From: Benjamin, Sara
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`Sent: 2/6/2014 7:27:57 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 85074999 - DEXTERITY - N/A - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 85074999.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`*85074999*
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` U.S. APPLICATION SERIAL NO. 85074999
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` MARK: DEXTERITY
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` CORRESPONDENT ADDRESS:
` DAVID B KIRSCHSTEIN
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`GENERAL TRADEMARK INFORMATION:
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` KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERON
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`http://www.uspto.gov/trademarks/index.jsp
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` 425 5TH AVENUE FLOOR 5
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` NEW YORK, NY 10016-2223
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`TTAB INFORMATION:
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` APPLICANT: Pedifix, Inc.
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` CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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` CORRESPONDENT E-MAIL ADDRESS:
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` dbk@kirschsteinlaw.com
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`http://www.uspto.gov/trademarks/process/appeal/index.jsp
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`The applicant, Pedifix, Inc., has appealed the trademark examining attorney’s final refusal to
`register the trademark DEXTERITY under Section 2(d) of the Trademark Act of 1946 (as amended)
`(hereinafter “the Trademark Act”), 15 U.S.C. Section 1052(d). Registration was refused on the Principal
`Register on the grounds that the applicant’s mark is likely to be confused with the marks DEXTERITY of
`U.S. Registration No. 3994623 and DEXTERITE of U.S. Registration No. 4273785.
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`FACTS
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`On June 30, 2010, applicant applied to register the standard character mark DEXTERITY
`based on use of the mark in commerce under Section 1(a) of the Trademark Act in connection
`with “silicone gel sheeting for the treatment of scars; orthopedic support bandages, namely,
`wearable pads for the hands, support bandages, finger bandages, finger guards for medical
`purposes; exercise articles for rehabilitation and therapeutic purposes, namely, polymer gel
`spheres for muscular rehabilitation; pads for preventing pressure sores; finger guards for medical
`purposes; compression sleeve for treating swelling and circulatory disorders, anti-inflammatory
`pad for treating sports injuries and tissue trauma; joint protector sleeves for the hands, thumb and
`wrists; carpal tunnel relief sleeves; heat therapy gloves and mittens for the hands” in
`International Class 10.
`In an Office action issued on October 17, 2010, registration was refused under Section 2(d) of
`the Trademark Act based upon the mark DEXTER in typed form in U.S. Registration No. 1783339
`registered for “biomechanical medical apparatus, for physical rehabilitation and performace [sic]
`evaluation of the hand” in International Class 10. Application Serial Nos. 77898229 and 79086708 were
`referenced as earlier-filed pending applications, and a partial requirement to amend the identification of
`goods was made.
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`In a response filed on January 10, 2011, applicant presented arguments against the Trademark
`Act Section 2(d) refusal and amended the identification to “silicone gel sheeting for the treatment of
`scars; orthopedic support bandages, namely, wearable pads for the hands, support bandages, finger
`support bandages, finger guards for medical purposes; exercise articles for rehabilitation and
`therapeutic purposes, namely, polymer gel spheres for muscular rehabilitation; pads for preventing
`pressure sores; compression sleeve for treating swelling and circulatory disorders, anti-inflammatory
`pad for treating sports injuries and tissue trauma; joint protector sleeves for the hands, thumb and
`wrists for medical purposes; carpal tunnel relief sleeves” in International Class 10 and “terrycloth gloves
`and mittens with gel inserts for use in heat therapy” in International Class 25.
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`A Notice of Suspension was mailed on January 31, 2011, suspending the application pending the
`disposition of Application Serial Nos. 77898229 and 79086708. The likelihood of confusion refusal based
`on U.S. Registration No. 1783339 and the requirement for an acceptable identification of goods were
`both maintained and continued.
