Volcano Corporation

Trademark Trial and Appeal Board

Mar 17, 2016

No. 85761716 (T.T.A.B. Mar. 17, 2016)

This Opinion is Not a
Precedent of the TTAB

Hearing: March 15, 2016 Mailed: March 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Volcano Corporation
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Serial No. 85761716
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Dean R. Karau of Fredrikson & Byron PA,
for Volcano Corporation.
Tasneem Hussain, Trademark Examining Attorney, Law Office 118,
Thomas Howell, Managing Attorney.1
_____

Before Zervas, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Volcano Corporation (“Applicant”) seeks registration on the Principal Register of
the mark DEFINE (in standard characters) for
Medical and scientific research, namely, conducting
clinical trials for others relating to measuring physiology
using a pressure guide wire in percutaneous coronary
intervention procedures, namely, clinical trials conducted
by interventional cardiologists for analyzing and
comparing data from current and new techniques
employed by interventional cardiologists that measure

1 Leigh C. Case, Trademark Examining Attorney, Law Office 118, appeared at the hearing
on behalf of the USPTO.
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physiological coronary and peripheral pressure by
inserting pressure guide wires featuring small sensors into
femoral and radial arteries to determine the severity of
coronary and peripheral lesions during percutaneous
coronary intervention procedures and whether coronary
stenoses require further treatments, for the purpose of
exploring new indications in stable and unstable coronary
artery disease, peripheral arterial disease and neurology
and for the purpose of exploring economic outcomes of
physiologic indices, all for the eventual improvement of
diagnosing coronary and peripheral vascular disease by
interventional cardiologists, in International Class 42.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark DEFINE (in standard characters)
for “medical and scientific research, namely, conducting clinical trials and clinical
studies relating to pharmaceutical preparations for human use,” in Class 42, as to be
likely to cause confusion.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.

2 Application Serial No. 85761716 was filed on October 23, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
For convenience and where appropriate, Applicant’s services are hereinafter referred to as
conducting clinical trials for comparing invasive diagnostic angioplasty techniques used by
interventional cardiologists. See 11 TTABVUE 18 and 14 TTABVUE 8. At the hearing,
Applicant’s counsel described Applicant’s clinical trial testing services as comparing
techniques for diagnosing stenosis.

3 Registration No. 4070392, registered on December 13, 2011.
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I. Evidentiary Issue
With its main brief, Applicant inserted “screenshots … from a video showing the
guide wire being introduced through the femoral artery.”4 Applicant explained that
this was for “illustrative purposes only, and are not part of the record.5 The
Trademark Examining Attorney objected to the screenshots on the ground that they
were not timely made of record pursuant to Trademark Rule 2.142(d), 37 CFR
§ 2.142(d). Trademark Rule 2.142(d) reads as follows:
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence filed
with the Board by the appellant or by the examiner after
the appeal is filed. After an appeal is filed, if the appellant
or the examiner desires to introduce additional evidence,
the appellant or the examiner may request the Board to
suspend the appeal and to remand the application for
further examination.
Because the screen shots were not previously made of record, the objection is
sustained and we give the screen shots no consideration in our decision-making
process. For the same reason, we will not consider any of the exhibits attached to
Applicant’s reply brief.6

4 11 TTABVUE 12-13.
5 11 TTABVUE 12, n.1.
6 Applicant seems to be under the impression that attaching previously-filed evidence to a
brief (and citing to the attachments, rather than to the original Office Action or Response) is
a courtesy or a convenience to the Board. It is neither. When considering a case for final
disposition, the entire record is readily available to the panel. Because we must determine
whether such attachments are properly of record, citation to the attachment requires
examination of the attachment and then an attempt to locate the same evidence in the record
developed during the prosecution of the application, requiring more time and effort than
would have been necessary if citations were directly to the prosecution history.
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II. Applicable Law
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 Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities
between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A. The similarity or dissimilarity of the marks.
The marks are identical in terms of their appearance, sound, connotation and
commercial impression.
B. The number and nature of similar marks in use in connection with similar
services.
Applicant argues that “[t]here are numerous ‘DEFINE’ studies which evidence
what happens in the actual marketplace.”7 Applicant references the website from the
U.S. National Institutes of Health, Department of Health and Human Services,
through the National Library of Medicine (clinicaltrials.gov) from which it submitted

