Masimo Corporationv.Rooti Labs Limited

Trademark Trial and Appeal BoardAug 22, 2017

No. 91224804 (T.T.A.B. Aug. 22, 2017)

This Opinion is not a Precedent of the TTAB Mailed: August 22, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Masimo Corporation v. Rooti Labs Limited _____ Opposition No. 91224804 _____ Gregory B. Phillips, Mark D. Kachner, and Deborah S. Shepherd of Knobbe, Martens, Olson & Bear, LLP, for Masimo Corporation. P. Jay Hines of Muncy, Geissler, Olds & Lowe P.C. for Rooti Labs Limited. _____ Before Adlin, Heasley and Pologeorgis, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Rooti Labs Limited (“Applicant”) seeks registration on the Principal Register1 of the stylized word and design mark for “Computer software for using in database management of data mining for healthy care, home care, foodstuff, travel, 1 Application Serial No. 86395592 was filed on September 16, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 15 U.S.C. § 1051(b). The application describes the mark as “the stylized term ‘ROOTI’ with a semi-circle dotting the ‘I’.” Opposition No. 91224804 - 2 - life style or medical information” and related goods2 in International Class 9, and “wearable digital electronic devices comprised primarily of a transmitting and receiving apparatus found in wireless digital phones for medical use to measure physiological parameters such as body weight, blood pressure, blood-oxygen level, polysomnography; blood pressure monitors” and related goods3 in International Class 10. 2 The goods identified in International Class 9 are: “Computer software for using in database management of data mining for healthy care, home care, foodstuff, travel, life style or medical information; Computer software and hardware for using cloud computing in network management for healthy care, home care, foodstuff, travel, life style or medical information; Downloadable electronic game software for use on mobile and cellular phones, handheld computers and desktop computers; Computer-gaming software; Computer operating software; Computer operating programs; Computer operating programs, recorded; Satellite- aided navigation systems; Global positioning system (GPS); Computer terminal; Computer game programs; Computer game programs downloadable via the Internet; Digital music downloadable from the Internet; Films downloaded via the Internet; Downloadable films and television programs featuring healthy care, home care, foodstuff, travel, life style or medical information provided via a video-on-demand; Downloadable films and movies featuring healthy care, home care, foodstuff, travel, life style or medical information provided via a video-on-demand service; Downloadable image file containing artwork, text, audio, video, games and Internet Web links relating to sporting and cultural activities; Downloadable electronic books in the field of healthy care, home care, foodstuff, travel, life style or medical information; Downloadable e-books in the field of healthy care, home care, foodstuff, travel, life style or medical information; Downloadable pictures in the field of healthy care, home care, foodstuff, travel, life style or medical information; Wear-mounted digital electronic devices comprised primarily of a transmitting and receiving apparatus found in digital phones for use in displaying the information of time, date, GPS, position, direction, distance, speed, step, calories, climate, temperature, wind speed, height, deviation of speed and heartbeat, not for medical use; GPS tracking device to be worn on the wrist of an athlete during endurance events; Wearable digital electronic devices comprised primarily of software and display screens for analytic reports of algorithms results and cloud computing for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computer; Wear-mounted digital electronic devices comprised of a transmitting and receiving apparatus for digital phones to display time, date, GPS, position, distance, speed, step, climate, temperature, and wind speed.” 3 The goods identified in International Class 10 are: “Wearable digital electronic devices comprised primarily of a transmitting and receiving apparatus found in wireless digital phones for medical use to measure physiological parameters such as body weight, blood pressure, blood-oxygen level, polysomnography; blood pressure monitors; Thermometers for medical purposes; Clinical thermometers; Medical examination apparatus, namely, wireless Opposition No. 91224804 - 3 - Masimo Corporation (“Opposer”) has opposed registration of Applicant’s mark on the ground of likelihood of confusion with Opposer’s previously used and registered mark ROOT (in standard characters) for “medical devices, namely patient monitors and patient sensors for monitoring and measuring blood properties, respiration, exhaled gases or brain function” in International Class 10.4 “In view of Opposer’s prior statutory and common law trademark rights,” it pleads in its Notice of Opposition, “Applicant is not entitled to registration of the Application pursuant to Section 2(d) of the Lanham Act, 15, U.S.C. § 1052(d).”5 In its Answer, Applicant admits that Opposer owns its pleaded Registration, but denies all salient allegations of likelihood of confusion.6 Its purported “affirmative defenses” merely amplify its monitors intended for use by healthcare professionals for unattended surveillance of physiological data with healthcare settings; Skin examination apparatus, namely, ambulatory