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`The application was removed from suspension and an Office action was issued on February 27,
`2013 in which registration was newly refused under Section 2(d) of the Trademark Act based upon the
`standard character mark DEXTERITY in U.S. Registration No. 3994623 registered for “medical
`examination and surgical gloves; disposable medical gloves” and the standard character mark DEXTERITE
`in U.S. Registration No. 4273785 registered for “equipment for camera image processing for surgical
`manipulation, namely, computers; computer software for surgical manipulation systems, namely,
`operating software for surgical devices” in International Class 9 and “articulated and motor driven
`instruments for use in urology, gynecology, vascular, cardiac and gastrointestinal laparoscopic surgery;
`artificial limbs, eyes and teeth; orthopaedic articles, namely, orthopedic braces; robotic surgical
`apparatus and instruments, namely, surgical articulated and motor driven instruments; computerized
`apparatus and instruments for surgical manipulation, namely, surgical articulated and motor driven
`instruments; articulated and motor driven arms for surgical manipulation; electrical surgical apparatus
`and instruments, namely, surgical articulated and motor driven instruments; jointed and motorised
`surgical apparatus and instruments for endoscopic and laproscopic [sic] surgery” in International Class
`10. The Trademark Act Section 2(d) refusal based on U.S. Registration No. 1783339 and the
`identification of goods amendment requirement were maintained and continued.
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`Applicant filed a response on August 27, 2013 in which it argued against the Trademark Act
`Section 2(d) refusal and amended the identification of goods to “silicone gel sheeting for the treatment
`of scars; wearable pads for the hands for use in cushioning and protecting the metacarpal heads and to
`protect the thumb and other digits from forceful trauma, pressure, shock and shear; support bandages
`used to cushion the base of the thumb and reduce tenderness over palmar incisions, finger support
`bandages, finger guards for medical purposes; exercise articles for rehabilitation and therapeutic
`purposes, namely, polymer gel spheres for muscular rehabilitation; pads for preventing pressure sores;
`compression sleeve for treating swelling and circulatory disorders, anti-inflammatory gel pad for
`treating sports injuries and tissue trauma; gel-based joint protector sleeves for the hands, thumb and
`wrists for medical purposes; carpal tunnel relief sleeves, terrycloth gloves and mittens with gel inserts
`for use in heat therapy for the hands” in International Class 10.
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`In an Office action issued on September 17, 2013, the Trademark Act Section 2(d) refusal was
`withdrawn with respect to U.S. Registration No. 1783339 and maintained and made final with respect to
`U.S. Registration Nos. 3994623 and 4273785. The partial requirement for an acceptable identification of
`goods was also maintained and made final.
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`Applicant filed a Request for Reconsideration along with a Notice of Appeal on September 24,
`2014 in which it amended the identification to “silicone gel sheeting for the treatment of scars; support
`bandages, namely, wearable pads for the hands for use in cushioning and protecting the metacarpal
`heads and to protect the thumb and other digits from forceful trauma, pressure, shock and shear;
`support bandages used to cushion the base of the thumb and reduce tenderness over palmar incisions,
`finger support bandages, finger guards for medical purposes; exercise articles for rehabilitation and
`therapeutic purposes, namely, polymer gel spheres for muscular rehabilitation; pads for preventing
`pressure sores; compression sleeve for treating swelling and circulatory disorders, anti-inflammatory gel
`pad for treating sports injuries and tissue trauma; gel-based joint protector sleeves for the hands, thumb
`and wrists for medical purposes; carpal tunnel relief sleeves, terrycloth gloves and mittens with gel
`inserts for use in heat therapy for the hands” in International Class 10.
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`The Request for Reconsideration was denied in an action mailed October 11, 2013 and applicant
`submitted its appeal brief to the Board on December 13, 2013. Applicant submitted an amended appeal
`brief on December 18, 2013 and by a January 5, 2014 Board Order, the amended brief was made the
`operative brief herein.
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`ISSUE ON APPEAL
`The sole issue on appeal is whether applicant’s use of the mark DEXTERITY in connection with
`“silicone gel sheeting for the treatment of scars; support bandages, namely, wearable pads for the
`hands for use in cushioning and protecting the metacarpal heads and to protect the thumb and other
`digits from forceful trauma, pressure, shock and shear; support bandages used to cushion the base of
`the thumb and reduce tenderness over palmar incisions, finger support bandages, finger guards for
`medical purposes; exercise articles for rehabilitation and therapeutic purposes, namely, polymer gel
`spheres for muscular rehabilitation; pads for preventing pressure sores; compression sleeve for treating
`swelling and circulatory disorders, anti-inflammatory gel pad for treating sports injuries and tissue
`trauma; gel-based joint protector sleeves for the hands, thumb and wrists for medical purposes; carpal
`tunnel relief sleeves, terrycloth gloves and mittens with gel inserts for use in heat therapy for the hands”
`creates a likelihood of confusion with the registered marks DEXTERITY in U.S. Registration No. 3994623
`for “medical examination and surgical gloves; disposable medical gloves” and DEXTERITE in U.S.