7 11 TTABVUE 25.
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information about pending clinical studies.8 The following examples are
representative of the purported third-party use from that website:
9

10

8 4 TTABVUE 6-40.
9 4 TTABVUE 6.
10 4 TTABVUE 9.
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11

The webpage immediately above identifies Registrant’s clinical trial. Applicant
asserts that this webpage was submitted by Registrant as its specimen of use during
the prosecution of Registrant’s application for registration and, thus, demonstrates
trademark use.12 We disagree. The ClinicalTrials.gov website is identified as “A

11 4 TTABVUE 28.
12 14 TTABVUE 20. Applicant repeated this contention at the oral hearing.
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service of the U.S. National Institutes of Health.” It appears to be a bibliography of
clinical trials catalogued by the U.S. National Institutes of Health. In the excerpts
pasted above, the word “Define” is used by Registrant, and the other study sponsors,
as part of the study name; not as a trademark to identify and distinguish their clincal
trial testing services. The Trademark Examining Attorney accurately characterizes
the use of the word “Define” in the studies as follows:
Applicant’s reliance on its evidence to support its
contention that DEFINE is commonly used in the field of
research is misplaced because each one clearly indicates
that the source of the services is a named company or
organization (e.g., Mount Sinai School of Medicine or
Biogen Idec) and that the wording DEFINE is used only as
an acronym or parenthetical wording but never as part of
the Official Title or as the Sponsor of the studies. As
explained in the May 22, 2014 Office Action, seven random
uses of the term DEFINE from a single online database (all
culled from the identical website www.clinicaltrials.gov
rather than from the actual website of the sources of the
services) does not sufficiently prove dilution of this term in
the medical research industry. Not a single one of
applicant’s evidence demonstrates parties using the
wording DEFINE as the source of their research services
in a trademark sense; instead, applicant’s evidence only
shows the wording at the tail end of the name of the study
and always in parentheses.13
Further, we are not bound by the fact that a Trademark Examining Attorney in
another application determined that a webpage from the ClinicialTrials.gov website
was an acceptable trademark specimen. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

13 13 TTABVUE 5.
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We find that the above-identified evidence does not narrow the scope of protection
accorded to the registered mark.
C. The similarity or dissimilarity and nature of the services.
Where identical marks are involved, as is the case here, the degree of similarity
between the parties’ goods and/or services that is required to support a finding of
likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1688-1689 (Fed. Cir. 1993) (“even when the goods or services are not competitive or
intrinsically related, the use of identical marks can lead to the assumption that there
is a common source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650
(TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only
necessary that there be a viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ
355, 356 (TTAB 1983).
Applicant is seeking to register its mark for conducting clinical trials for
comparing invasive diagnostic angioplasty techniques used by interventional
cardiologists and the description of services in the cited registration is “medical and
scientific research, namely, conducting clinical trials and clinical studies relating to
pharmaceutical preparations for human use.” 14 Both services are for conducting
clinical trials although Applicant’s services are for comparing invasive diagnostic

14 Applicant explains in its reply brief that “interventional cardiology is a narrow branch of
cardiology that deals specifically with the catheter-based treatment of structural heart
diseases. While all interventional cardiologists are cardiologists, not all cardiologists are
interventional cardiologists.” 14 TTABVUE 8.
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angioplasty techniques used by interventional cardiologists and Registrant’s services
are in the field of pharmaceutical preparations.15
In her November 1, 2013 Office Action, the Trademark Examining Attorney
submitted excerpts from 23 company overviews found in the LexisNexis database
regarding companies that render clinical trial services in the fields of
pharmaceuticals and cardiology. We do not consider those excerpts involving
companies which do not render services in the United States.16 The following ten
excerpts, however, involve companies which render clinical trials in the therapeutic

15 “Applicant’s studies compare two techniques used by interventional cardiologists to
evaluate narrowed coronary arteries to determine whether a lesion in an artery requires
coronary revascularization by an interventional cardiologist.” 14 TTABVUE 8. See also 11
TTABVUE 18.

