Novoste Corp.

Trademark Trial and Appeal Board

Feb 15, 2001

No. 75384383 (T.T.A.B. Feb. 15, 2001)

2/15/2001
Paper Nos. 16 and 12
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Novoste Corporation
________
Serial Nos. 75/299,005 and 75/384,383
_______
Jason A. Bernstein of Bernstein & Associates for Novoste
Corporation.
John D. Dalier, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 28, 1997, application S.N. 75/299,005 was filed
to register the mark “BETA-CATH” on the Principal Register
for “radiological apparatus for medical purposes, namely
radiation therapy catheter delivery devices; component
parts thereof, namely, transfer or loading devices,
delivery catheters, radioactive sources, marker seeds,
connectors, receptacles, sterile sheaths, and pumps,
syringes or other devices used to create motive force; and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/299,005 and 75/384,383
2
accessories therefor, namely non-radioactive sources (dummy
or passive sources), passive-run devices (dummy transfer
devices), radioactive source recovery equipment, bail-out
containers, biohazard containers, radioactivity shields,
radiation safe containers, storage containers with
radioactivity shielding, transport cases, tubing, cannulas,
connectors, adapters, extensions, sterile sheaths, sterile
drapes, covers, protectors, timers, and lighting devices,”
in Class 10. Later that year, on November 4, 1997,
applicant filed application S.N. 75/384,383 to register the
mark “β-CATH,” (the Greek symbol for “beta” followed by the
hyphen and the term “CATH”), on the Principal Register for
the same goods. Each application was based on applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with the listed goods.
In each instance, the Examining Attorney refused
registration under Section 2(d) of the Lanham Act on the
ground that if applicant were to use the mark sought to be
registered in connection with the goods specified in the
application, applicant’s mark would so resemble the marks
“BETA” and “BETA C,” which are registered, respectively,
for “ instruments and apparatus for medical diagnosis,
namely, otoscopes, opthalmascopes, laryngoscopes and
Ser Nos. 75/299,005 and 75/384,383
3
endoscopes,” in Class 101, and “medical dose calibrator for
measuring low-level radiation,” also in Class 102, that
confusion would be likely.
Applicant responded to the refusals to register with
arguments that confusion would not be likely because of
differences between the goods specified in the application
and those which are listed in the cited registrations,
differences between the marks themselves, and the
sophistication level of purchasers of these products. Both
applications were amended to add the word “therapeutic” to
the first clause, so that it now reads “radiological
apparatus for medical therapeutic purposes.”
The Examining Attorney was not persuaded by these
arguments, and in the second round of Office Actions, he
made final the refusals to register under Section 2(d) of
the Act. Attached in support of these actions were copies
of a number of third-party registrations. In one group,
the identification-of-goods clauses in the registrations
include both endoscopes and catheters. In the second
group, the third-party registration identification-of-goods
clauses list both diagnostic products and therapeutic
1 Reg. No. 2,071,509, issued on the Principal Register to Hein
Optotechnik GmbH & Co., a corporation of the Federal Republic of
Germany, on June 17, 1997.
2 Reg. No. 1,966,973, issued on the Principal Register to
Capintec Inc., a Delaware corporation, on May 22, 1995.
Ser Nos. 75/299,005 and 75/384,383
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goods. The Examining Attorney argued that the first group
of registrations demonstrates that purchasers have a basis
upon which to expect endoscopes and catheters bearing
similar trademarks to emanate from the same source. The
second group of third-party registrations is argued to
support the Examining Attorney’s conclusion that diagnostic
and therapeutic products bearing similar marks can be
expected to come from a single source.
Applicant timely filed Notices of Appeal in both
applications, followed by appeal briefs. The Examining
Attorney filed his briefs on appeal and applicant filed
reply briefs. Then applicant requested and was granted
suspension of action on the appeals and remands to the
Examining Attorney for consideration of additional
evidence, but the Examining Attorney was not persuaded to
withdraw the refusal to register in either case, and both
applications were returned to the Board for resumption of
action on the appeals.