devices that measure skin surface moisture, skin color, sebum, skin surface pH and temperature; Heartbeat measuring apparatus; Electrocardiographic (ECG) recorders; Pulse and heartbeat measuring devices; Medical devices, namely, wireless data collection monitors that continuously gather physiological data from the subjects being monitored and then transmit encrypted data via a bi-directional relay to the central server; Medical instruments, namely, ambulatory patient monitors that provide remote vital signs monitoring for subjects in healthcare, occupation and home settings; Medical apparatus, namely, physiological monitoring telemetry device intended for monitoring subjects in the home, work place and alternate care settings; Blood pressure measuring apparatus; Wear- mounted digital electronic devices comprised of a transmitting and receiving apparatus for digital phones to display caloric utilization, heartbeat and respiration in athletes.” 4 Registration No. 4491598, issued on the Principal Register on March 4, 2014. 5 Notice of Opposition ¶ 6, 1 TTABVUE 8. Opposer also predicated its opposition on Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Notice of Opposition ¶ 7, 1 TTABVUE 8. This is not a cognizable ground for opposition. See Person’s Co., Ltd v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990); Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1116n. 8 (TTAB 2010). Furthermore, it was not pursued in Opposer’s briefing, and is therefore waived. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB 2017). 6 Answer, 4 TTABVUE. Opposition No. 91224804 - 4 - denials.7 For the reasons that follow, we sustain the opposition. I. Standing and Priority Because Opposer’s registration is properly of record, Opposer has established its standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); 15 U.S.C. § 1063; see Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). And priority is not at issue as to the mark and goods identified therein. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974). Applicant states that it “does not contest the priority of the Opposer by virtue of its pleaded registration.”8 II. The Evidentiary Record The record includes the pleadings, Applicant’s application file under Trademark Rule 2.122(b), and the following: A. Opposer’s evidence 7 Answer, 4 TTABVUE 3-4. 8 Applicant’s brief p. 7, 15 TTABVUE 9. Opposition No. 91224804 - 5 - • The testimonial deposition of Kristen Budreau, Opposer’s Director of Marketing Communications, with exhibits;9 • Opposer’s Notice of Reliance on its registered mark, Applicant’s answers to Opposer’s first and second sets of interrogatories and requests for admission, with exhibits, as well as printouts from Applicant’s website, www.rootilabs.com;10 B. Applicant’s evidence • Applicant’s Notice of Reliance on printouts from Opposer’s website www.masimo.com, from Applicant’s website www.rootilabs.com, from Applicant’s Facebook page www.facebook.com/rootilabs, from www.kickstarter.com, from www.techcrunch.com and from www.Amazon.com III. Likelihood of Confusion We base our determination of likelihood of confusion under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In applying the DuPont factors, we bear in mind the fundamental principles underlying the Lanham Act in general and Section 2(d) in particular, which are “to 9 13 TTABVUE. 10 9 TTABVUE. Opposition No. 91224804 - 6 - secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985) quoted in Matal v. Tam, __ U.S. __, 122 USPQ2d 1757, 1762 (2017); see also DuPont, 177 USPQ at 566. We have considered each relevant DuPont factor for which there is evidence or argument, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Varying weights may be assigned to each DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in any particular determination”). Two key considerations are the similarities between the marks and the similarities between the goods. See In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456, *3 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth Van Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013). A. Similarity of the marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Opposer’s marks as compared in their entireties, taking into account Opposition No. 91224804 - 7 - their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant contends that there are significant differences in the appearance, sound and meaning of the respective marks. In appearance, it contends, the stylized lettering of its mark “creates an entirely unique and memorable appearance”11: In terms of sound, while conceding that there is no correct pronunciation of a mark, Applicant argues that consumers might pronounce its mark “ROO-TIE” or “ROO-TEA”, and either pronunciation differentiates its mark from the hard ‘t’ ending and single syllable of Opposer’s mark.12 In terms of meaning, it urges that the additional “I” in its mark transforms the meaning of the word―e.g., JED v. JEDI, TAX v. TAXI.13 Applicant concludes that the differences in sight, sound and meaning weigh strongly against a likelihood of confusion. However, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (emphasis in original; quoting Kabushiki 11 Applicant’s brief p. 9, 15 TTABVUE 11. 12 Applicant’s brief p. 10, 15 TTABVUE 12. 