This Opinion is not a
`Precedent of the TTAB
`
`
`Mailed: August 22, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Pedifix, Inc.
`________
`
`Serial Nos. 85074999 and 85075017
`_______
`
`David B. Kirschstein of Kirschstein, Israel, Schiffmiller & Pieroni, P.C.,
`for Pedifix, Inc.
`
`
`Sara N. Benjamin, Trademark Examining Attorney, Law Office 110
`Chris A.F. Pedersen, Managing Attorney.
`_______
`
`
`Before Bucher, Cataldo and Adlin,
`Administrative Trademark Judges.
`
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`
`Pedifix, Inc. (“Applicant”) filed two use-based applications to register
`
`the marks DEXTERITY1 and DEXTERITY BY PEDIFIX2
`
`(standard
`
`characters) for the goods set forth below:
`
`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
`
`1 Serial No. 85074999 was filed on June 30, 2010.
`2 Serial No. 85075017 was also filed on June 30, 2010.
`
`
`Precedent of the TTAB
`
`
`Mailed: August 22, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Pedifix, Inc.
`________
`
`Serial Nos. 85074999 and 85075017
`_______
`
`David B. Kirschstein of Kirschstein, Israel, Schiffmiller & Pieroni, P.C.,
`for Pedifix, Inc.
`
`
`Sara N. Benjamin, Trademark Examining Attorney, Law Office 110
`Chris A.F. Pedersen, Managing Attorney.
`_______
`
`
`Before Bucher, Cataldo and Adlin,
`Administrative Trademark Judges.
`
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`
`Pedifix, Inc. (“Applicant”) filed two use-based applications to register
`
`the marks DEXTERITY1 and DEXTERITY BY PEDIFIX2
`
`(standard
`
`characters) for the goods set forth below:
`
`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
`
`1 Serial No. 85074999 was filed on June 30, 2010.
`2 Serial No. 85075017 was also filed on June 30, 2010.
`
`
`
`Serial Nos. 85074999 and 85075017
`
`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 Class 10.
`
`The Trademark Examining Attorney refused registration to both
`
`applications under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
`
`§ 1052(d), on the ground that Applicant’s mark so resembles the registered
`
`marks:
`
`DEXTERITY (standard characters) for
`
`medical examination and surgical gloves; disposable medical
`gloves,
`
`in Class 10;3 and
`
`DEXTERITE (standard characters) for
`
`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
`
`3 Registration No. 3994623, issued to SmartHealth, Inc. on July 12, 2011.
`
` 2
`
`
`
`Serial Nos. 85074999 and 85075017
`
`surgical manipulation; electrical surgical apparatus and
`instruments, namely, surgical articulated and motor driven
`instruments; jointed and motorised surgical apparatus and
`instruments for endoscopic and laparoscopic surgery (emphasis
`added)
`in Class 104 that registration of Applicant’s mark would be likely to cause
`
`confusion among consumers as to the source of the goods.
`
`
`
`When the refusal to register was made final in both cases, Applicant
`
`appealed. Applicant and the Examining Attorney filed briefs.5
`
`Proceedings Consolidated
`
`
`
`When, as here, Applicant has filed ex parte appeals to the Board in two
`
`co-pending applications, and the cases involve common issues of law or fact,
`
`the Board, upon request by the Applicant or Examining Attorney or upon its
`
`own initiative, may order the consolidation of the appeals for purposes of
`
`briefing, oral hearing, and/or final decision. TBMP § 1214 (2014). See also,
`
`e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte
`
`consolidated two appeals); In re Country Music Association, Inc., 100 USPQ2d
`
`1824, 1827 (TTAB 2011) (same); In re Bacardi & Co. Ltd., 48 USPQ2d 1031,
`
`1033 (TTAB 1997) (Board sua sponte considered appeals in five applications
`
`together and rendered single opinion). Accordingly, the Board consolidates
`
`
`4 Registration No. 4273785, issued to Dexterite Surgical January 15, 2013. The
`English translation of the foreign word in the mark is “DEXTERITY.” The
`registration also recites goods in Class 9.
`5 The attachments to Applicant’s brief will be given no consideration. To the extent
`they were not made of record prior to appeal, they are untimely. See Trademark
`Rule 2.141(d). To the extent they were timely made of record during prosecution,
`they are duplicative and unnecessary.
`
` 3
`
`
`
`Serial Nos. 85074999 and 85075017
`
`these appeals. References to the record refer to Application Serial No.
`
`85074999 unless otherwise indicated.
`
`Likelihood of Confusion
`
`
`
`Our determination under Section 2(d) is based on an analysis of all of
`
`the probative facts in evidence that are relevant to the factors bearing on the
`
`issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476
`
`F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling
`
`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 goods. 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”). These factors, and any other relevant du Pont
`
`factors in the proceeding now before us, will be considered in this decision.