Applicant contends that “[t]he purpose of Registrant’s study is to evaluate the effectiveness
of entecavir plus adefovir therapy versus entecavir monotherapy or therapy with adefovir
plus lamivudine, for the eventual treatment of chronic hepatitis B in patients.” 11 TTABVUE
13. We must consider the services as they are described in the application and registration.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) (“The authority 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 the
sales of goods are directed”); Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective descriptions of goods”). We also may
not read limitations into the identification of goods. 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”). Therefore, we must presume that Registrant's clinical trials and clinical
studies relating to pharmaceutical preparations for human use” include pharmaceuticals for
cardiovascular disease.

16 PRA International, Encorium Group, Inc., OCT Clinical Trials, OncQuest Laboratories Ltd.
and Cros NT srl. Although Medpace, Inc. is headquartered in Cincinnati, Ohio, the company
overview does not list the United States as a country where it has an operational presence.
Serial No. 85761716
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field of cardiology which include pharmaceuticals, medical devices, and surgical
techniques:17
1. “Aptiv Solutions, Inc. (Aptiv Solutions) is a contract research organization. It
offers clinical trial services to the biopharmaceutical and medical device
companies. The company's services include adaptive trials, clinical trials,
translational research services, pharmacovigilance, clinical staffing,
regulatory services and operational support. Aptiv Solutions's [sic] therapeutic
service areas include cardiovascular disease, dermatology, oncology,
respiratory and rare diseases.”18
2. “Carolinas Medical Center-Lincoln … provides a host of medical services to Tar
Heelers that range from general acute care to home health, imaging, surgery,
and heart care … The 100-bed medical center also offers … clinical trials
focused on a range of maladies including cardiology, oncology, and pediatric
ailments.”