13 Applicant’s brief p. 10, 15 TTABVUE 12. Opposition No. 91224804 - 8 - Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992)). Here we agree with Opposer that there is similarity in virtually all respects. In appearance, Applicant’s stylized lettering does not differentiate it because Opposer’s standard character mark “could be displayed in any size, color, or font, including a size, color, and font identical to those in Applicant’s mark.” In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1742-43 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, 98 USPQ2d at 1258‒59). The small semi-circle design dotting the “I” in Applicant’s mark makes little or no difference. See In re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014) (“As for the raised dots and periods in the mark, they are unpronounceable and contribute very little to the overall commercial impression of the mark.”). The literal portion―the part used by purchasers to request the goods―is normally accorded greater weight in determining whether marks are confusingly similar. In re Viterra, 101 USPQ2d at 1908, 1911. Applicant’s mark incorporates Opposer’s entire ROOT mark, which increases the likelihood of confusion. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) (CALIFORNIA CONCEPT with surfer logo for men’s hair and cosmetic products confusingly similar to CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause Opposition No. 91224804 - 9 - confusion with BENGAL for gin). As the first four letters in Applicant’s five-letter mark, ROOT is its most prominent, dominant component. See Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”). Applicant does not suggest that ROOT is pronounced differently in either mark. The only difference in sound is the letter “I” at the end of Applicant’s mark. While there is no one correct pronunciation of a mark, see In re Viterra Inc., 101 USPQ2d at 1912, Applicant’s letter “I”, whether pronounced as a long “E” or a long “I”, is a minor subordinate suffix, which fails to differentiate the marks meaningfully. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (“[T]he presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical.”). In fact, “[t]he general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto. Thus, ‘if the dominant portion of both marks is the same, the confusion may be likely notwithstanding peripheral differences.’” In re Jump Designs, 80 USPQ2d 1370, 1375 (TTAB 2006) (quoting TMEP § 1207.01 (b)(iii)). It is true, as Applicant suggests, that the addition of an “I” can sometimes transform the meaning of a word, but that transformation generally takes place when Opposition No. 91224804 - 10 - the addition forms a new, familiar word, as in JEDI and TAXI. Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR! for household cleaner not confusingly similar to ALL for household cleansing products). But here there is no such transformation. Purchasers normally retain a general rather than a specific impression of trademarks, Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016), so they would most likely focus on the marks’ common root element, ROOT, disregarding the one-letter suffix.14 In terms of connotation, “root” is “something resembling or suggesting the root of a plant in position or function,” “the fundamental or essential part,” or “the source or origin of a thing,”15 and both parties use ROOT in this sense. Opposer’s Director of Marketing Communications, Kristen Budreau, testified that it uses ROOT for a medical monitor to which various medical sensors attach: “an in-room hub.”16 Its annual report referred to “The root of our inspiration – the healing connection 14 We do not accept Opposer’s suggestion that the “I” at the end of Applicant’s mark would be associated with “Internet.” As Applicant points out, “while the use of the letter ‘I’ at the beginning of a word has become common shorthand for Internet, the letter is not used for this purpose when placed at the end of the word. There is no basis in the record for the Opposer to contend otherwise.” Nor do we credit Opposer’s suggestion that the “I” represents the word “index.” As Applicant observes, the examples on which Opposer relies were acronyms, such as PVI for Pleth Variability Index or ORI for Oxygen Reserve Index. “As ‘root’ does not represent an acronym,” Applicant notes, “there is no basis for consumers to ascribe the ‘index’ meaning in this case.” We agree. The letter “I” fails to distinguish the parties’ marks, not because it is descriptive, but because it is subordinate to the dominant component ROOT. 15 Dictionary.com, Random House Dictionary (2017). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d at 1229n.4, aff’d 118 USPQ2d 1632 (Fed. Cir. 2016); In re Hodgdon Powder Co., 119 USPQ2d 1254, 1256n.5 (TTAB 2016). 16 Budreau dep. 19:7-24, 13 TTABVUE 22. Opposition No. 91224804 - 11 - between patients and their caring caregivers….”17 Applicant, in its discovery responses, admits that goods bearing its mark are used for health monitoring,18 and states that “Applicant conceived the name and mark to represent its focus on human health. Applicant chose the ‘ROOT’ component as a ‘foundation’ for this purpose and the ‘I’ to represent ‘human,’ thus conveying the notion of caring for the health of ourselves, families and friends. Applicant also owns pending application Serial No. 86419252 for the mark which design implies the roots of a tree in support of the central concept and the goal of developing products that improve health and life. …”19 Hence, the dominant term ROOT in Applicant’s mark is intended to convey the same or similar connotation as Opposer’s ROOT mark. In sight, sound, and meaning, the dominant portion of Applicant’s mark is the same as Opposer’s mark. While “the similarity or dissimilarity of the marks is determined based on the marks in their entireties … there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.” Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). Despite Applicant’s addition of a peripheral suffix, and despite its stylization and 17 Budreau dep. 26:9-11, 13 TTABVUE 29. 18 Applicant’s Responses to Opposer’s Request for Admission Nos. 1-3, Opposer’s Notice of Reliance, 9 TTABVUE 37-38. 19 Applicant’s Answer to Interrogatory No. 3, Opposer’s Notice of Reliance, 9 TTABVUE 16. Opposition No. 91224804 - 12 - design, the marks, taken in their entireties, are highly similar in overall commercial impression. For these reasons, the first DuPont factor weighs in favor of finding a likelihood of confusion. B. Similarity of the Goods Under the second DuPont factor, we consider the similarity or dissimilarity of Applicant’s and Opposer’s goods. DuPont, 177 USPQ at 567. We base our evaluation on the goods as they are identified in the application and registration. Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).20 Opposer’s identification of goods reads “medical devices, namely patient monitors and patient sensors for monitoring and measuring blood properties, respiration, exhaled gases or brain function.” Opposer contends that the following International 20 Opposer also claims common law rights in the ROOT mark. Notice of Opposition ¶ 5, 1 TTABVUE 7, Opposer’s brief p. 25, 14 TTABVUE 32. But its pleadings, briefing and record evidence do not clarify how these claimed common law rights differ from its rights under its cited registration―either as to goods covered or duration of use. Opposer alludes generally to a variety of health measurement devices it has offered under other marks, such as RADICAL- 7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7, Opposer’s brief pp. 8-11, 14 TTABVUE 15-18. And it claims a “zone of natural expansion” for its ROOT mark into the product lines it offers under these other marks. Opposer’s brief p. 29, 14 TTABVUE 36. As our ensuing analysis demonstrates, this evidence may be relevant to show how various sensors can be connected to the ROOT monitor and used in a complementary manner, but it does not demonstrate common law rights in the ROOT mark that differ in any meaningful way from the rights asserted under Opposer’s registration. And since the goods identified in Opposer’s registration are similar or related to Applicant’s identified goods, as we ultimately find, we do not need to reach or rely upon Opposer’s asserted “zone of natural expansion” argument. See generally Orange Bang, Inc. v Ole Mexican Foods, Inc., 116 USPQ2d 1102 (TTAB 2015) (no need to apply natural zone of expansion analysis). Opposition No. 91224804 - 13 - Class 10 goods in the subject application are identical to the goods identified in its cited registration: • Pulse and heartbeat measuring devices; • Heartbeat measuring apparatus; • Electrocardiographic (ECG) recorders; and • Blood pressure measuring apparatus.21 In response to this list, Applicant “does not dispute this point as the identification is currently drafted.”22 More generally, Applicant admits that certain of the goods identified in the involved application are used for health monitoring,23 such as monitoring for heart arrhythmia and blood pressure.24 Applicant argues, however, that these four identified goods refer to its “wearable consumer product,” unlike the pleaded registration, which “is restricted to ‘patient monitors and patient sensors’ and therefore restricted to medical professional and not consumer use.”25 But the application identifies inter alia devices “for medical use” including “medical examination apparatus, namely wireless monitors intended for use by healthcare professionals….” And Applicant does not limit its Class 10 goods to “consumer use.” The Board does not read limitations into an unrestricted application. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) cited 21 Opposer’s brief p. 26, 14 TTABVUE 33. 22 Applicant’s brief p. 11, 15 TTABVUE 13. 23 Applicant’s Responses to Opposer’s Request for Admission Nos. 1-3, Opposer’s Notice of Reliance, 9 TTABVUE 37-38. 24 Applicant’s Answer to Interrogatory No. 14, 9 TTABVUE 20. 25 Id. (emphasis in original). Opposition No. 91224804 - 14 - in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *3; In re Mr. Recipe, 118 USPQ2d at 1091. Since Applicant has conceded that its measuring devices are identical to those in the cited registration, the similarity of marks needed to support a determination that confusion is likely declines as to those goods. See Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012). Furthermore, a likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods or services for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190 (TTAB 2014). Although Applicant’s Class 9 goods are not identical to Opposer’s goods, they are still sufficiently related to engender a likelihood of confusion. “It is not necessary that these goods be identical or even competitive to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such, that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods.” In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Here, Opposer’s ROOT monitor “provides a hub for monitoring and transmitting medical data from a patient to doctors, nurses and other medical personnel….”26 