`
`‘785 Reg.
`
`
`
`For purposes of our analysis of the du Pont factors as they apply to the
`
`instant refusal to register, we will concentrate our discussion on cited
`
`Registration No. 4273785 (‘785 Reg.) for the mark DEXTERITE (standard
`
`characters) for goods including “orthopaedic articles, namely, orthopedic
`
`braces.” We find this registration to be the most relevant for our du Pont
`
`analysis, and we proceed accordingly. Since this is the most relevant
`
` 4
`
`
`
`Serial Nos. 85074999 and 85075017
`
`registration, if we find a likelihood of confusion, we need not find it as to the
`
`other. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
`
`2010).
`
`The similarity or dissimilarity of the marks in terms of appearance,
`sound, connotation and commercial impression and the strength of the
`mark in the cited registration.
`
`We turn first to the du Pont likelihood of confusion factor focusing on
`
`
`
`
`
`the similarity or dissimilarity of the marks in their entireties as to
`
`appearance, sound, connotation and commercial impression. See Palm Bay
`
`Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
`
`1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks, we are
`
`mindful that the test is not whether the marks can be distinguished when
`
`subjected to a side-by-side comparison, but rather whether the marks are
`
`sufficiently similar in terms of their overall commercial impression so that
`
`confusion as to the source of the goods or services offered under the respective
`
`marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
`
`Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
`
`Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
`
`unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
`
`
`
`The mark in the ‘785 Reg. is DEXTERITE. The mark in application
`
`Serial No. 85074999, DEXTERITY, is identical to the registered mark in
`
`meaning and nearly identical in appearance. The sole difference between the
`
`marks is in the last letter, which may go unnoticed by consumers. Applicant
`
` 5
`
`
`
`Serial Nos. 85074999 and 85075017
`
`makes the speculative argument6 that consumers would pronounce the mark
`
`DEXTERITE as “dexteright” in English or “dexteree” in French. However, it
`
`is settled that there is no correct pronunciation of trademarks, and the two
`
`marks may well be verbalized in a very similar manner by consumers. Cf. In
`
`re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (“as we have said many
`
`times, there is no ‘correct’ pronunciation of a trademark”). As a result, we
`
`find the marks DEXTERITY and DEXTERITE to be nearly identical in
`
`appearance, meaning, sound and that, overall, the marks convey highly
`
`similar commercial impressions.
`
`
`
`For the reasons discussed above, the mark DEXTERITE is similar to
`
`the mark in application Serial No. 85075017, DEXTERITY BY PEDIFIX, to
`
`the extent that DEXTERITE is nearly identical to DEXTERITY in
`
`appearance, meaning and sound. However, our analysis of the similarity or
`
`dissimilarity of the marks cannot be predicated on dissecting the marks into
`
`their various components; that is, the decision must be based on the entire
`
`marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
`
`224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
`
`Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic
`
`that a mark should not be dissected and considered piecemeal; rather, it must
`
`be considered as a whole in determining likelihood of confusion”).
`
`
`6 Brief, p. 8.
`
` 6
`
`
`
`Serial Nos. 85074999 and 85075017
`
`
`
`Applicant attempts to distinguish its mark DEXTERITY BY PEDIFIX
`
`from Registrant’s mark DEXTERITE by adding “BY PEDIFIX.” However,
`
`rather than distinguishing the marks, Applicant’s addition of “BY PEDIFIX”
`
`may lead consumers already familiar with Registrant’s mark DEXTERITE to
`
`mistakenly believe that DEXTERITY BY PEDIFIX is Registrant’s mark, and
`
`that Registrant has simply added its house mark PEDIFIX to its mark
`
`DEXTERITE. As noted above, consumers are not likely to note the difference
`
`in the last letter of DEXTERITE/DEXTERITY. As for those consumers
`
`familiar with Applicant’s mark, upon encountering Registrant’s mark they
`
`may mistakenly believe that the goods emanate from the same source and
`
`that “BY PEDIFIX” merely further identifies that single source. See In re
`
`Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (SPARKS BY
`
`SASSAFRAS is similar to SPARKS). See also Sakes & Co. v. TFM Indus.,
`
`Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (FOLIO BY FIRE ISLANDER is
`
`similar to FOLIO); In re Dennison, 220 USPQ 1015, 1016 (TTAB 1983)
`
`(KANGAROO is similar to KANGAROO BY DENNISON). In other words, we
`
`find that consumers are likely to view the marks as variations on each other,
`
`but pointing to a common source. See In Re Mighty
`
`Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
`
`(Fed. Cir. 2010) (ML is likely to be perceived as a
`
`shortened version of ML MARK LEES, as shown
`
`at right.).
