Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA576584
`ESTTA Tracking number:
`12/13/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85074999
`Pedifix, Inc.
`DEXTERITY
`DAVID B KIRSCHSTEIN
`KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERON
`425 5TH AVENUE, FLOOR 5
`NEW YORK, NY 10016-2223
`UNITED STATES
`dbk@kirschsteinlaw.com
`Appeal Brief
`DEXTERITY Appeal Brief.pdf(58201 bytes )
`David B. Kirschstein
`dbk@kirschsteinlaw.com
`/David B. Kirschstein/
`12/13/2013
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`ESTTA576584
`ESTTA Tracking number:
`12/13/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85074999
`Pedifix, Inc.
`DEXTERITY
`DAVID B KIRSCHSTEIN
`KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERON
`425 5TH AVENUE, FLOOR 5
`NEW YORK, NY 10016-2223
`UNITED STATES
`dbk@kirschsteinlaw.com
`Appeal Brief
`DEXTERITY Appeal Brief.pdf(58201 bytes )
`David B. Kirschstein
`dbk@kirschsteinlaw.com
`/David B. Kirschstein/
`12/13/2013
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`Trademark Application of Pedifix, Inc.
`In Re:
`85-074,999
`Ser. No.:
`June 30, 2010
`Filing Dt.:
`Trademark: DEXTERITY
`TM Atty.:
`Sara N. Benjamin, Law Office 110
`
`BRIEF ON APPEAL
`
`Prepared by:
`
`David B. Kirschstein, Esq.
`Kirschstein Israel Schiffmiller & Pieroni, P.C.
`425 Fifth Avenue, 5th Floor
`New York, NY 10016-2223
`(212) 697-3750
`
`-1-
`
`
`
`TABLE OF CONTENTS
`
`STATEMENT OF THE CASE
`
`ISSUE
`
`ARGUMENT
`
`Point 1 -
`
`Comparison of Applicant’s Goods as listed to Those
`of Reg. No. 4,273,785 - DEXTERITE
`
`Point 2 -
`
`Comparison of Applicant’s Goods as listed to Those
`of Reg. No. 3,994,623 - DEXTERITY
`
`Point 3 -
`
`The Applicable Law Supports Applicant’s
`Position that Confusion is Not Likely
`
`Point 4 -
`
`All Three Marks Involved in This Case
`Have a Suggestive Aspect
`
`CONCLUSION
`
`Page
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`4
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`5
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`6
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`6
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`8
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`11
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`11
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`-2-
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`
`
`TABLE OF CASES
`
`Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
`718 F.2d 1201, 110 USPQ 786 (1st Cir. 1983)
`
`Bongrain International (American ) Corp. v. Delice de France, Inc.,
`811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987)
`
`Electronic Design and Sales Inc. v. Electronic Data Systems,
`954 F.2d 713, 21 USPQ2d 1388, 1392-93 (Fed. Cir. 1992)
`
`General Electric Company v. Graham Magnetics Corporation,
`197 USPQ 690 (TTAB 1997)
`
`Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd.
`188 USPQ 517 (TTAB 197)
`
`In re Cotter, 179 USPQ 828 (TTAB 1973)
`
`In re E.I. duPont de Nemours & Co.,
`476 F.2d 1357, 177 USPQ 563 (CCPA 1973)
`
`Page
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`7
`
`9
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`9
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`10
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`10
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`10
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`10
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`-3-
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`
`
`STATEMENT OF THE CASE
`
`Applicant, Pedifix, Inc. has appealed the refusal to register its mark DEXTERITY BY
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`PEDIFIX. Said refusal was made under Section 2(d) of the Trademark Act. It is the Examining
`
`Attorney’s position that the use of the mark DEXTERITY BY PEDIFIX by applicant on its
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`goods is likely to cause confusion as to source with the use of the marks of cited Registration
`
`Nos. 3,994,623 for the mark DEXTERITY and 4,273,785 for DEXTERITE on said registrants’
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`goods.
`
`In the final refusal issued on September 17, 2013, the Examining Attorney reiterated her
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`previous refusals under Section 2(d) and objected to the identification of goods. When applicant
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`filed its Notice of Appeal, it included an amended identification of goods which reads as follows:
`
`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
`
`The Board treated this as a Request for Reconsideration and returned the file to the Examining
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`Attorney for further action. She, in turn, denied the Request for Consideration, repeating her
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`rejection under Section 2(d). Inasmuch as no comment was made with respect to the newly
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`submitted identification of goods, it is believed that it has been accepted and, in fact, applicant’s
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`-4-
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`
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`goods as set forth above are what are listed in the TESS database.