17 “Therapeutic” is defined as “relating to therapeutics or to treating, remediating, or curing
a disorder or disease.” Stedman’s Medical Dictionary (stedmansonline.com). The Board
may take judicial notice of dictionary definitions, including definitions in technical
dictionaries, translation dictionaries and online dictionaries which exist in printed format or
that have regular fixed editions. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23
(TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed
format or have regular fixed editions); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4
(TTAB 2011) (Board may take judicial notice of dictionaries, including online dictionaries
which exist in print format). Therefore treating, remediating, or curing cardiovascular
disease may include pharmaceuticals, medical devices and surgical techniques.
18 The Trademark Examining Attorney submitted excerpts from the AptivSolutions website
(aptivsolutions.com) advertising the company’s contract research organization services “for
cardiovascular drugs, biologics, medical devices, surgical procedures, gene therapy and
immune modulation treatments.” With respect to techniques, the website specifically
references “Surgeries (such as) angioplasty (PCTA) Coronary Artery Bypass Graft (CABG)”
and “Stents (Coronary/Peripheral/Endovascular/Drug Eluting).”
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3. “PAREXEL International Corporation (Parexel) is a biopharmaceutical service
provider with focus on providing solutions for the biopharmaceutical product
lifecycle management. It provides services to pharmaceutical, biotechnology,
and medical device industries across the world. … The company performs
services in connection with trials in various therapeutic areas which include
Oncology, Gastroenterology, Obstetrics/Gynecology, Neurology, Cardiology,
Infectious Diseases, Endocrinology/Metabolism, Allergy/Immunology,
Orthopedics, Pediatrics, Psychiatry, Pulmonology, Rheumatology,
Dermatology, Genitourinary, Ophthalmology, and Transplantation. … Its
strategic compliance consulting group offers a range of specialized clinical and
manufacturing consulting services for clients in the pharmaceutical,
biotechnology, and medical device industry.”
4. “Radiant Research is aglow with success. The contract research organization
(CRO) conducts late phase human clinical trials for drugmakers [sic] and
medical device makers at a network of some 25 research facilities that it owns
across the US. Its services run the gamut from early Phase IIb trials all the
way to post-approval Phase IV testing for new therapies in areas including
cardiology, infectious diseases, asthma and allergies, and women's health.
Radiant recruits the participants for the trials as well as gathers data for the
companies; it also provides study design, consulting, and analysis services.
Clients include major pharmaceutical companies, as well as biotech and
medical device companies.”
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5. “You put up the compounds, Synarc puts up the trials. The biomedical testing
and contract research organization provides medical imaging, patient
recruitment, and biomechanical marker services for clinical trials conducted
by drug development companies around the globe. Synarc operates clinical
research centers in North America, Europe, and Asia. The company has a main
focus on neurological research, including Alzheimer's disease studies; other
clinical areas include oncology, cardiovascular disease, orthopedics, infectious
disease, arthritis, and osteoporosis. Synarc also conducts studies on medical
devices.”
6. “Theorem Clinical Research quantifies its client’s medical theories. The
company … is a contract research organization (CRO) offering drug
development services, from Phase I to Phase IV clinical trials, to drug and
medical device companies worldwide. The CRO has special expertise in the
research areas including cardiovascular care, dermatology, geriatrics,
infectious disease, metabolism, oncology, and vaccines. … As an independent
company, the firm is focused on providing a full range of clinical trials and
technical services for medical devices, pharmaceuticals, and biotech drugs in a
variety of therapeutic areas, across every stage of development.”
7. “Pharmaceutical Product Development, Inc. (PPD), incorporated in January
1989, is a global contract research organization providing drug discovery,
development and lifecycle management services. The Company's clients and
partners include pharmaceutical, biotechnology, medical device, academic,
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non-profit and government organizations. Its development services include
preclinical drug discovery services, programs, Phase I through Phase IV
clinical development services and post-approval services, as well as
bioanalytical, good manufacturing practices (cGMP), global central laboratory
and vaccines and biologics laboratory services. In addition, for marketed drugs,
biologics and devices, it offers support, such as medical information, patient
compliance programs, patient and disease registry programs, product safety
and pharmacovigilance, standard response document development,
observational studies, Phase IV monitored studies and prescription-to-over-
the-counter (Rx to OTC), programs. … The Company provides global clinical
supply management services for study treatments (drugs, biologics or devices)
being evaluated within clinical trials.”
8. “Premier Research focuses its clinical research on analgesia, neuroscience,
oncology, cardiovascular disease, medical devices and pediatric clinical
research. Its clinical team operates across Western, Central and Eastern
Europe and North America. Premier Research is headquartered in
Wokingham, the UK. Premier Research seeks to provide top quality, solutions-
driven, specialized outsourced services for the global healthcare community.
The business strategy of the company envisages building its position in the
marketplace through market expansion, strong partner relationships,
strategic alliances and acquisitions.”
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9. “VirtualScopics Inc. is a provider of quantitative imaging for clinical trials
serving the pharmaceutical, biotechnology and medical device industries. The
Company has developed a software platform for analysis and modeling of both
structural and functional medical images. This platform provides information
about the biological activity of drugs and devices in clinical trial patients.
VirtualScopics is an imaging core lab providing central reads and quantitative
imaging solutions for drug and medical device clinical trials for the areas of
oncology, rheumatoid arthritis, osteoarthritis, neurology, and cardiovascular
studies utilizing MRI, PET, CT, Ultrasound, and X-ray imaging modalities.
The Company's image-based measurement and visualization tools enable
automated and reproducible measurement of minute changes that occur in
anatomic structures in musculoskeletal, oncological, cardiological and
neurological diseases.”
10. “KLIFO A/S (KLIFO) is a contract research and contract manufacturing
organization. The organization through clinical trial supply, clinical trial
services, drug development strategies and regulatory requirements
contributes in the development of medicinal products and medical devices. It
provides services such as clinical trials, supply of products for clinical trials
and drug development counseling. KLIFO's clinical research includes
feasibility and site selection, application to authorities and ethics committees,
protocol preparation, project management, monitoring, medical writing and
pharmacovigilance. The organization offers services in the areas of cardiology,
Serial No. 85761716
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diabetes, gastroenterology, hematology, immunology, infections, oncology,
neurology, psychiatry and respiratory disorders. It provides international
services, conducts clinical studies in Europe and North America. The
organization works on development projects from late pre-clinical development
through clinical development to marketing authorization.”
In her November 1, 2013 Office Action, the Trademark Examining Attorney
submitted excerpts from the following websites to show that companies conduct
clinical trials in the cardiovascular field in connection with pharmaceuticals, devices,
and/or techniques:
1. Cristiana Care Health System (cristianacare.org) advertises its participation
in clinical research “to identify new treatments for a number of diseases”
including cardiovascular research. “Much of the clinical research we undertake
is as part of large, national, cooperative studies to identify new treatments for
a number of diseases.”19
2. CliniLabs (clinilabs.com) advertises its participation in clinical trials in the
numerous “therapeutic areas,” including cardiology.
3. Criterium website (criterium.com) advertising its therapeutic contract
research organization services in connection with “a variety of chemical
entities, medical devices, delivery systems, and dosage forms,” including the
field of cardiovascular diseases.