`
` 7
`
`
`
`
`
`Serial Nos. 85074999 and 85075017
`
`
`
`As a result, we find that DEXTERITE and DEXTERITY BY PEDIFIX
`
`are more similar than dissimilar in appearance, sound, meaning and overall
`
`commercial impression.
`
`
`
`Applicant argues7 that the term “dexterity” is “somewhat suggestive”
`
`of the goods identified in the ‘785 Reg. and that the mark DEXTERITE
`
`“should not be granted such a broad scope as to preclude registration of
`
`applicant’s mark which also has a suggestive aspect in some respects.”8
`
`However, even if we accept that “dexterity” suggests a quality of Registrant’s
`
`goods, there is nothing in the record to support a finding that such meaning
`
`would not also apply to the goods of Applicant. In other words, the term
`
`“dexterity” appears to have an identical meaning as applied to the goods
`
`identified in both Applicant’s application and the cited registration. As a
`
`result, we find that even if the cited mark is suggestive, it is not so weak that
`
`Applicant’s similar marks are entitled to registration.
`
`
`
`Moreover, to the extent that Applicant’s allegations constitute a
`
`collateral attack on the cited registration, they are impermissible. Section
`
`7(b) of the Trademark Act provides that a certificate of registration on the
`
`Principal Register shall be prima facie evidence of the validity of the
`
`registration, of the registrant’s ownership of the mark and of the registrant’s
`
`exclusive right to use the mark in connection with the goods or services
`
`
`7 Brief, p. 11.
`8 Id.
`
`
` 8
`
`
`
`Serial Nos. 85074999 and 85075017
`
`identified in the certificate. During ex parte prosecution, including an ex
`
`parte appeal, an applicant will not be heard on matters that constitute a
`
`collateral attack on the cited registration (e.g., a registrant’s nonuse of the
`
`mark). In re Dixie Restaurants, 41 USPQ2d at 1534; and In re Peebles Inc.,
`
`23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (April
`
`2014).
`
`
`
`In view of the foregoing, we find that the marks are similar in terms of
`
`appearance, sound, connotation and commercial impression.
`
`The relationship of the goods, the established likely-to-continue
`channels of trade and classes of consumers.
`
`Applicant is seeking to register its marks for the following goods:
`
`
`
`
`
`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.
`
` 9
`
`
`
`Serial Nos. 85074999 and 85075017
`
`The goods identified in Class 10 in the ‘785 Reg. largely consist of motorized
`
`and robotic surgical instruments, but also include “orthopaedic articles,
`
`namely, orthopedic braces.”
`
`
`
`In support of her contention that the goods are related, the Examining
`
`Attorney made of record9 the following definition of “orthopedic” – “relating to
`
`the medical treatment of injuries and diseases; designed to be used by people
`
`with injuries or diseases affecting their bones and muscles.”10 In addition, the
`
`Examining Attorney submitted screenshots from the following commercial
`
`websites offering goods under the same mark that are similar in nature to
`
`those of both Applicant and Registrant,
`
`including
`
`the
`
`following
`
`representative samples:11
`
`pushstore.com/ (orthopedic, medical, support and sport braces);
`
`hightidehealth.com/ (orthopedic braces, carpal tunnel relief sleeves and
`supports, heel and elbow protector pads, compression support sleeves,
`gel finger protectors);
`
`medsupports.com/ (braces, supports, wraps and thumb immobilizers
`for carpal tunnel syndrome, arthritis, thumb injuries);
`
`metromedicalonline.com/ (compression wrist supports, wrist splints,
`orthopedic wrist braces, warming wrist supports, pressure pads and
`sheets);
`
`bell-horn.com/ (thumb splits, wrist/thumb wraps, orthopedic wrist
`braces, carpal tunnel wrist supports); and
`
`
`
`
`
`
`
`
`
`
`
`
`9 September 17, 2013 Office Action.
`10 Id. Macmillandictionary.com/American/orthopedic
`11 Id., Attachments 1-184.
`
` 10
`
`
`
`Serial Nos. 85074999 and 85075017
`
`meullersportsmed.com/ (orthopedic wrist braces and sleeves, thumb
`stabilizers, compression sleeves).
`
`These websites demonstrate that certain of Applicant’s type of goods and
`
`Registrant’s type of orthopedic braces are marketed and sold together under
`
`a single mark.
`
`
`
`In addition, the Examining Attorney made of record a number of live,
`
`use-based, third-party registrations, of which the following identify goods
`
`listed in both applications and the ‘785 Reg.12 The relevant registrations are
`
`listed below.13
`
`Registration No. 2618868 for, inter alia, orthopedic and
`therapeutic musculoskeletal braces and supports, bandages,
`namely, elastic, compression and musculoskeletal support
`bandages;
`
`Registration No. 3444531 for orthopedic braces, orthopedic
`support bandages, namely, wearable pads for the hands,
`orthopedic support bandages; orthopedic supports;
`
`Registration No. 3695171 for, inter alia, orthopedic braces,
`cohesive support bandages, elastic bandages;
`
`Registration No. 3734249 for, inter alia, orthopedic braces,
`orthopedic support bandages, orthopedic supports; and
`
`Registration No. 4225659 for, inter alia, orthopedic braces,
`support bandages.
