IN RE TRUMPF GMBH CO. KG, 79015006 (TTAB 11-15-2007)
In re Trumpf GmbH Co. KG
Serial No. 79015006United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: November 15, 2007Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Peter L. Costas of Pepe Hazard LLP for Trumpf GmbH Co. KG.
Colleen Kearney, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney).
Before Bucher, Drost and Zervas, Administrative Trademark Judges.
Opinion by Zervas, Administrative Trademark Judge:
On July 25, 2005, Trumpf GmbH Co. KG filed an application (Serial No. 79015006) to register the mark
(stylized) on the Principal Register for goods ultimately identified as,
operating tables and parts thereof, namely operating table pedestals and table tops supported thereon; operating table accessories, namely pelvis supports, buttock supports, armPage 2
supports, leg supports, knee supports, foot supports, lateral supports, head supports, shoulder supports and rectal positioning devices for medical use; transporters and lifts for transporting patients and table tops to, and from, operating table columns and for lifting patients onto and from, operating tables, and for lifting table tops onto and from columns,
in International Class 10. The application is based on Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f), (Madrid Protocol), and applicant's International Registration No. 0861253 issued July 25, 2005.
Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of Registration No. 3034112 (registered December 27, 2005) for the mark
for "medical systems for minimally invasive surgery techniques, consisting of stainless steel docking needles, hollow cannula needles, biopsy probes, clearing probes, syringes and multi-use surgical tools, orthopedic fixation devices used in orthopedic transplant and/or implant surgery, medical cutting devices, surgical and medical instruments for use in general surgery and surgical instruments for use in vertebroplasty" in International Class 10. Registrant has disclaimed SURGICAL SYSTEMS.Page 3
Applicant has appealed the final refusal of its application. Both applicant and the examining attorney have filed briefs. As discussed below, the refusal to register is affirmed.
Our determination of the examining attorney's refusal to register the mark under Section 2(d) of the Trademark Act is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours Co.,476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In reMajestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard PaperCo., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also,In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the similarity or dissimilarity of the marks. Specifically, we consider whether applicant's mark and the registered mark, when viewed in their entireties, are similar in appearance, sound, connotation and commercial impression.Palm Bay Imports Inc. v. VeuvePage 4Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Applicant's mark consists only of the word JUPITER, which is the same word as the dominant term in registrant's mark. JUPITER dominates over the other word and design components of registrant's mark for several reasons. First, it is part of the literal portion of registrant's mark, and it is the literal portion of the mark that will be used by purchasers in recalling the marks and purchasing the goods. In reAppetito Provisions Co., Inc., 3 USPQ2d 1553 (TTAB 1987). Second, JUPITER is highlighted at the top portion of the mark, in letters that are substantially larger than the letters of the remaining wording in the mark. Third, SURGICAL SYSTEMS is descriptive of the goods and has been disclaimed by registrant; it hence functions less as a source indicator than JUPITER. Because JUPITER is the dominant term in registrant's mark and the only word in applicant's mark, we find that the meaning of each mark is similar. The commercial impression of each mark is similar too; the additional descriptive wording SURGICAL SYSTEMS in registrant's mark does not give registrant's mark a different commercial impression from that of applicant's mark.Page 5
With regard to the appearance of the marks, JUPITER in each mark is displayed in title case in an ordinary style of lettering that is not unique or unusual. Similarly, the design in registrant's mark is rather ordinary and does not present any unique characteristic. In view thereof, and because of the prominence of JUPITER in registrant's mark, we find that the marks are similar in appearance.
In sum, although there are differences in appearance and sound when the marks are considered as a whole, the similarities in sound, appearance, meaning and commercial impression due to the shared term JUPITER outweigh such differences. We therefore conclude that the marks are more similar than dissimilar when considered in their entireties. The du Pont factor regarding the similarity of the marks supports a finding of likelihood of confusion.
The second du Pont factor requires us to determine the similarity or dissimilarity of the goods as identified in the application and the cited registration. It is settled that it is not necessary that the goods be identical or even competitive in order to find that the goods are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. See In rePage 6Rexel Inc., 223 USPQ 830 (TTAB 1984). It is sufficient that the goods be related in some manner, or that the circumstances surrounding their use be such, that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source. See In reMartin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International Telephone Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In support of her contention that the goods are related, the examining attorney has submitted various use-based third-party registrations with her initial and final Office actions which show that various trademark owners have adopted a single mark for goods of the kind that are identified in both applicant's application and the cited registration. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from aPage 7
single source. In re Albert Trostel Sons Co., 29 USPQ2d 1783 (TTAB 1993). The following four are relevant:[fn1]
Registration No. 1400234 for ALM for, inter alia, "operating tables" and "knives for surgical purposes";
Registration No. 1889205 for NIKKISO for, inter alia, "operating tables" and "suture instruments";
Registration No. 2420395 for a miscellaneous design (stylized) for, inter alia, "operating tables" and "surgical instruments . . . used for minimally invasive incisions"; and
Registration No. 2392378 for ENDO-MODEL for, inter alia, "operating tables" and "orthopedic joint implants . . . surgical cutlery."