Because of the similarity of the facts and issues
involved, these two appeals were consolidated by action of
the Board on November 27, 2000. Applicant did not request
an oral hearing before the Board.
Based on careful consideration of the records and
arguments before us in light of the relevant legal
Ser Nos. 75/299,005 and 75/384,383
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authority on this issue, we find that if applicant were to
use the two marks it here seeks to register in connection
with the products specified in the applications, confusion
would be likely with the two cited registered marks. In
connection with the goods listed in the applications and
the cited registrations, these marks are similar because
they create similar commercial impressions and the goods
listed in the applications and the cited registrations,
respectively, are related.
Our primary reviewing court, in the case of In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973), listed the principal factors to be considered in
determining whether there is likelihood of confusion under
Section 2(d) of the Lanham Act. As is frequently the case,
in the case at hand, the most relevant of these factors are
the similarity of the marks and the similarity of the
goods. First we will discuss these similarities as they
relate to the mark and goods in Reg. No. 2,071,509. Then
we will discuss the similarities in connection with the
mark and goods in Reg. No. 1,966,973.
The registration for the mark “BETA,” as noted above,
lists the goods as “instruments and apparatus for medical
diagnosis…” and includes “endoscopes” in the list that
follows. “BETA” is similar to both of applicant’s proposed
Ser Nos. 75/299,005 and 75/384,383
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marks, “BETA-CATH” and its equivalent in pronunciation and
connotation, “β-CATH.” These two marks take the registered
mark “BETA” or the Greek symbol for the registered mark
“BETA” and add hyphens and “CATH,” which is a suggestive
term in connection with applicant’s catheter device.
Simply adding a suggestive term to a registered mark or its
equivalent in this fashion is not sufficient to overcome
the likelihood of confusion. Cocoa-Cola Bottling Company
v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ
105 (CCPA 1975).
Applicant’s argument that the Examining Attorney has
had to improperly dissect its marks in order to conclude
that they are similar to the cited registered marks is not
persuasive. While we have considered the marks in their
entireties, it is well settled that one feature of a mark
may be recognized as more significant in creating the
commercial impression for a mark, and that greater weight
is given to that dominant feature in determining whether
confusion is likely. “CATH” is clearly less significant in
applicant’s marks because of its suggestive nature in
connection with applicant’s products. The term “BETA” and
the Greek alphabet equivalent of it have more source-
identifying significance in these circumstances, and it is
Ser Nos. 75/299,005 and 75/384,383
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the term “BETA” which is the registered mark in its
entirety.
The goods in this registration are related to the
products listed in both applications. The evidence made of
record by the Examining Attorney establishes this. It
shows that third parties have registered their marks for
both catheters and endoscopes, applicant’s goods and one of
the products listed in the cited registration. From this
evidence we can conclude that prospective purchasers of
these products have a basis upon which to expect them to
emanate from a single source if the marks use thereon are
similar. Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).
Applicant argues that the goods identified in the
applications are not related to those specified in this
registration because applicant’s goods are for therapeutic
use and the goods in the cited registration are used for
diagnosis. This argument is not well taken. The second
group of third-party registrations made of record by the
Examining Attorney shows that the use of similar marks on
both types of products would be understood as an indication
that they come from the same source.
If “BETA-CATH” or its equivalent, “β-CATH,” were to be
used in connection with the goods set forth in these
Ser Nos. 75/299,005 and 75/384,383
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applications, confusion would be likely in view of the
registered mark “BETA” for related products.
We thus turn to the cited registration of the mark
“BETA C” for “medical dose calibrator for measuring low-
level radiation.” Confusion between the marks applicant
seeks to register and this mark would be likely because
applicant’s marks are similar to this mark and the record
shows that the medical device identified in the
registration is commercially related to the medical device
identified in both applications.
“β-CATH,” “BETA-CATH” and “BETA C” are similar because
they create similar commercial impressions. As noted
above, the two marks applicant seeks to register are
essentially equivalents. The cited registered mark
“BETA C” would be understood by anyone familiar with
applicant’s marks to be an abbreviation of them, replacing
the term “CATH” in applicant’s mark with its initial
letter, “C.” Applicant’s marks are similar to the cited
registered mark because they share the same dominant
component, “BETA” or its Greek equivalent, and the
commercial impressions they generate in connection with the
medical devices specified in the applications and the
registration are accordingly similar.