`Registration No. 4273785 for “equipment for camera image processing for surgical manipulation,
`namely, computers; computer software for surgical manipulation systems, namely, operating software
`for surgical devices” and “articulated and motor driven instruments for use in urology, gynecology,
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`vascular, cardiac and gastrointestinal laparoscopic surgery; artificial limbs, eyes and teeth; orthopaedic
`articles, namely, orthopedic braces; robotic surgical apparatus and instruments, namely, surgical
`articulated and motor driven instruments; computerized apparatus and instruments for surgical
`manipulation, namely, surgical articulated and motor driven instruments; articulated and motor driven
`arms for surgical manipulation; electrical surgical apparatus and instruments, namely, surgical
`articulated and motor driven instruments; jointed and motorised surgical apparatus and instruments for
`endoscopic and laproscopic surgery.”
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`OBJECTION TO NEW EVIDENCE SUBMITTED AT TIME OF APPEAL
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`The examining attorney objects to new evidence submitted by the applicant at the time of
`appeal. Specifically, applicant states “…Bic Pen Corporation has registered its famous trademark BIC for
`pens and razors” and “…it is pointed out that The Gillette Company at one time sold and had
`registrations of the mark GILLETTE for cigarette lighters and shaving products with which its mark is
`always associated.” (applicant’s Appeal Brief at page 10, hereinafter, “(App. Br. at ____)”). But
`applicant has not made any registrations of Bic Pen Corporation or The Gillette Company of record to
`support these assertions. The Trademark Trial and Appeal Board generally does not take judicial notice
`of third-party registrations. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re
`Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §§1208.02, 1208.04; TMEP §710.03;
`see Fed. R. Evid. 201; 37 C.F.R. §§2.122(a), 2.142(d). To make third party registrations part of the record,
`an applicant must submit copies of the registrations, or the complete electronic equivalent from the
`USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB
`2006); In re Ruffin Gaming, 66 USPQ2d at 1925 n.3; TBMP §1208.02; TMEP §710.03.
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`Further, applicant submits definitions of “orthopedics” and “dexterity” from Dictionary.com for
`the first time in its appeal brief but has not made definitions of record, nor has it requested that judicial
`notice be taken thereof. (App. Br. at 7, 11).
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`The record in an application should be complete prior to the filing of an appeal. 37 C.F.R.
`§2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c). Because applicant’s new evidence was
`untimely submitted during an appeal, the trademark examining attorney requests that the Board
`disregard this evidence. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011); In re Giovanni
`Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011); In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n.32,
`1769 (TTAB 2011); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).
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`ARGUMENTS
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`LIKELIHOOD OF CONFUSION
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
`registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as
`to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In
`the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973),
`the court listed the principal factors to be considered when determining whether there is a likelihood of
`confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant
`or of equal weight, and any one of the factors may control in a given case, depending upon the evidence
`of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed.
`Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see
`In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567. The examining attorney
`addresses in turn the factors that are most relevant in the instant case.
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`I. THE MARKS CREATE A CONFUSINGLY SIMILAR COMMERCIAL
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` IMPRESSION.
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`A. The marks are confusingly similar in sound, appearance, meaning and
` commercial impression.
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`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
`commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
`(quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973));
`TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks
`confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty
`Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
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`1. Appearance
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`The marks of applicant and Registrant No. 3994623 are identical in appearance.
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`The marks of applicant and Registrant No. 4273785 are nearly identical in appearance, as
`applicant’s proposed mark consists of the wording DEXTERITY and the registered mark consists of the
`term DEXTERITE. The marks thus each include and begin with the same nine letters DEXTERIT-. This fact
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`is significant, as consumers are generally more inclined to focus on the first word, prefix, or syllable in
`any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
`1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak
`Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
`be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
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`2. Sound
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`The marks of applicant and Registrant No. 3994623 sound the same when pronounced.
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`There is no correct pronunciation of a mark because it is impossible to predict how the public
`will pronounce a particular mark. See In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912
`(Fed. Cir. 2012); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006); TMEP
`§1207.01(b)(iv). The marks of applicant and Registrant No. 4273785 could clearly be pronounced the
`same; such similarity in sound alone may be sufficient to support a finding that the marks are
`confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty
`Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
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`And even if the marks of applicant and Registrant No. 4273785 sound marginally different when
`they are pronounced, slight differences in the sound of similar marks will not avoid a likelihood of
`confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc.,
`671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
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`3. Meaning and Commercial Impression
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`As applicant’s mark and the mark of Registrant No. 3994623 are identical, these marks have the
`same meaning and create the same overall commercial impression.