`
`The goods set forth in Reg. No. 4,273,785 for the mark DEXTERITE read as follows:
`
`Class 9 - Equipment for camera image processing for surgical manipulation, namely,
`computers; computer software for surgical manipulation systems, namely, operating
`software for surgical devices
`
`Class 10 - 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 surgery
`
`The goods set forth in Reg. No. 3,994,623 for the mark DEXTERITY read as follows:
`
`Medical examination and surgical gloves; disposable medical gloves
`
`ISSUE
`
`The issue is whether applicant’s mark as applied to its goods is confusingly similar to the
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`marks set forth in the cited registrations. Applicant does not dispute the Examining Attorney’s
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`statement that the marks themselves are either identical or close. What applicant does dispute is
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`the Examining Attorney’s holding that the goods to which it applies its mark are so closely
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`related to those of the cited registrations that there is likely to be confusion as to source.
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`-5-
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`
`
`ARGUMENT
`
`Point 1 -
`
`Comparison of Applicant’s Goods as listed to Those
`of Reg. No. 4,273,785 - DEXTERITE
`
`The pertinent goods in Reg. No. 4,273,785 are those of Class 10. It is immediately
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`apparent from the description and listing of these goods that they are entirely different from those
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`to which applicant applies its marks. Goods such as “articulated and motor driven instruments
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`for use in urology, gynecology, vascular, cardiac and gastrointestinal laporoscopic surgery”
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`would certainly be purchased only by medical professionals such as doctors and surgeons and the
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`channels of trade for such goods would be medical supply houses, hospitals and the like.
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`“Artificial limbs, eyes and teeth” are not sold over the counter but, rather, by professionals and
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`institutions in the field of medicine for use by their patients. Orthopedic braces would be
`
`purchased from a medical supply store under a doctor’s prescription. As to the remainder of the
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`goods in this registration, they are surgical goods used by medical professionals sold through the
`
`appropriate channels and would not be purchased by the everyday purchasing public.
`
`All of the above is in complete contrast to applicant’s goods which are over-the-counter
`
`items for sale in drug stores, department stores and the like. It is hard to see how any purchaser
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`would attribute applicant’s goods such as terry cloth gloves containing a gel sold under its
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`trademark with those of the registrant sold under the trademark DEXTERITE no matter how the
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`latter mark is pronounced.
`
`To the foregoing should be added that the purchasers of goods such as those set forth in
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`Reg. No. 4,273,785 are surely not ordinary consumers, and it would be expected that these
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`purchasers would be careful and sophisticated purchasers, a fact that materially decreases the
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`-6-
`
`
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`likelihood that there would be confusion. Astra Pharmaceutical Products, Inc. v. Beckman
`
`Instruments, Inc., 718 F.2d 1201, 110 USPQ 786 (1st Cir. 1983).
`
`The Examining Attorney takes issue with applicant’s contention that the goods of Reg.
`
`No. 4,273,785 for the mark DEXTERITE as set forth above would be sold to medical
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`professionals. She focuses on the word “orthopedic” which according to her attached definition
`
`from the Macmillan Dictionary means “relating to the medical treatment of injuries and diseases
`
`affected bones and muscles.” She states that applicant’s identified goods include orthopedic
`
`support bandages as well as finger support bandages and the like.” However, the word
`
`“orthopedic” does not appear in applicant’s current identification of goods. Applicant’s support
`
`bandages, finger guards and the like are not orthopedic articles. One does not consider an anti-
`
`inflammatory gel pad for treating sport injuries as an orthopedic device. Indeed, Dictionary.com,
`
`which is based on The Random House Dictionary defines “orthopedics” as “the medical specialty
`
`concerned with correction of deformities or functional impairment of the skeletal system,
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`especially the extremities and the spine, and associated structures, as muscles and ligaments.”
`
`(Emphasis supplied)
`
`To conclude on this point, all of applicant’s listed goods are entirely different from those
`
`set forth in cited Reg. No. 4,273,785, are sold through entirely different channels and purchased
`
`by entirely different classes of purchasers, i.e., careful, knowledgeable medical professionals as
`
`opposed to the ordinary public which purchases applicant’s over-the-counter products.
`
`One further point with respect to cited Reg. No. 4,273,785: although applicant concedes
`
`that the translation of the French word “dexterite” is “dexterity,” it is submitted that the ordinary
`
`English-speaking person in this country would surely pronounce the mark with the hard “I” as in
`
`-7-
`
`
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`“dexteright.” The French pronunciation would be “dexteree.” It is submitted that this is an
`
`additional reason why confusion should not be likely.
