Cordis Corp.

Trademark Trial and Appeal Board

Dec 10, 2002

No. 75850715 (T.T.A.B. Dec. 10, 2002)

Hearing: Mailed: December 10, 2002
October 22, 2002 Paper No. 15
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cordis Corporation
________
Serial No. 75/850,715
_______
Norm St. Landau and MaryPat A. Weyback of Drinker Biddle &
Reath LLP for Cordis Corporation.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hairston, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Cordis Corporation has appealed from the final refusal
of the Trademark Examining Attorney to register RAPTOR as a
trademark for “medical devices, namely, stents and stent
delivery systems comprised of catheters used to deliver
stents to the site of the lesion for use in the field of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/850,715
2
cardiology.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that use of the mark for the identified goods
would be likely to cause confusion with the mark RAPTOR
which is registered for “instruments for orthopedic
surgery.”2
The case has been fully briefed and an oral hearing
was held.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). The key factors in our
analysis are the identity of the marks, the relationship
between the goods, and the arbitrary nature of the mark in
the cited registration.
At the outset, we note that the marks are identical.
This fact “weighs heavily against applicant.” In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984). “The greater the similarity in
1 Application Serial No. 75/850,715, filed November 17, 1999,
based on a bona fide intention to use the mark in commerce.
2 Registration No. 1,986,107 issued July 9, 1996.
Ser No. 75/850,715
3
the marks, the lesser the similarity required in the goods
or services of the parties to support a finding of
likelihood of confusion.” 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:20.1 (4th ed. 2000).
See also In re Corcordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
We turn to a consideration of applicant’s goods and
the goods in the cited registration. Applicant’s position
is that its goods and the goods in the cited registration
are fundamentally different because they are limited to
distinct fields of medicine, namely cardiology in the case
of applicant’s goods, and orthopedics in the case of the
goods in the cited registration. In view of these
limitations, applicant argues that its goods and the goods
in the cited registration would travel in different
channels of trade to different purchasers. Further,
applicant maintains that its goods and the goods in the
cited registration would be purchased by highly
discriminating purchasers. Applicant submitted the
declarations of four cardiologists, each of whom states
that medical instruments intended for use in the field of
orthopedic surgery are not marketed to or used by him/her
in the practice of cardiology.
Ser No. 75/850,715
4
The Examining Attorney, in urging affirmance of the
refusal to register, argues that applicant’s goods and the
goods in the cited registration are related because they
are all surgical devices. Further, the Examining Attorney
argues that the identification of goods in the cited
registration (instruments for orthopedic surgery) is
broadly worded and may encompass stents for use in
orthopedic surgery; and that stents for use in cardiology
and stents for use in orthopedic surgery are related goods.
The Examining Attorney submitted copies of four use-based
third-party registrations of marks which cover stents
and/or catheters generally, with no limitations as to types
or field of use.
It is well settled that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods or services are related in some manner or that
the circumstances surrounding their marketing are 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 producer or
that there is an association between the actual producers
of the respective goods or services. See In re Melville
Ser No. 75/850,715
5
Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Board is constrained to compare the goods and/or services
as identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we recognize that applicant’s goods are
for use in the field of cardiology, whereas registrant’s
goods are for orthopedic surgery. However, because the
identification of goods in the cited registration is not
limited as to the types of instruments for orthopedic
surgery, we must construe the goods broadly to include all
types of instruments for orthopedic surgery, including
Ser No. 75/850,715
6
stents and stent delivery systems comprised of catheters
for orthopedic surgery.3 See Octocom Systems, Inc. and
Canadian Imperial Bank of Commerce, supra. As indicated,
the Examining Attorney has made of record four use-based
third-party registrations for marks which, in each
instance, are registered for stents and/or catheters,
without limitation as to field of use. Although such
registrations are not evidence that the different marks
shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value to
the extent that they serve to suggest that stents for
various types of surgery may emanate from a single source.
See e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
With regard to applicant’s argument that its goods and
registrant’s goods would be marketed to and purchased by
3 For the first time, at the oral hearing, applicant’s counsel
argued that stents are not defined as “instruments” by the FDA,
and thus registrant’s “instruments for orthopedic surgery” could
not encompass stents. Of course, applicant did not make of
record a copy of the pertinent FDA definitions during prosecution
of the application. Even if applicant had made of record a copy
of the FDA definitions, we would not be inclined to construe
“instruments” in the manner urged by applicant because we cannot
say that purchasers of the involved goods would be familiar with
such definitions. Moreover, merely because the FDA might have a
specific meaning for the term instrument, it does not establish
that the term has the same meaning when used in an identification
of goods in a trademark registration.
Ser No. 75/850,715
7
sophisticated purchasers, while it may well be the case
that surgeons are discriminating in their selection of
surgical devices/instruments, neither applicant’s
identification of goods nor the identification of goods in
the cited registration is restricted to particular classes
of purchasers. Thus, the Board must consider that the
parties’ respective goods could be offered to all normal
purchasers of the goods. This would include medical
wholesale companies and hospitals and clinics. See
Canadian Imperial Bank v. Wells Fargo Bank, supra; In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re
Elbaum, 211 USPQ 639 (TTAB 1981). There is no evidence of
record to establish that, unlike cardiologists, the
purchasing agents for these companies would not have both
applicant’s and registrant’s goods marketed to them.
Moreover, even assuming that purchasers of applicant’s and
registrant’s goods are sophisticated, when the identical
mark is used on related goods, the relevant purchasers are
likely to be confused as to the source of the goods,
despite the care taken in making purchasing decisions.
Some purchasers may believe that registrant has expanded
its product line and is now offering stents and stent
delivery systems comprised of catheters for use in the
field of cardiology. Not all prospective purchasers have
Ser No. 75/850,715
8
to be subject to confusion to support the finding of
likelihood of confusion.
An additional duPont factor, which is relevant in this
case, is that the registered mark RAPTOR must be considered
a strong mark, since it is an arbitrary term for
instruments for orthopedic surgery. We note, in this
regard, that applicant proffered no evidence of either
third-party use or registrations for such marks in the
medical/surgical fields.
For the foregoing reasons, we find that applicant’s
stents and stent delivery systems comprised of catheters
used to deliver stents to the site of the lesion for use in
the field of cardiology and registrant’s instruments for
orthopedic surgery are sufficiently related that confusion
as to source would be likely to occur when sold under the
identical arbitrary mark.
Decision: The refusal of registration under Trademark
Act Section 2(d) is affirmed.