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`The marks of applicant and Registrant No. 4273785 are nearly identical in that eight of nine
`letters in each mark are the same, creating a nearly identical appearance and sound and with each mark
`creating the meaning and overall commercial impression of DEXTERITY.
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`Moreover, the registered mark is a foreign term and translates in English to the term DEXTERITY,
`which is the applicant’s proposed mark. Under the doctrine of foreign equivalents, a mark in a foreign
`language and a mark that is its English equivalent may be held to be confusingly similar. TMEP
`§1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218
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`USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to
`determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v.
`Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir.
`2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar.
`See In re Thomas, 79 USPQ2d at 1025.
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`The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and
`translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696;
`TMEP §1207.01(b)(vi)(A). The ordinary American purchaser refers to “all American purchasers, including
`those proficient in a non-English language who would ordinarily be expected to translate words into
`English.” In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re
`Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair
`Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers
`familiar with the foreign language, the word would denote its English equivalent.”).
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`Generally, the doctrine is applied when the English translation is a literal and exact translation of
`the foreign wording. See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to
`be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services
`where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black
`Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc.,
`230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be
`confused with the cited registration for WOLF and design for various clothing items, where LUPO is the
`Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the
`Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for
`footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term
`SUN).
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`The applicant’s and registrants’ marks are thus identical or nearly identical in appearance,
`sound, meaning and overall commercial impression. Applicant itself even stated in its brief “Applicant
`does not dispute the Examining Attorney’s statement that the marks themselves are either identical or
`close.” (App. Br. at 5). Where the marks of the respective parties are identical or virtually identical, the
`relationship between the relevant goods need not be as close to support a finding of likelihood of
`confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re
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`Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636
`(TTAB 2009); TMEP §1207.01(a).
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`II. APPLICANT’S GOODS ARE SUFFICIENTLY RELATED TO REGISTRANTS’
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` GOODS AND ARE SOLD THROUGH THE SAME CHANNELS OF TRADE SO
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` THAT CONFUSION IS LIKELY.
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`With regard to the goods of Registrant No. 4273785, applicant contends “[i]t is immediately
`apparent from the description and listing of these goods that they are entirely different from those to
`which applicant applies its marks.” (App. Br. at 6). But the fact that the goods of the parties differ is not
`controlling in determining likelihood of confusion. The issue is not likelihood of confusion between
`particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re
`Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co.,
`992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
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`Moreover, the goods of the parties need not be identical or even competitive to find a likelihood
`of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475
`(Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000)
`(“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the
`same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP
`§1207.01(a)(i).
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`The respective goods need only be “related in some manner and/or if the circumstances
`surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods]
`emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101
`USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
`2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP
`§1207.01(a)(i).
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`The identified goods of Registrant No. 4273785 include “orthopaedic articles, namely,
`orthopedic braces.” As shown by the dictionary definition attached to the September 17, 2013 final
`Office action, the term ORTHOPEDIC is defined as “relating to the medical treatment of injuries and
`diseases affecting bones and muscles.” See the dictionary definition of ORTHOPEDIC from Macmillan
`Dictionary attached to the September 17, 2013 final Office action. Applicant’s identified goods include
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`“finger support bandages, finger guards for medical purposes, exercise articles for rehabilitation and
`therapeutic purposes, namely, polymer gel spheres for muscular rehabilitation,” “anti-inflammatory gel
`pad for treating sports injuries and tissue trauma, gel-based joint protector sleeves for the hands, thumb
`and wrists for medical purposes, carpal tunnel relief sleeves, terrycloth gloves and mittens with gel
`inserts for use in heat therapy for the hands,” all of which may be used in the treatment of injuries and
`diseases affecting bones and muscles. Thus, the goods of applicant and registrant would be used for the
`same purpose and sold through the same channels of trade to the same consumers.
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`With respect to the goods of Registrant No. 3994623, applicant argues “…the common
`understanding of ‘disposable medical gloves’ would be gloves used by doctors, surgeons, nurses or aides
`for various medical purposes such as examinations, surgery, applications of topical medications and
`disposed of thereafter.” (App. Br. at 9). However, the question of likelihood of confusion is determined
`based on the description of the goods stated in the application and registration at issue, not on extrinsic
`evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101
`USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942,
`16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Additionally, unrestricted and broad identifications are
`presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370,
`1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d
`1716, 1716 (TTAB 1992).