It 26 Budreau dep. 19:8-20:7, 13 TTABVUE 22-23. Opposition No. 91224804 - 15 - monitors multiple data sources, measuring blood pressure, blood oxygen level, respiration, pulse rate, exhaled gases and brain functions, and other parameters.27 It then displays this data: 28 Opposer’s website (introduced in Applicant’s Notice of Reliance) describes the ROOT monitor: 27 Id. 28 (showing RADICAL 7 handheld monitor docked at ROOT monitor), Opposer’s brief p. 12, 13, 14 TTABVUE 19, 20; Budreau dep. 27:10-12, Ex. 5, 13 TTABVUE 30, 140. Opposition No. 91224804 - 16 - 29 Opposer’s ROOT monitor connects with many third-party medical devices, from which it collects, monitors, displays and transmits data, creating a comprehensive electronic medical record.30 Applicant’s identified goods in Class 9 are, in pertinent part: Computer software for using in database management of data mining for healthy care, home care, foodstuff, travel, life style or medical information; Computer software and hardware for using cloud computing in network management for healthy care, home care, foodstuff, travel, life style or medical information; … Wearable digital electronic devices comprised primarily of software and display screens for analytic reports of algorithms results and cloud computing for viewing, sending and receiving texts, emails, data and 29 www.masimo.com, Applicant’s First Notice of Reliance exhibit 1, 10 TTABVUE 7. 30 Opposer’s brief pp. 13, 20, 14 TTABVUE 20, 27; Budreau dep. 28:8-20, 13 TTABVUE 31; www.masimo.com, Applicant’s First Notice of Reliance exhibit 1, 10 TTABVUE 8. Opposition No. 91224804 - 17 - information from smart phones, tablet computers and portable computer…. Applicant maintains that these goods are health monitoring devices for general use by consumers, unlike Opposer’s goods, which are expensive sensors used by health care professionals to monitor patients.31 But once again, the identification in the application is not so limited. In re Mr. Recipe, 118 USPQ2d at 1091. We must consider the application and registration to include all goods of the type identified. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013). Moreover, as Applicant’s discovery responses reveal, its goods complement Opposer’s ROOT monitors: • Interrogatory No. 17 Describe how the goods or services in use, or intended to be in use, with Applicant's Mark interface with professionals in the healthcare or medical industries. Response to Interrogatory No. 17 Applicant’s devices can be recommended by doctors or other health professionals. All of the vital data of the patients or other users are uploaded to a cloud-based data center via smart phone or Wi Fi. Doctors and their patients can login to Applicant’s platform to access reports and historical data trends.32 • Interrogatory No. 37 In response to Opposer’s interrogatory No. 12, Applicant states that its “initial focus is on health wearables.” Describe in detail what are “health wearables.” Response to Interrogatory No. 37 31 Applicant’s brief pp. 12-14, 15 TTABVUE 14-16. 32 Opposer’s Notice of Reliance, 9 TTABVUE 20-21. Opposition No. 91224804 - 18 - Health wearables are smart devices worn on the body that measure core health data such as blood pressure, vision quality, and body temperature.33 • Request for Admission No. 1 Admit that Applicant’s Mark is used in connection with an interactive healthcare platform. Response to Request No. 1 Admitted.34 • Request for Admission No. 2: Admit that goods bearing Applicant's Mark are used for health monitoring. Response to Request No. 2 Admitted.35 • Request for Admission No. 3 Admit that goods bearing Applicant’s Mark are used for continuous hea1th monitoring. Response to Request No. 3. Admitted.36 • Request for Admission No. 8 Admit that goods bearing Applicant’s Mark allow persons to monitor health information. Response to Request No. 8 Admitted.37 • Request for Admission No. 9 33 Opposer’s Notice of Reliance, 9 TTABVUE 33. 34 Opposer’s Notice of Reliance, 9 TTABVUE 37. 35 Opposer’s Notice of Reliance, 9 TTABVUE 38. 36 Opposer’s Notice of Reliance, 9 TTABVUE 38. 37 Opposer’s Notice of Reliance, 9 TTABVUE 39. Opposition No. 91224804 - 19 - Admit that goods bearing Applicant’s Mark allow Health Professionals to monitor health information. Response to Request No. 9 Admitted.38 • Request for Admission No. 11 Admit that goods bearing Applicant’s Mark provide a platform for Health Professionals to monitor patients’ biometric data. Response to Request No. 11 Admitted.39 • Request for Admission No. 23 Admit that goods bearing Applicant’s Mark transmit hea[l]th data electronically. Response to Request No. 23 Admitted.40 • Request for Admission No. 32 Admit that goods bearing Applicant’s Mark are intended for use by Health Professionals for surveillance of physiological data. Response to Request No. 32 Admitted.41 • Request for Admission No. 33 Admit that Healthcare Professionals may use Applicant’s goods to monitor patient biometric data. Response to Request No. 33 38 Opposer’s Notice of Reliance, 9 TTABVUE 39. 39 Opposer’s Notice of Reliance, 9 TTABVUE 39. 40 Opposer’s Notice of Reliance, 9 TTABVUE 41. 