyzing the likelihood of confusion factors, we
are cognizant that because the products at issue are medical
products, opposer has a lesser burden of demonstrating that
there is a likelihood of confusion. Nevertheless, we find
that the differences in the marks and the conditions under
which the sales are made outweigh the identity of the goods
and channels of trade. For the foregoing reasons, we find
that applicant’s SurgiTech mark used in connection with
“orthopedic braces and electronic treatment devices, namely
a line of orthopedic braces incorporating monitoring systems
that record patient activity such as motion, strain or shock
Opposition No. 91163140
18
that may also incorporate or provide as stand alone
electronic treatment devices that administer rehabilitative
therapies, such therapies including nerve stimulation,
heating and cooling, iontophoresis, ultrasonic, rf, magnetic
and mechanical message (sic)” is not likely to cause
confusion with opposer’s SURGI STIM mark for “medical
equipment and supplies, namely electronic nerve and muscle
stimulator, interferential stimulator, electrodes for
electronic nerve and muscle stimulator, lead wires for
electronic nerve and muscle stimulator, and battery pack for
electronic nerve and muscle stimulator.”
Decision: The opposition is dismissed.