THIS OPINION IS NOT A
`PRECEDENT OF
`
`THE T.T.A.B.
`
`Mailed: September 21, 2007
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Nexense, Ltd.
`________
`
`Serial No. 78465875
`_______
`
`Kenneth W. Farak of Renner, Otto, Boisselle & Sklar for
`Nexense, Ltd.
`
`Daniel Capshaw, Trademark Examining Attorney, Law Office
`110 (Chris A. F. Pedersen, Managing Attorney)
`_______
`
`Before Drost, Cataldo and Bergsman,
`Administrative Trademark Judges.
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
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`An application was filed by Nexense, Ltd. to register
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`on the Principal Register the mark NEXAVER in standard
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`character form for the following goods, as amended:
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`“Medical devices, namely respiration sensors, pulse
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`sensors, blood pressure sensors” in International Class 10.1
`
`
`1 Application Serial No. 78465875 was filed on August 11, 2004,
`based on applicant’s assertion of its bona fide intent to use the
`mark in commerce in connection with the goods, and claiming
`priority under Section 44(d) of the Trademark Act. Applicant
`subsequently perfected a Section 44(e) basis for application by
`submitting a copy of its foreign registration.
`
`
`PRECEDENT OF
`
`THE T.T.A.B.
`
`Mailed: September 21, 2007
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Nexense, Ltd.
`________
`
`Serial No. 78465875
`_______
`
`Kenneth W. Farak of Renner, Otto, Boisselle & Sklar for
`Nexense, Ltd.
`
`Daniel Capshaw, Trademark Examining Attorney, Law Office
`110 (Chris A. F. Pedersen, Managing Attorney)
`_______
`
`Before Drost, Cataldo and Bergsman,
`Administrative Trademark Judges.
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`An application was filed by Nexense, Ltd. to register
`
`on the Principal Register the mark NEXAVER in standard
`
`character form for the following goods, as amended:
`
`“Medical devices, namely respiration sensors, pulse
`
`sensors, blood pressure sensors” in International Class 10.1
`
`
`1 Application Serial No. 78465875 was filed on August 11, 2004,
`based on applicant’s assertion of its bona fide intent to use the
`mark in commerce in connection with the goods, and claiming
`priority under Section 44(d) of the Trademark Act. Applicant
`subsequently perfected a Section 44(e) basis for application by
`submitting a copy of its foreign registration.
`
`
`
`Ser No. 78465875
`
`The trademark examining attorney refused registration
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`under Section 2(d) of the Trademark Act on the ground that
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`applicant’s mark, as used in connection with its goods, so
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`resembles the mark NEXAVAR, previously registered on the
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`Principal Register in typed or standard character form for
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`“pharmaceutical preparations for the treatment of
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`cardiovascular diseases, central nervous system diseases,
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`cancer, respiratory and infectious diseases, diagnostic
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`reagents adapted for medical use” in International Class 5,2
`
`as to be likely to cause confusion.
`
`When the refusal was made final, applicant appealed.
`
`Applicant and the examining attorney filed briefs on the
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`issue under appeal. In addition, applicant filed a reply
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`brief.
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`Likelihood of Confusion
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`Our determination of the issue of likelihood of
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`confusion is based on an analysis of all of the probative
`
`facts in evidence that are relevant to the factors set
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`forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
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`1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
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`Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
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`1201, 1203 (Fed. Cir. 2003). In any likelihood of
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`
`2 Registration No. 2745627 issued on August 5, 2003.
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`2
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`Ser No. 78465875
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`confusion analysis, however, two key considerations are the
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`similarities between the marks and the similarities between
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`the goods and/or services. See Federated Foods, Inc. v.
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`Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
`
`1976). See also In re Dixie Restaurants Inc., 105 F.3d
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`1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
`
`The Marks
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`We first consider whether applicant’s mark and
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`registrant’s mark are similar or dissimilar when viewed in
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`their entireties in terms of appearance, sound, connotation
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`and overall commercial impression. See Palm Bay Imports,
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`Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
`
`F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In this case,
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`applicant’s mark, NEXAVER, is nearly identical in
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`appearance and sound to the registered mark NEXAVAR. The
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`marks differ by a single vowel that forms the penultimate
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`letter of each mark. Such difference does little to
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`diminish the otherwise identical appearance of the marks.
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`As to sound, the substitution of the letter “e” in
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`applicant’s mark for the letter “a” in that of registrant
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`does not necessarily mean that the marks will be pronounced
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`differently. It is well settled that there is no correct
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`pronunciation of a trademark. See In re Belgrade Shoe, 411
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`F.2d 1352, 162 USPQ 227 (CCPA 1969) and Interlego AG v.