19 “New treatments” is broad enough to encompass techniques.
Serial No. 85761716
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4. DSP Clinical website (dspclinical.com) advertising its therapeutic expertise in
clinical trial services in the field of drugs and medical devices, including the
field of cardiovascular disease.
5. DukeHealth.org advertises its participation in clinical trials where
participants “can gain access to new research treatments” in the multiple fields
including heart services and vascular diseases, including cardiac
rehabilitation.
6. inVentive Health Clinical website (inventivhealthclinical.com) advertising its
clinical trial services for “pharmaceutical, biotechnology, generic drug, and
medical devices companies,” including, inter alia, in the field of card cardiology.
7. Norton Healthcare website (nortonhealthcare.com) advertising, inter alia,
cardiovascular clinical trials “to evaluate new medical treatments and find
whether existing treatments are effective for other conditions.”
8. Oklahoma University Medicine website (oumedicine.com) advertising its
clinical trial program, including the field cardiovascular medicine.
9. SynteractHCR website (synteracthcr.com) advertising that it is a “full-service
CRO [contract research organization] with a more than two decade track
record of success supporting biotechnology, medical device and pharmaceutical
companies in all phases of clinical development,” including relating to
cardiovascular treatments.
In the November 1, 2013 Office Action, the Trademark Examining Attorney
submitted excerpts from the websites listed below in which it is ambiguous as to
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whether the entities conducted clinical trials in the cardiovascular field in connection
with pharmaceuticals and devices because the websites did not explicitly state that
they conducted both pharmaceutical and medical device research:
1. Ethos (ethosus.com) advertises its participation in “therapeutic clinical trial
expertise across a wide variety of indications” including cardiovascular.
2. INC Research (incresearch.com) advertises it participation in therapeutic
clinical trials across a wide variety of indications including cardiovascular (e.g.,
“specialized recruitment strategies and safety monitoring or large
cardiovascular outcome trials”).
3. PSI (psi-cro.com) advertises its participation in cardiovascular studies
(“experience across a broad range of indications and an investigator network
of more than 6,000 cardiologists”).
4. PPD (ppdi.com) advertises its participation in therapeutic clinical trials in
most major medical fields, including cardiology.
This evidence shows that the same companies render clinical trial testing services
in the field of pharmaceuticals, medical devices and surgical techniques in the
cardiovascular field.
Applicant asserts that the respective services are unlikely to be confused.20
Moreover, in all of the documents the Examining Attorney
attached to his office actions, he did not cite to a single,
specific document that suggests that the relevant services
are related in any manner, let alone a meaningful manner.
He did not cite to a single, specific document showing that
Registrant’s pharmaceutical preparations for human use