41 Opposer’s Notice of Reliance, 9 TTABVUE 43. Opposition No. 91224804 - 20 - Admitted.42 Applicant’s discovery responses do not differentiate between its Class 9 and Class 10 goods, and its identifications of goods in both classes, quoted above, are broadly worded enough to encompass health care monitoring devices. Indeed, Applicant’s own promotional materials confirm that health care professionals as well as patients use Applicant’s branded goods: 43 As the foregoing evidence demonstrates, Applicant’s goods are similar and highly related to Opposer’s ROOT-branded goods. Health care professionals recommend Applicant’s wearable devices to patients, and the devices monitor and transmit the patients’ health data electronically to a platform where the data may be reviewed by the patients and/or the health care professionals. Applicant’s wearable devices thus 42 Opposer’s Notice of Reliance, 9 TTABVUE 43. 43 Opposer’s Notice of Reliance, Requests for Admission Exhibit 1, 9 TTABVUE 54 (highlighting added); see also Applicant’s Responses to Requests for Admission 36-39, confirming quotes from the exhibit, 9 TTABVUE 44-45. Opposition No. 91224804 - 21 - resemble third-party medical devices that connect to Opposer’s ROOT monitors. “If goods are complementary in nature, or used together, this relatedness can support a finding of likelihood of confusion.” In re Cook Medical Technologies, LLC, 105 USPQ2d 1377, 1380 (TTAB 2012) (citing In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)). In short, the parties’ ROOT and branded goods would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. See Thor Tech Inc., 90 USPQ2d at 1635. For these reasons, the second DuPont factor also weighs in favor of finding a likelihood of confusion. C. Similarity of Channels of Trade The third DuPont factor concerns the similarity or dissimilarity of the parties’ established, likely-to-continue trade channels. DuPont, 177 USPQ at 567. Applicant stresses that Opposer’s products are marketed to medical professionals. For example, Opposer’s promotional materials regarding its ROOT monitor, as used in connection with its SEDLINE brand sensor monitoring electroencephalogram (EEG) brain function signals, cautions that “Federal (USA) law restricts this device to sale by or on the order of a physician.”44 In addition, Applicant contends, “Registrant’s goods are very expensive and marketed to sophisticated medic[al] 44 Budreau dep. ex. 10, 13 TTABVUE 261-261. Opposition No. 91224804 - 22 - professionals. In stark contrast, Applicant’s goods are relatively inexpensive and marketed to general consumers.”45 As Opposer points out, however, “Applicant concedes that many of the goods identified in this application are ‘essentially identical’ to the goods in Opposer’s pleaded registration.”46 “It is well established that absent restrictions in the application and registration, [identical] goods and services are presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra, 101 USPQ2d at 1908.Here, Applicant has conceded that four of its identified goods, used the monitor heart rate and blood pressure, are essentially identical to Opposer’s.47 “Because the goods are in-part identical, the identical goods are presumed to travel in the same channels of trade to the same classes of purchasers.” Bond v. Taylor, 119 USPQ2d at 1053. The parties’ remaining identified goods contain no limitations, see SquirtCo, 216 USPQ at 940, so we must presume that they would be sold in all usual channels of trade to all normal potential purchasers. See In re Viterra, 671 F.3d at 1362, quoted in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *8. As discussed above, it is apparent from the record evidence that the parties’ goods are complementary. As Applicant stated in its answer to Interrogatory no. 17: Applicant’s devices can be recommended by doctors or other health professionals. All of the vital data of the patients or other users are uploaded to a cloud-based data center via smart phone or Wi Fi. 45 Applicant’s brief p. 6, 15 TTABVUE 8. 46 Opposer’s reply brief p. 2, 16 TTABVUE 6. 47 Applicant’s brief p. 11, 15 TTABVUE 13. Opposition No. 91224804 - 23 - Doctors and their patients can login to Applicant’s platform to access reports and historical data trends.48 The goods are so complementary that health care providers could recommend Applicant’s goods, and patients or other adult users could purchase them in the expectation that they would be compatible with Opposer’s monitors. See In re Davia, 110 USPQ2d at 1816 (complementary goods likely to travel in same channels of trade to same class of customers). This confluence of trade channels and purchasers weighs in favor of finding a likelihood of confusion under the third DuPont factor. D. Purchaser Sophistication and Degree of Care The fourth DuPont factor concerns the conditions under which and buyers to whom sales are made, i.e., “impulse” versus careful, sophisticated purchasing. DuPont, 177 USPQ at 567. Applicant, true to its prior position, maintains that Opposer’s “‘patient monitors and patient sensors’ would be sold to medical professionals, not to general consumers. … Importantly, Opposer’s registered goods are very expensive and typically sell for upward of $2,000. … In stark contrast, the evidence of record shows that Applicant’s goods, namely its wearable devices, are sold to general consumers in the $30-$100 range.”49 Applicant’s argument calls to mind Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010). In that case, opposer’s heart monitors cost $14,000 48 Opposer’s Notice of Reliance, 9 TTABVUE 20-21. 