Xomed Surgical Products, Inc.

Trademark Trial and Appeal Board

Apr 30, 2001

No. 75512827 (T.T.A.B. Apr. 30, 2001)

4/30/01
Paper No. 12
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Xomed Surgical Products, Inc.
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Serial No. 75/512,827
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Andrew J. Aldag of Epstein, Edell, Shapiro & Finnan, LLC
for Xomed Surgical Products, Inc.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Xomed Surgical Products, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register P.C.S. as a trademark for “suction cutting
instruments for use in head and neck surgery and
accessories and parts therefor.” The application was filed
on June 30, 1998, based on an asserted intention to use the
mark in commerce. Registration has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/512,827
2
the ground that applicant’s mark so resembles the mark PCS,
registered for “automated blood collection and separation
units for a wide variety of medical uses,”1 that, if used on
applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs.2 An oral hearing was not requested.
We affirm the refusal of registration.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, they are virtually
identical. The cited mark is PCS. Applicant’s mark is for
the same letters in the same order; the only difference is
that applicant’s mark contains periods between the letters.
1 Registration No. 1,505,712, issued September 27, 1988; Section
8 affidavit accepted; Section 15 affidavit filed.
2 With its brief applicant submitted copies of pages from the
registrant’s website. Although the Examining Attorney pointed
out that this evidence is untimely, he specifically waived any
objection to it. Accordingly, we have considered this material
as being stipulated into the record.
Ser. No. 75/512,827
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Accordingly, the marks are identical in pronunciation, and
virtually identical in appearance. The fact that
applicant’s mark contains periods and the cited mark does
not is not likely to be noticed by consumers. Moreover,
even if consumers did notice this very minor difference,
they are more likely to assume that the two versions are
different presentations of the same mark, rather than that
they are different marks indicating origin of the goods in
different sources.
Applicant also contends that the marks have different
connotations, with applicant’s mark, because of the
periods, being seen as initials, while the cited mark would
be viewed as an acronym for “plasma collection system.” We
are not persuaded by this argument. The cited mark may
just as easily be viewed as initials or a monogram despite
the absence of periods between the letters. Further,
although the Examining Attorney has characterized both
marks as acronyms, there is no evidence to show that PCS is
an acronym for anything. While a close reading of the
registrant’s website reveals the statement, in the last
paragraph on the page, that its PCS machine is an automated
plasma collection system, we cannot conclude from this that
consumers would view the mark PCS as an acronym for “plasma
collection system.” Applicant has not submitted any
Ser. No. 75/512,827
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dictionary evidence or literature which shows that PCS has
such a recognized meaning. Accordingly, we find that
applicant’s mark and the cited mark to have the same
connotation, that of the letters P-C-S per se.
This brings us to a consideration of the goods. It is
well established that it is not necessary that the goods of
the parties be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same person under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. In re International Telephone & Telephone Corp.,
197 USPQ 910, 911 (TTAB 1978).
In this case, we acknowledge that applicant’s and the
registrant’s goods are specifically different. However, we
do not agree with applicant’s assertion that the only
similarity in the goods is that they are both in the
medical or health care industry. They are, in addition,
both used in hospital operating rooms, and both are used in
connection with surgical procedures. The registrant’s
Ser. No. 75/512,827
5
website materials submitted by applicant show that
registrant’s automated blood collection units can be used
for surgical blood salvage. Other materials made of record
by the Examining Attorney discuss products which are used
to salvage blood shed before, during or after surgery.
(“In the operating room the Cell Saver Autologous Blood
Recovery System salvages shed blood suctioned from the
surgical wound.”) Further, applicant’s identified suction
cutting instruments could be used to suction blood during
operations. Blood would be collected as part of the
suctioning, thus reinforcing the similarity of applicant’s
product to the identified blood collection units.
Applicant has asserted, based on the registrant’s
website materials, that the registrant “only appears to use
the PCS mark in relation to plasma collection systems, and
not blood recovery systems.” Brief, p. 6. However, as the
Examining Attorney has pointed out, in determining the
issue of likelihood of confusion we must consider the goods
as they are identified in the respective registration and
application, and not on what the evidence may show the
goods to be. Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Ser. No. 75/512,827
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As we said above, we recognize that the goods
themselves are different. However, both are used in
performing operations, and both have the similar
characteristic of collecting blood, albeit the collecting
of the blood is more a by-product of the use of applicant’s
suction cutting instruments while it is a primary purpose
of the registrant’s. In view of these similarities, we
find that the goods are sufficiently related that, if sold
under the virtually identical marks at issue herein,
confusion is likely to result.
The Examining Attorney has also submitted evidence
that blood collection units and surgical instruments are
sold by the same companies. Applicant points out that the
companies listed in the Examining Attorney’s materials are
suppliers of a wide range of medical products, and are not
the manufacturers of them. We agree with applicant that
this evidence does not prove that companies manufacture
both blood collection units and surgical instruments.
However, it is sufficient to show that the goods are sold
by the same companies, such that a hospital purchasing a
blood collection unit would also see surgical instruments
in the same catalog or website, and might purchase both at
the same time.
Ser. No. 75/512,827
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Applicant also points to the duPont factor of “the
variety of goods on which a mark is or is not used,” and
asserts, based on the information in the registrant’s
website, that registrant uses PCS only as a product mark
for a single product. We, of course, have limited
information about the registrant and its uses of its PCS
mark in this ex parte proceeding. Moreover, the
registrant’s registration is not limited to a single
product; rather, the identification is for “automated blood
collection and separation units for a wide variety of
medical uses.” As explained previously, applicant cannot
restrict a registrant’s identification even if it has
concrete evidence of the registrant’s actual use.
We should also point out that the fact that a
registrant or opposer may use a mark as a house mark rather
than a product mark serves to broaden its scope of
protection, such that likelihood of confusion may be found
even if the applicant’s goods are only tangentially related
to the registrant’s/opposer’s goods, on the theory that
consumers will be likely to assume, because of the variety
of goods on which the registrant/opposer uses its mark,
that the registrant/opposer has expanded the use of its
mark to the applicant’s identified goods. In this case,
however, the blood collection units identified in the cited
Ser. No. 75/512,827
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registration are sufficiently related to applicant’s
identified goods that confusion is likely even if the
registrant’s mark is used only as a product mark. We would
also point out that the cited mark appears to be a strong
mark; there is no evidence in this record of third-party
registration or use of PCS marks in the medical field.
In reaching our conclusion that confusion is likely,
we have given due weight to the fact that these are medical
products which would be purchased with care by
sophisticated purchasers. Again, however, because of the
near identity of the marks, and the related nature of the
goods, as discussed above, we think that even careful and
sophisticated purchasers are likely to be confused.
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, it is well settled that
such doubt must be resolved against the newcomer or in
favor of the prior user or registrant. In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973). Here, applicant, with
its intent-to-use-based application, is obviously the
newcomer.
Decision: The refusal of registration is affirmed.