20 11 TTABVUE 16.
Serial No. 85761716
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are capable of measuring physiology in percutaneous
coronary intervention procedures. In fact, Applicant’s
recitation makes clear that it is using a pressure guide wire
to measure the physiology in such procedures, not
pharmaceutical preparations – even if such preparations
could be used to measure such physiology, which Applicant
has testified they cannot.21
In addition, the Examining Attorney did not cite to a single,
specific document to show the converse, that measuring
physiology using a pressure guide wire in percutaneous
coronary intervention procedures would be capable of
assisting in any way in the study of pharmaceutical
preparations for human use.22
However, the analysis regarding the similarity or dissimilarity and nature of the
services is not whether the relevant public would confuse the services rendered by
Applicant and Registrant, but rather whether there is a likelihood of confusion as to
the source of these services. In re Cook Medical Technologies LLC, 105 USPQ2d 1377,
1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). As indicated above,
the evidence submitted by the Trademark Examining Attorney shows that the same
companies render clinical trial testing services in the field of pharmaceuticals,
medical devices, and techniques including clinical trials in the cardiovascular field.
Applicant also argues that the Trademark Examining Attorney failed to submit
any evidence to show that the Applicant’s services and Registrant’s services emanate
from a single source under a single mark.23

21 11 TTABVUE 18.
22 11 TTABVUE 18-19.
23 11 TTABVUE 16.
Serial No. 85761716
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[I]n all of the documents the Examining Attorney attached
to his office actions, he did not cite to a single, specific
document to support the proposition that a single company
offers Applicant’s specific services and the Registrant’s
specific services under a single mark.24
However, the website evidence submitted by the Trademark Examining Attorney
shows that the entities that render clinical trial testing services in the field of
pharmaceuticals and medical devices and techniques, including clinical trials in the
cardiovascular field, offer both services under use the same marks or names. The
Norton Healthcare (nortonhealthcare.com), AptivSolutions (aptivsolutions.com), and
Criterium (criterium.com) webpages displayed below are representative:

24 11 TTABVUE 17.
Serial No. 85761716
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Serial No. 85761716
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Serial No. 85761716
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In view of the forgoing, we find that Applicant’s clinical trial testing services for
comparing invasive diagnostic angioplasty techniques used by interventional
Serial No. 85761716
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cardiologists and Registrant’s “conducting clinical trials and clinical studies relating
to pharmaceutical preparations for human use” are related.
D. Established, likely-to-continue channels of trade.
According to Al Kau, Applicant’s Vice President of Intellectual Property, Applicant
developed a new technique called the instantaneous wave-free ratio (“iFR
measurement”) that has been approved for use in this indication [narrowing of
coronary arteries].”25
[Applicant’s] DEFINE study compares clinical outcomes of
patients whose treatment has been guided by the iFR
measurement to those whose treatment has been guided by
the FFR measurement [fractional flow reserve]. If the iFR
measurement is found to provide the same clinical
outcomes as the FFR measurement, its adoption will
permit the clear benefits of this approach of identifying the
coronary narrowings that really need treatment, making it
applicable to a much larger patient population, and further
improving healthcare costs.26
Applicant contends that its services are rendered for the benefit of interventional
cardiologists while Registrant’s services are provided for the benefit of those
prescribing pharmaceutical products.27 Applicant pointed out that “[w]hile all
interventional cardiologists are cardiologists, not all cardiologists are interventional
cardiologists.”28 A cardiologist is a “physician specializing in cardiology.”29

25 4 TTABVUE 41.
26 4 TTABVUE 41-42.
27 11 TTABVUE 21.
28 14 TTABVUE 8.
29 Stedman’s Medical Dictionary (stedmansonline.com). The Board may take judicial
notice of dictionary definitions, including definitions in technical dictionaries, translation
dictionaries and online dictionaries which exist in printed format or that have regular fixed
editions. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may
Serial No. 85761716
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“Cardiology” is “the medical specialty concerned with the diagnosis and treatment of
heart disease.”30 “Cardiologists provide the continuing care of patients with
cardiovascular disease, performing basic studies of heart function and supervising all
aspects of therapy, including the administration of drugs to modify heart functions.”31
As diagnostic capabilities have grown, so have treatment
options. Drugs have been developed by the pharmaceutical
industry to treat heart failure, angina pectoris, coronary
heart disease, hypertension (high blood pressure),
arrhythmia, and infections such as endocarditis. In
parallel with advances in cardiac catheterization and
angiography, surgeons developed techniques for allowing
the blood circulation to bypass the heart through heart-
lung machines, thereby permitting surgical correction of all
manner of acquired and congenital heart diseases. Other
advances in cardiology include electrocardiographic
monitors, pacemakers and defibrillators for detecting and
treating arrhythmias, radio-frequency ablation of certain
abnormal rhythms, and balloon angioplasty and other
nonsurgical treatments of blood vessel obstruction. It is
expected that discoveries in genetics and molecular biology
will further aid cardiologists in their understanding of
cardiovascular disease.32
Accordingly, cardiologists may use pharmaceuticals to treat cardiovascular diseases.
Since interventional cardiologists are cardiologists, interventional cardiologists may