`
`
`
`12 Id.
`13 We have not included the entire recitation of goods or services for each of the
`registrations. Only the goods that are in Applicant’s applications and the ‘785 Reg.
`are listed. We did not consider registrations based on Section 44 and not on use in
`commerce.
`
`
` 11
`
`
`
`Serial Nos. 85074999 and 85075017
`
`
`
`Third-party registrations which individually cover a number of
`
`different goods that are based on use in commerce have some probative value
`
`to the extent that they serve to suggest that the listed goods are of a type
`
`which may emanate from the same source. See In re Albert Trostel & Sons
`
`Co., 29 USPQ2d 1783, 1785-86; In re Mucky Duck Mustard Co. Inc., 6
`
`USPQ2d 1467, 1470 n.6 (TTAB 1988).
`
`
`
`Based upon the evidence of record, we find that consumers would
`
`readily perceive certain of Applicant’s goods, namely, its sleeves, supports
`
`and pads, and Registrant’s orthopedic braces as being related. Moreover, it is
`
`not necessary for the Examining Attorney to prove likelihood of confusion
`
`with respect to each item of goods identified in Applicant’s single-class
`
`application; if there is likelihood of confusion with respect to any of
`
`Applicant’s identified goods, the refusal of registration must be affirmed. See
`
`Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
`
`986, 988 (CCPA 1981). The evidence of record in this case indicates that the
`
`goods of Applicant and Registrant are commercially related medical and
`
`therapeutic goods that are marketed and sold together under a common
`
`designation, and thus may be encountered together by consumers. The
`
`similarity of the goods is also a factor that weighs in favor of a finding of
`
`likelihood of confusion.
`
`
`
`In addition, neither Applicant’s nor Registrant’s identification of goods
`
`recites any limitations on the channels of trade in which the goods may be
`
` 12
`
`
`
`Serial Nos. 85074999 and 85075017
`
`encountered or the classes of consumers to whom they may be marketed.
`
`Absent any such restrictions, the goods are presumed to move in all normal
`
`channels of trade and be available to all classes of potential consumers of
`
`such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In each case,
`
`the customers would include surgery and post-surgical therapy providers and
`
`patients; and the channels of trade would include hospitals, medical facilities
`
`and doctor’s offices as well as providers of medical and therapeutic supplies
`
`including retailers offering their goods through the Internet, and drug stores.
`
`
`
`The overlap in trade channels and classes of purchasers are factors
`
`that further weigh in favor of a finding of likelihood of confusion.
`
`
`
`
`
`Degree of consumer care.
`
`Applicant argues that Registrant’s goods are purchased by “careful,
`
`knowledgeable medical professionals as opposed to the ordinary public which
`
`purchases applicant’s over-the-counter products.”14
`
`
`
`However, even if we accept that many of Registrant’s goods are
`
`surgical devices that would be the subject of careful purchase by a
`
`knowledgeable professional, Registrant’s goods also include “orthopedic
`
`braces” that may be purchased by ordinary consumers exercising an ordinary
`
`degree of care. See, e.g., In re Pierce Foods Corporation, 230 USPQ 307, 309
`
`(TTAB 1986) (“Nor are we persuaded by applicant’s arguments that confusion
`
`is unlikely because the purchasers are careful and sophisticated. Applicant’s
`
`
`14 Applicant’s Brief, p. 7.
`
` 13
`
`
`
`Serial Nos. 85074999 and 85075017
`
`institutional purchasers could well range in size from a large motel and
`
`restaurant chain to a relatively small restaurant. Therefore, not all of
`
`applicant's purchasers can be expected to be as highly discriminating as
`
`applicant contends. Also, even a sophisticated purchaser may not necessarily
`
`be sophisticated concerning trademarks and therefore, able to avoid being
`
`confused with respect to source.”).
`
`
`
`In view of the foregoing, we find that the degree of care factor is at best
`
`neutral.
`
`
`
`
`
`Balancing the factors.
`
`In view of the facts that the marks are similar, certain of the goods are
`
`related and that the goods move in the same channels of trade and are
`
`marketed to the same consumers, we find that a likelihood of confusion exists
`
`between the marks and goods identified in both involved applications and the
`
`mark and goods in the ‘785 Reg. In view thereof, we need not consider the
`
`refusal based on Registration No. 3994623.
`
`
`
`Decision: The refusal to register application Serial Nos. 85074999 and
`
`85075017 on the basis of Registration No. 4273785 is affirmed.
`
` 14
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