`
`The registrant’s identified goods do include “medical examination and surgical gloves,” and the
`purpose of these gloves is clearly use by doctors and surgeons in the performance of medical
`examinations and surgeries. However, with respect to registrant’s “disposable medical gloves,” the
`specific medical purpose of these goods is not specified. Accordingly, while these goods may be worn by
`doctors or surgeons, they may just as likely be worn by consumers seeking treatment of a medical
`condition or disease. Although applicant contends that “…applicant’s goods are not medical products,”
`applicant itself states that “…the products are designed to provide comfort and relief to some common
`pains and irritations and the like” and the identification indicates that the goods provide “heat therapy
`for the hands.” (App. Br. at 8). As medical products are typically used to provide relief to those
`suffering from pain and irritation, contrary to applicant’s claims, its goods do appear to be medical
`products.
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`Applicant further argues
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`Another principle directly applicable to this case is that it is incumbent upon the Examining
`Attorney to submit evidence to establish that applicant’s goods and those of the cited registrant
`are sufficiently related so that confusion as to source would result when such goods are
`marketed even under very similar marks. The Examining Attorney has submitted no such
`evidence at all on this issue.
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`
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`(App. Br. at 10; emphasis in original).
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`As a preliminary matter, it is submitted that applicant’s own evidence shows that its goods and
`the goods of the registrants are related. With its Office action response, applicant submitted evidence
`regarding the type of goods it provides. The second page of the catalog submitted by applicant states
`“Dear Hand Therapy Colleague, Here are dozens of unique products that will benefit you, your patients,
`and your practice.” See attachment to August 27, 2013 response to Office action. The catalog page also
`states
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`GelSmart® is the gel-based product line of PolyGel® – a global leader in orthopedic, skin and
`healthcare products. Dexterity is the hand therapy line from PediFix™ – a family-owned and
`operated business serving the medical community since 1885. These firms partner together to
`deliver quality products to healthcare professionals and their patients, with fast, friendly
`customer service.
`
`…
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`Select Dexterity products are available for sale and patient purchase in DME, pharmacies and
`other healthcare stores.
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`
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`See id. Accordingly, applicant’s own evidence shows that its goods are (1) medical products, and (2)
`related to orthopedic products.
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`Contrary to applications assertions, the examining attorney has also provided sufficient
`evidence to show that the goods of applicant and the registrants are related. The trademark examining
`attorney provided numerous third-party marks from the USPTO’s X-Search database registered for use
`in connection with the same or similar goods as those of applicant and the registrants in this case. See
`the attachments to the February 27, 2013 Office action and to the September 17, 2013 final Office
`action. This evidence shows that the goods are of a kind that may emanate from a single source under a
`single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29
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`
`USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
`1988); TMEP §1207.01(d)(iii).
`
`The examining attorney also provided Internet evidence in the nature of excerpts from the
`websites of Push Braces, High Tide Health, BraceUp, MedSupports, Metro Medical Online, Bell-Horn,
`Mueller Sports Medicine, and North Coast Medical. See the attachments to the September 17, 2013
`final Office action. This evidence establishes that the relevant goods are sold or provided through the
`same trade channels and used by the same classes of consumers in the same fields of use. Therefore,
`applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g.,
`In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
`USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`Evidence obtained from the Internet may be used to support a determination under Trademark
`Act Section 2(d) that goods are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371
`(TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
`
`CONCLUSION
`
`Because of the similarity of the marks, the relatedness of the goods and the overlap of the trade
`channels therefor, confusion as to the source of the identified goods is likely. To the extent that the
`examining attorney may have had any doubt, such doubt was resolved in favor of the registrant. TMEP
`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001,
`1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed.
`Cir. 1988).
`
`For the reasons stated above, it is respectfully requested that the refusal under Trademark Act
`Section 2(d), 15 U.S.C. §1052(d) be affirmed.
`
`Respectfully submitted,
`
`
`
`
`
`

`
`/Sara N. Benjamin/
`
`Examining Attorney
`
`Law Office 110
`
`571.272.8847
`
`sara.benjamin@uspto.gov
`
`
`
`
`
`Chris A. F. Pedersen
`
`Managing Attorney
`
`Law Office 110