take judicial notice of online dictionaries that exist in printed format or have regular fixed
editions); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4 (TTAB 2011) (Board may
take judicial notice of dictionaries, including online dictionaries which exist in print format).
30 Id.
31 Cardiology, Encyclopaedia Britannica (Britannica.com). The Board may also take
judicial notice of encyclopedia entries, standard reference works and of commonly known
facts. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.24 (TTAB 2013) (judicial notice
taken of entry for “tea” from Encyclopedia Britannica); In re Broyhill Furniture Industries
Inc., 60 USPQ2d 1511, 1514 n.5 (TTAB2001) (judicial notice taken of The Encyclopedia of
Furniture, The Complete Guide To Furniture Styles, and Seng Furniture Facts showing that
Danish, Scandinavian and Mediterranean are styles of furniture).
32 Id.
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also prescribe pharmaceuticals in addition to surgical intervention to treat
cardiovascular disease. Because interventional cardiologists are the target of
Applicant’s services, and some of them, such as those who are with research
institutions or hospitals or universities, may also be involved in structuring clinical
trials involving to pharmaceuticals, we find that there are overlapping consumers for
Applicant’s conducting clinical trials for comparing invasive diagnostic angioplasty
techniques used by interventional cardiologists and Registrant’s conducting clinical
trials and clinical studies relating to pharmaceutical preparations for human use.”
E. The conditions under which and buyers to whom sales are made, i.e., “impulse”
vs. careful, sophisticated purchasing.
By virtue of the nature of the services, clinical trial testing services, the relevant
consumers will exercise a high degree of care. Regardless, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as in this appeal involving identical marks and related services. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000); In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers
… are not infallible.”)). See also Kos Pharmaceuticals Inc. v. Andrx Corp., 369 F.3d
700, 70 USPQ2d 1874, 1887-88 (3d Cir. 2004) (“These trained professionals [doctors,
nurses and pharmacists] may be expected to be knowledgeable about, and to exercise
care in distinguishing between, medicines. We have emphasized a countervailing
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concern that weighs against allowing the expertise of physicians and pharmacists to
trump other factors in assessing the likelihood of confusion in drug cases …
[P]hysicians are not immune from confusion or mistake…. There is no reason to
believe that medical expertise as to products will obviate confusion as to source or
affiliation or other factors affecting goodwill.” (citations omitted)). We find that the
identity of the marks and the relatedness of the services sold thereunder outweigh
any sophisticated purchasing decision, especially in the absence of specific evidence
relating to the degree of care in making the decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods
and marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods).
F. Balancing the factors.
We have considered of all of the evidence of record and all of the arguments of
Applicant and the Trademark Examining Attorney (including evidence and
arguments not specifically discussed in this opinion) as it pertains to the relevant du
Pont likelihood of confusion factors. The evidence as a whole leads us to conclude that
a likelihood of confusion exists. Although the high degree of care when selecting the
services of the parties weighs in Applicant’s favor, the marks are identical, the
services are related and they are rendered to some of the same consumers. We have
considered all of Applicant's arguments to the contrary, but we are not persuaded
thereby.
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We find that Applicant’s mark DEFINE for conducting clinical trials for
comparing invasive diagnostic angioplasty techniques used by interventional
cardiologists is likely to cause confusion with the registered mark DEFINE for
“medical and scientific research, namely, conducting clinical trials and clinical
studies relating to pharmaceutical preparations for human use.”
Decision: The refusal to register Applicant’s mark DEFINE is affirmed.