`
`Point 2 -
`
`Comparison of Applicant’s Goods as listed to Those
`of Reg. No. 3,994,623 - DEXTERITY
`
`With respect to the goods in this registration, the Examiner’s position is that the
`
`“disposable medical gloves” listed in this registration do not have a special or particular function
`
`other than being of medical use and include disposable medical gloves used for any medical
`
`purpose. The Examining Attorney then concludes that the goods of the registration include
`
`applicant’s “terrycloth gloves and mittens with gel inserts for use in heat therapy for the hands”
`
`and may be used for the same purposes as those goods of applicant’s and applicant’s other
`
`medical hand treatment products. The difficulty with this position is that applicant’s goods are
`
`not medical products. They are the products designed to provide comfort and relief to some
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`common pains and irritations and the like. Moreover, as applicant urged repeatedly in its
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`responses to the Office Actions during prosecution of this case, applicant’s glove products are
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`not disposable at all. To the contrary, its terry cloth gloves and mittens and other such products
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`are designed to be used repeatedly until they wear out or deteriorate. They are not of the nature
`
`that would be considered disposable.
`
`To the foregoing it is added that 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.
`
`Every television program that shows an operating room shows such gloves, not terrycloth gloves
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`-8-
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`and mittens filled with gel.
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`All of the foregoing applies also to the medical examination and surgical gloves set forth
`
`in Reg. No. 3,994,623. The purpose of such products is to avoid contamination and the threat of
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`disease as applicant contends, a purpose which is a far cry from the purpose and use of
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`applicant’s products.
`
`Point 3 -
`
`The Applicable Law Supports Applicant’s
`Position that Confusion is Not Likely
`
`It is to be emphasized that as the Board has repeatedly stated it is likelihood of confusion,
`
`not a mere possibility of confusion that constitutes a basis for a refusal to register under Section
`
`2(d). For example, see Electronic Design and Sales Inc. v. Electronic Data Systems, 954 F.2d
`
`713, 21 USPQ2d 1388, 1392-93 (Fed. Cir. 1992) (“[O]pposer urges that persons who use
`
`opposer’s data processing and telecommunications services at work and who buy batteries at
`
`retail stores would be confused as to source ...[T]he potential for confusion appears a mere
`
`possibility not a probability.”). See also Bongrain International (American) Corp. v. Delice de
`
`France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987) (The “statute refers to
`
`likelihood, not the mere possibility, of confusion.”).
`
`Another principle directly applicable to this case is that it is incumbent upon the
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`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
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`marketed even under very similar marks. The Examining Attorney has submitted no such
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`evidence at all on this issue. The third party registrations relied on by the Examining Attorney
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`-9-
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`
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`surely are not a substitute for actual evidence establishing the required relationship. Companies
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`sell a variety of goods both related and unrelated and are entitled to register a trademark for such
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`goods if they have been sold in interstate or foreign commerce. However, the fact that a company
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`may sell a variety of goods does not make the goods they sell related. For example, Bic Pen
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`Corporation has registered its famous trademark BIC for pens and razors. Surely this does not
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`make pens and razors related goods coming within the requirements of In re E.I. duPont de
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`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In addition, it is pointed out that
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`The Gillette Company at one time sold and had registrations of the mark GILLETTE for cigarette
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`lighters and shaving products with which its mark is always associated. Again, that does not
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`make cigarette lighters and shaving products related products within the requirements of duPont.
`
` See General Electric Company v. Graham Magnetics Corporation, 197 USPQ 690 (TTAB
`
`1977); Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975);
`
`and In re Cotter, 179 USPQ 828 (TTAB 1973).
`
`Referring now to the Examining Attorney’s efforts to find a term in the description of
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`goods of the cited registration that may generally describe applicant’s goods, the Board has held
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`that this is not sufficient to establish applicant’s and the registrants’ goods are related. See
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`General Electric Company, supra [It is not enough to find one term that may generally describe
`
`the goods.].
`
`-10-
`
`
`
`Point 4 -
`
`All Three Marks Involved in This Case
`Have a Suggestive Aspect
`
`Dictionary.com defines “dexterity” as “skill or adroitness in using the hands or body;
`
`agility.” Broadly speaking, the mark DEXTERITE of Reg. No. 4,273,785 as applied to the listed
`
`goods therein is somewhat suggestive, particularly when referring to the robotic arms and the
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`desired results of using them. Likewise, the mark DEXTERITY of Reg. No. 3,994,623 suggests
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`that the nature of the goods is such that they can be used with a reasonable amount of skill for
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`their intended purpose. Accordingly, the marks of the two cited registrations should not be
`
`granted such a broad scope as to preclude registration of applicant’s mark which also has a
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`suggestive aspect in some respects.
`
`CONCLUSION
`
`It is respectfully submitted that in view of the vastly different goods to which the cited
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`registrations are applied and the goods to which applicant applies the mark sought to be
`
`registered, one of the critical requirements of duPont for a 2(d) rejection has not been met by the
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`Examining Attorney. Accordingly, it is urged that confusion is not likely in this case. It is
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`reiterated that it is a likelihood of confusion that is required, not the mere possibility of
`
`confusion.
`
`Wherefore, it is respectfully submitted that the refusal to register should be reversed.
`
`-11-
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