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`3
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`Ser No. 78465875
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`Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
`
`2002). See also In re Microsoft Corp., 68 USPQ2d 1195
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`(TTAB 2003) (it is not possible to control how consumers
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`will vocalize marks). Particularly in cases such as this
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`in which neither mark is a recognized term having an
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`accepted pronunciation, it is possible that consumers will
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`pronounce applicant’s mark in an identical manner to that
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`of registrant’s mark. In view of the nearly identical
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`nature of NEXAVER and NEXAVAR in terms of appearance and
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`sound, the marks convey highly similar commercial
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`impressions.
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`We are not persuaded by applicant’s argument that
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`because its NEXAVER mark “is the combination of Applicant’s
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`name and the word ‘saver’ as in life saver” (brief, p. 7)
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`the mark when viewed in relation to its goods “creates the
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`connotation that Applicant’s sensors save lives” (Id).
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`Applicant simply provides no evidence that consumers
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`encountering its mark on its identified goods would derive
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`either that or any other connotation therefor. Neither
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`does applicant provide any evidence to support its
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`suggestion that “NEX” in registrant’s NEXAVAR mark suggests
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`the word “next” or that registrant’s goods connote “a ‘next
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`4
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`Ser No. 78465875
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`generation’ drug for treating diseases” (brief, p. 8).3 In
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`short, applicant’s assertions regarding the connotations of
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`its mark and that of registrant are speculative and
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`unsupported by the record in this case. Due to the nearly
`
`identical nature of the NEXAVER and NEXAVAR marks, we find
`
`that to the extent the marks convey a particular
`
`connotation, those connotations are likely to be highly
`
`similar.
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`Finally, there is no evidence of record that NEXAVAR
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`is anything but a strong, distinctive mark that is entitled
`
`to a broad scope of protection.
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`Thus, despite the minor difference in spelling, the
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`marks NEXAVER and NEXAVAR are nearly identical in
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`appearance, sound, connotation and commercial impression.
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`Accordingly, this du Pont factor favors a finding of
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`likelihood of confusion.
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`The Goods
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`Turning now to our consideration of the recited goods,
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`we must determine whether consumers are likely to
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`mistakenly believe that they emanate from a common source.
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`It is not necessary that the goods at issue be similar or
`
`competitive, or even that they move in the same channels of
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`
`3 We note, for instance, that neither mark appears to have an
`accepted definition or meaning.
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`5
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`Ser No. 78465875
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`trade, to support a holding of likelihood of confusion. It
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`is sufficient instead that the respective goods are related
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`in some manner, and/or that the conditions and activities
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`surrounding the marketing of the goods are such that they
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`would or could be encountered by the same persons under
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`circumstances that could, because of the similarity of the
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`marks, give rise to the mistaken belief that they originate
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`from the same producer. See In re International Telephone
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`& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
`
`In this case, applicant’s goods include sensors used
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`to measure respiration, pulse and blood pressure.
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`Registrant’s goods include pharmaceutical preparations
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`used, inter alia, to treat cardiovascular disease and
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`respiratory disease. “Cardiovascular” is defined as “of,
`
`pertaining to, or affecting the heart and blood vessels.”4
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`“Respiratory” is defined as “pertaining to or serving for
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`respiration.”5 We hereby take judicial notice of these
`
`definitions. See University of Notre Dame du Lac v. J.C.
`
`Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982);
`
`aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Pulse
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`and blood pressure are, of course, cardiovascular
`
`functions. Thus, as identified both applicant’s and
`
`
`4 Random House Unabridged Dictionary, © Random House, Inc. 2006.
`5 Id.
`
`6
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`Ser No. 78465875
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`registrant’s goods are used in the fields of cardiovascular
`
`and respiratory care. Specifically, applicant’s sensors
`
`may be used to measure the same respiratory, pulse and
`
`blood pressure values that are affected by registrant’s
`
`cardiovascular and respiratory medicines. As such,
`
`applicant’s goods as identified are related to those of
`
`registrant.