49 Applicant’s brief pp. 14-15, 15 TTABVUE 15-16. Opposition No. 91224804 - 24 - apiece, and the applicant’s computer monitoring system for possible adverse drug events cost $47,000 per license, and both were purchased by experienced hospital personnel after significant study and negotiations. So this DuPont factor weighed against a likelihood of confusion. Id. at 1413. In this case, however, there is no record evidence of the cost of Opposer’s ROOT monitoring goods. The $30 to $100 range to which Applicant alludes in its brief refers to the price of its CliMate Environment Tracker,50 not its monitors for pulse rate, blood pressure, and the like. So the asserted price differential is unproven. Moreover, as Opposer points out, its ROOT monitor is compatible with third-party measurement devices, so “relevant consumers are accustomed to seeing Opposer’s marks used with other authorized medical device company’s products.”51 Applicant’s wearable devices are not only compatible with but complementary to Opposer’s ROOT monitors. In these circumstances, even sophisticated hospital purchasers exercising care in their purchases may be confused by highly similar marks. See, e.g., In re Toshiba Medical Sys. Corp., 91 USPQ2d 1266, 1273-74 (TTAB 2009) (even sophisticated hospital purchasers could be confused by marks TITAN and VANTAGE TITAN on ultrasound and MRI diagnostic apparatus, respectively); In re Cook Medical Tech., 105 USPQ2d at 1383 (where applicant’s medical guiding sheaths were compatible with opposer’s catheters, “[w]e find that the similarities between the marks and the goods sold thereunder outweigh any sophisticated purchasing 50 12 TTABVUE 10-12; see Applicant’s Answer to Interrogatory no. 34, 9 TTABVUE 31. 51 Opposer’s brief p. 32, 14 TTABVUE 39; see Budreau dep. 28:8-20, 13 TTABVUE 31; www.masimo.com, Applicant’s First Notice of Reliance exhibit 1, 10 TTABVUE 8. Opposition No. 91224804 - 25 - decision, especially in the absence of evidence relating to the degree of care in making the decision.”). Indeed, given the similarity between Opposer’s and Applicant’s marks, “careful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the goods, but will see the marks as variations of each other, pointing to a single source.” In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014). And if health care professionals are susceptible to confusion, their patients, who could purchase Applicant’s ostensibly low-cost devices directly,52 would be even more susceptible to confusion. See Stone Lion, 110 USPQ2d at 1163 (consider least sophisticated potential purchasers.). For these reasons, the fourth DuPont factor is neutral. E. Actual Confusion The seventh and eighth DuPont factors address whether there has been an opportunity for confusion to occur, and if so, whether there is evidence of actual confusion. DuPont, 177 USPQ at 567. Applicant argues that “Opposer has presented no evidence of actual confusion.”53 Proof of actual confusion is not necessary to show a likelihood of confusion. E.g., In re I.AM.Symbolic, LLC, 2016-1507, __F.3d __, 2017 WL 3393456 at *3 (Fed. Cir. 2017); Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. (2002); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 52 See Opposer’s First Notice of Reliance, Applicant’s Answer to Interrogatory no. 10, 9 TTABVUE 18. 53 Applicant’s brief p. 15, 15 TTABVUE 17. Opposition No. 91224804 - 26 - 390, 396 (Fed. Cir. 1983). Moreover, “the absence of evidence of actual confusion, under the seventh du Pont factor, by itself is entitled to little weight in our likelihood of confusion analysis unless there also is evidence, under the eighth du Pont factor, that there has been a significant opportunity for actual confusion to have occurred.” In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1273 (TTAB 2007) (citing Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)). In this case, as Opposer observes, there has been no significant opportunity for actual confusion to occur. The subject application was filed based on Applicant’s claimed intent to use the mark in commerce, and that remains its filing basis. 15 U.S.C. § 1051(b).54 The record does not reflect the extent or duration of use of Applicant’s mark sufficiently to enable us to gauge the opportunity for actual confusion to have occurred in the marketplace. See Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB 2016). Accordingly, the seventh and eighth DuPont factors are neutral. F. Strength of Opposer’s Mark As our primary reviewing court, the Court of Appeals for the Federal Circuit, has stated, marks exist along a spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694). The strength of a mark rests on the extent to which a significant portion of the relevant consuming public 54 Opposer’s reply brief pp. 5-6, 16 TTABVUE 9-10. Opposition No. 91224804 - 27 - recognizes the mark as a source indicator. Id. In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself and its commercial strength, based on the marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength.”); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011). Opposer claims that its ROOT mark is conceptually strong because it is arbitrary for monitors.55 See Nautilus Grp., Inc. v. ICON Health & Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (An arbitrary mark is “a known word used in an unexpected or uncommon way.”). Applicant counters that the term is suggestive: “Like the root of a plant or a tree serving to attach the plant to the ground, the ROOT monitor serves as a ‘hub’ and docking station for the Opposer’s other products as well as complementary third party products. … That is the evidence of record shows that the products are ‘rooted’ or attached to Opposer’s ROOT monitors. It is therefore not arbitrary but highly suggestive in relation to the goods.”56 As we have found, Opposer’s ROOT mark connotes the roots of a tree―a connotation that suggests, metaphorically, the function of its ROOT monitors, to which various health monitoring devices may be attached. This connotation is suggestive, in the sense of requiring imagination, thought or perception to reach a 55 Opposer’s brief p. 21, 14 TTABVUE 28. 