Ser Nos. 75/299,005 and 75/384,383
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The issue then becomes whether the goods are related
in such a way that the use of these similar marks on them
is likely to cause confusion. It is well settled that the
goods do not have to be identical or even directly
competitive in order to find that the use of similar marks
on them is likely to cause confusion. They need only be
related in some manner, or the conditions surrounding their
marketing be such that they could be encountered by the
same purchasers under circumstances that could give rise to
the mistaken belief that the goods come from a common
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
The promotional materials submitted by applicant
show that the goods specified in the applications are
catheters used to deliver intravascular radiation to
prevent the problem of restenosis in patients. Applicant’s
product is a hand-held system which uses hydraulic pressure
to send a train of radioactive seeds through a catheter.
After the seeds have remained at a lesion site for a
specific length of time, the isotopes are hydraulically
returned to the transfer device, which stores the radiation
source when it is not in use. The product specified in the
cited registration is a “medical dose calibrator for
measuring low-level radiation.” These medical devices can
Ser Nos. 75/299,005 and 75/384,383
10
clearly be used in close conjunction with each other during
radiation therapy and treatment. Both are medical devices
used in radiation therapy, so they would be encountered by
the same people under circumstances which would be likely
to lead to the mistaken assumption, based on the
similarities discussed above between the marks, that a
single source is responsible for both.
Applicant’s argument that confusion would not be
likely with respect to either of its marks vis-à-vis either
of the cited registered marks because of the sophistication
of the purchasers of these goods is not well taken. Simply
put, the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or that they are immune from source
confusion when similar marks are used in connection with
similar products. In re Decombe, 9 USPQ2d 1812 (TTAB
1988).
Applicant’s argument that its products are expensive
and that they therefore must travel in different channels
of trade from those in which the goods set forth in either
of the cited registrations travel is without evidentiary
support. We have no basis upon which to conclude that
applicant’s products, if they are marketed in commerce,
Ser Nos. 75/299,005 and 75/384,383
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will be either more or less expensive than the goods of
either of the owners of the cited registrations.
Similarly unpersuasive is applicant’s argument that
third-party registrations and applications containing the
term “BETA” demonstrate weakness in the term as an
identification of source. Third-party registrations, by
themselves, are entitled to little weight on the question
of likelihood of confusion. In re Hub Distributing, Inc.
218 USPQ 284 (TTAB 1983). They are not evidence of what
happens in the marketplace or that the public is familiar
with those marks, nor does the existence of other similar
marks on the register aid an applicant in registering yet
another mark which is likely to cause confusion with a mark
that is registered. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
1975). In re National Novice Hockey League, Inc., 222 USPQ
638 (TTAB 1984).
Further, although applicant argues that there have
been no incidents of actual confusion, this is not
supported by the record, and even if it were, the lack of
actual confusion would not be persuasive that confusion
would be unlikely if applicant were to use its marks. At
this juncture, although applicant has apparently promoted
its products in this country by using these marks,
Ser Nos. 75/299,005 and 75/384,383
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applicant has not used either mark in connection with the
sale of these products in commerce here, so there has been
little, if any, opportunity for actual confusion to have
occurred. In any event, as the Examining Attorney points
out, it is unnecessary to show actual confusion in order to
establish that confusion is likely. Weiss Associates Inc.
v. HRL associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990).
Any doubt as to whether confusion would be likely must
be resolved in favor of the registrant and against the
applicant, who has a legal duty to select marks which are
totally dissimilar to trademarks already in use in this
field of commerce. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
In summary, confusion would be likely if applicant
were to use either of the marks it here seeks to register
in view of the two cited registrations because the marks
create similar commercial impressions and the goods set
forth in the applications are commercially related to those
specified in the cited registrations.
Decision: The refusals to register under Section 2(d)
of the Act in both applications are affirmed.
Ser Nos. 75/299,005 and 75/384,383
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