`
`In addition, the examining attorney has made of record
`
`a number of use-based third-party registrations which show
`
`that various entities have adopted a single mark for both
`
`pharmaceutical preparations used to treat various
`
`conditions as well as medical devices used to address the
`
`same conditions. See, for example:
`
`Registration No. 2639224 for, inter alia,
`pharmaceutical preparations and formulations for
`the treatment of respiratory disorders and
`medical apparatus and devices, namely, finger
`control adapter for medical nebulizers, nebulizer
`sets comprised of a nebulizer, a tee, a
`mouthpiece, a flexible tube, and a two-meter
`connection tube sold as a unit for medical use;
`
`Registration No. 1902350 for, pharmaceutical
`preparations, namely, inhalant decongestants and
`electric vaporizers for the inhalation of
`medicaments, and electyrically [sic] activated
`heating pads for medical purposes;
`
`Registration No. 2505787 for, pharmaceutical
`preparations, namely, respiratory medications and
`insulin and medical and healthcare supplies,
`namely, respiratory medication delivery devices,
`glucometers, lancets, blood hemoglobin testing
`
`7
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`
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`Ser No. 78465875
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`supplied, namely blood hemoglobin testing kits;
`and
`
`Registration No. 2843548 for, pharmaceutical
`preparations, namely, analgesics, hormones,
`psychotropics, anti-infectives, anti-
`inflammatory, and anti-cancer agents for use in
`the treatment of disease via application to the
`lungs and medical apparatus, namely,
`electronically-based devices used to deliver
`drugs and biologics to the lungs.
`
`Third-party registrations which individually cover a number
`
`of different items and which are based on use in commerce
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`serve to suggest that the listed goods and/or services are
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`of a type which may emanate from a single source. See In
`
`re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
`
`1993). In this case, the evidence of record supports a
`
`finding that the same marks are used to identify both
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`pharmaceutical preparations and medical devices in numerous
`
`fields.
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`The identification of applicant’s goods as well as
`
`those of registrant and the above evidence demonstrate the
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`related nature of the goods at issue, and this du Pont
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`factor also favors a finding of likelihood of confusion.
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`
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`
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`Channels of Trade
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`Furthermore, it is settled that in making our
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`determination regarding the relatedness of the parties’
`
`goods, we must look to the goods as identified in the
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`involved application and cited registration. See Octocom
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`8
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`Ser No. 78465875
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`Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
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`937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
`
`is legion that the question of registrability of an
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`applicant’s mark must be decided on the basis of the
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`identification of goods set forth in the application
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`regardless of what the record may reveal as to the
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`particular nature of an applicant’s goods, the particular
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`channels of trade or the class of purchasers to which the
`
`sales of goods are directed.”) See also Paula Payne
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`Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
`
`76, 77 (CCPA 1973) (“Trademark cases involving the issue of
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`likelihood of confusion must be decided on the basis of the
`
`respective descriptions of goods.”) In this case, there
`
`are no restrictions in either applicant’s or registrant’s
`
`identification of goods as to the channels of trade in
`
`which the goods may be encountered, or type or class of
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`customer to which the services are marketed. Accordingly,
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`both applicant’s and registrant’s goods are presumed to
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`move in all normal channels of trade and be available to
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`all classes of potential consumers, including consumers of
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`each others’ goods. See In re Elbaum, 211 USPQ 639, 640
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`(TTAB 1981). In addition, the examining attorney has
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`introduced evidence in the form of “screen shots” from
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`Internet web sites suggesting that both pharmaceutical
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`9
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`Ser No. 78465875
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`preparations and medical devices move in the same channels
`
`of trade and are available from the same retail outlets.
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`Conditions of Sale
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`Another du Pont factor discussed by applicant and the
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`examining attorney is that of the conditions of sale.
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`Applicant asserts that both its goods and those of
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`registrant “are administered under highly controlled
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`conditions” (brief, p. 10) by physicians and pharmacists,
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`who are careful and sophisticated professionals. However,
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`the marks NEXAVER and NEXAVAR are so similar that even
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`careful purchasers are likely to assume that the marks
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`identify goods emanating from a single source. Even
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`sophisticated purchasers are not necessarily knowledgeable
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`in the field of trademarks or immune from source confusion.
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`See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
`
`Finally, applicant argues that the failure of the
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`owner of the cited registration, a European company, to
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`oppose registration of applicant’s foreign registration,
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`“is a strong indicator that confusion is not likely”
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`(brief, p. 11). However, applicant cites to no authority,
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`nor are we aware of any, to support its contention that the
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`actions of the owner of a registration cited as a bar to
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`registration under Section 2(d) with regard to an
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`applicant’s foreign registration has any bearing on our
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`10
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`Ser No. 78465875
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`determination of likelihood of confusion in an ex parte
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`appeal.
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`In light of the foregoing, and resolving any doubt as
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`we must in favor of the prior registrant, we find that a
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`likelihood of confusion exists between the applied-for
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`NEXAVER mark and the NEXAVAR mark in the cited
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`registration. See Hewlett-Packard Co. v. Packard Press
`
`Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
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`In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
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`1025 (Fed. Cir. 1988).
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`Decision: The refusal of registration is affirmed.
`
`
`
`11
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