56 Applicant’s brief p. 8, 15 TTABVUE 10. Opposition No. 91224804 - 28 - conclusion as to the nature of the goods. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016). While Opposer’s mark is suggestive, it is still inherently distinctive. See generally Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and fanciful marks are deemed inherently distinctive). And “if the mark is inherently distinctive, it is presumed that consumers will view it as a source identifier.” In re Chippendales USA, Inc., 96 USPQ2d at 1685. Furthermore, even if the suggestiveness of Opposer’s mark marginally erodes its conceptual strength, it does not reduce the relative likelihood of confusion between the parties’ marks, because both parties use the term ROOT in the same or similar suggestive sense.57 The commercial strength of Opposer’s mark may be measured indirectly by the volume of sales and advertising expenditures in connection with the products sold under the mark, and other factors such as length of use of the mark, widespread critical assessments; notice by independent sources of the products identified by the mark; and the general reputation of the products. In re Mr. Recipe, 118 USPQ2d at 1086 (citing Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305-06, 1309 (Fed. Cir. 2002)). As the party asserting that its mark is famous, Opposer has the burden of proving it. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Opposer 57 See text above accompanying footnotes 19-23. Opposition No. 91224804 - 29 - claims that its mark achieved fame in the medical device industry when the ROOT monitor was awarded the 2015 GOLD Medical Design Excellence Award, “the highest level of recognition presented in the Medical Design Excellence Award competition, and is the highest achievement awarded in the medical device industry.”58 Opposer further contends that it is “a recognized leader in the U.S. pulse oximeter market, which includes Opposer’s ROOT monitors. Opposer’s annual revenue for 2015 was approximately $650 million. Accordingly, Opposer’s monitors are well-known in the medical industry.”59 Applicant responds that Opposer has failed to carry its burden of proving commercial strength; it has failed to present sales or advertising figures for its ROOT monitor products; it only presented irrelevant evidence as to the company as a whole; and the only consumer recognition it points to is “a fairly obscure industry product design award”; Opposer presented no evidence of recognition among general consumers.60 We consider a mark’s commercial strength with the class of consumers and potential consumers of a product. Palm Bay Imps., 73 USPQ2d at 1694-95. In this case, that would be health care professionals and patients and other members of the public who use the monitoring devices. Opposer’s medical design excellence award would tend to catch the attention of health care professionals, and Opposer has used 58 Opposer’s brief p. 21, 14 TTABVUE 28, citing Budreau Dep. 20:21–22:3, Ex. 2, 13 TTABVUE 23–25, 102–130. 59 Opposer’s brief p. 21, 14 TTABVUE 28, citing Budreau Dep.13:9–13, 13 TTABVUE 16. 60 Applicant’s brief p. 8, 15 TTABVUE 10. Opposition No. 91224804 - 30 - the award to promote its ROOT monitor among them.61 Opposer’s remaining evidence, though, fails to focus on its ROOT mark. Its Director of Marketing Communications testified that Masimo is a widely known, high profile company in the patient monitoring field; that its customers know it as a company that produces a premium product; that it has a very good reputation; that it is growing yearly in sales and revenue, with $630 million in revenue in 2015 and a 40 percent share of the U.S. pulse oximetry market; and that it is expanding, not just in hospital space but in consumer space.62 That evidence may show Opposer’s general popularity, but Opposer has offered a variety of health measurement devices under other marks, such as RADICAL-7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7.63 Its evidence does not demonstrate the commercial strength of its ROOT mark in particular. Thus, Opposer has not proven that its ROOT mark is commercially strong. The fifth DuPont factor is neutral. IV. Conclusion We have considered of all of the evidence of record and all of the parties’ arguments, including evidence and arguments not specifically discussed in this opinion, as it pertains to the relevant DuPont likelihood of confusion factors. The 61 Budreau Dep. 20:21–22:3, Ex. 2, 13 TTABVUE 23–25, 102–130. 62 Budreau Dep.13:9–13, 13 TTABVUE 16. 63 Opposer’s brief pp. 8-11, 14 TTABVUE 15-18. Opposition No. 91224804 - 31 - marks are similar, the goods are in-part identical and in-part complementary and related and move in the same channels of trade. These factors outweigh any purchaser sophistication and care. The evidence as a whole leads us to conclude that there is a likelihood of confusion under Section 2(d). Decision: The opposition is sustained and registration is refused to Application Serial No. 86395592 for the mark .