In addition, with her initial and final Office actions, the examining attorney submitted web pages which she states are "probative of the fact that goods such as applicant's operating tables and registrant's surgical and medical instruments used in general surgery, emanate from the same sources." Brief at unnumbered p. 8. However, the internet evidence (i) appears to be from distributors, not manufacturers, of medical products (see www.indiamart.com/ademco where there are also hundreds of different goods offered for sale); (ii) does not show goods of the type identified in registrant's identification of goods (see www.maquet.com); and/or (iii) does not showPage 8
under what trademark the goods are sold. This evidence therefore has limited probative value.
We find that the examining attorney through her evidence of third-party registrations has established prima facie at least a viable relationship between the goods at issue. We therefore resolve the du Pont factor regarding the similarity of the goods against applicant.
We now consider the trade channels of applicant's and registrant's goods. Neither applicant's nor registrant's identifications of goods contain any specific trade channel limitations. If there are no trade channel limitations, we presume that registrant's and applicant's identifications of goods encompass all goods of the nature and type described, and that the identified goods move in all channels of trade that would be normal for such goods, and that they are available to all classes of purchasers for the described goods. SeeLinkvest, 24 USPQ2d at 1716; In re Elbaum, 211 USPQ 639 (TTAB 1981).
The purchasers of applicant's goods are likely hospital purchasing agents alone or in conjunction with medical personnel such as doctors and nurses, i.e., those who would be involved in surgical procedures including orthopedic transplants or implants and vertebroplasty.Page 9
With regards to purchasers of applicant's goods, applicant maintains that they include (i) hospital operating room designers; and (ii) hospital purchasing agents. However, even if hospital operating room designers are involved in purchases of applicant's goods, the record does not indicate that they would be involved in purchases of replacement operating tables or parts for operating tables.
As to those hospital purchasing agents that purchase applicant's goods, applicant maintains, by implication, that they are different from the hospital purchasing agents who purchase registrant's goods. Brief at p. 9. Applicant quotes from Astra Pharmaceutical Products, Inc. v. BeckmanInstruments, Inc. 718 F.2d 1201, 220 USPQ 786, 790 (1st Cir. 1983), an infringement case involving medical supplies and equipment where the First Circuit affirmed a finding of no likelihood of confusion in part because while both parties sold goods to the same purchasing institutions — large hospitals — one party sold primarily to hospital pharmacists and anesthesiologists, while the other party sold to specialists in hospital chemistry laboratories.
We also are not persuaded by this argument. In the present case, there is no evidence that the hospital purchasing agents who purchase applicant's goods differPage 10
from the hospital purchasing agents who purchase registrant's goods. Both applicant's and registrant's goods are used in connection with surgeries, and, other than the orthopedic fixation devices and the surgical instruments for use in vertebroplasty, they are not limited to particular types of surgeries. Thus, we find that the same individuals would likely be involved in purchases of both applicant's and registrant's goods and that the trade channels for applicant's and registrant's goods overlap.
Next, we consider applicant's contention that applicant's and registrant's purchasers are "discerning and discriminating buyers"; and that "[p]urchasing agents in hospitals exercise great care in purchasing and the expense [of the involved goods] militates against the likelihood of an assumption that the goods are related, even though they may be provided in the same operating room." Brief at p. 8. We accept that purchasers of applicant's and registrant's goods have some sophistication in view of their status as purchasing agents and find that they would take some care in their purchasing decisions. However, because of the shared term JUPITER in the marks and the relatedness of the goods, even these sophisticated purchasers are likely to be confused as to the source of the two products. See Wincharger Corporation v. Rinco,Page 11Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962) (even sophisticated purchasers are not necessarily immune from source confusion); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). The du Pont factor regarding the conditions under which and buyers to whom sales are made therefore slightly favors applicant.
Upon consideration of the relevant du Pont factors discussed above, as well as the evidence of record and the arguments of the examining attorney and applicant, we conclude that when purchasers who are familiar with registrant's mark for its claimed goods encounter applicant's mark on related goods, they are likely to be confused. Although we have stated that the du Pont factor regarding the conditions under which and buyers to whom sales are made weighs slightly in applicant's favor, it is not sufficient to outweigh our findings on the other du Pont factors, all of which favor registrant.
Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.
[fn1] The remaining handful of third-party registrations do not show any of the goods from both applicant's and registrant's identifications of goods.