Paragon 28, Inc.

Trademark Trial and Appeal Board

Jan 14, 2022

88867461 (T.T.A.B. Jan. 14, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 14, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Paragon 28, Inc. _____ Application Serial No. 88867461 _____ Christina E. Brule, Ph.D., Esq. of Heslin Rothenberg Farley & Mesiti P.C., for Paragon 28, Inc. Michael Larkey, Trademark Examining Attorney, Law Office 116, Elizabeth Jackson, Managing Attorney. _____ Before Bergsman, Shaw, and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Paragon 28, Inc. (“Applicant”) seeks registration on the Principal Register of the mark JOUST BEAMING SCREWS (in standard characters) for the goods listed below: Medical implants, namely, bone screws, made from artificial materials for use in podiatric surgery, namely, exclusively in the foot and ankle and associated surgical instruments for use in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine; sterilization cases for surgical instruments to be used in podiatric surgery and not for Serial No. 88867461 - 2 - minimally invasive surgical devices and equipment or for use in the spine, in International Class 10.1 Applicant disclaims the exclusive right to use the term “Beaming Screw.” The Examining Attorney refused to register Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the previously registered mark JOUST (in standard characters) for “minimally invasive surgical devices and equipment for use in orthopedic surgery,” in International Class 10, as to be likely to cause confusion.2 The Examining Attorney also refused to register Applicant’s mark with respect to “sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive surgical devices and equipment for use in the spine” based on Applicant’s refusal to clarify the description of goods because it is indefinite and too broad. See Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6). Citations to the prosecution history are to the USPTO Trademark Status and Document Retrieval (TSDR) system by page number in the downloadable .pdf format. Citations to the record and briefs refer to TTABVUE, the Board’s online docket system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB 2020). 1 Application Serial No. 88867461 was filed on April 10, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as March 9, 2018. 2 Registration No. 5857774 registered on September 10, 2019. Serial No. 88867461 - 3 - I. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont, 177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances. Any single factor may control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, at *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1533). “Each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). “Two key factors in every Section 2(d) case are the first two factors regarding the similarity or dissimilarity of the marks and the goods or services, because the ‘fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.’” In re Embiid, 2021 USPQ2d 577, at *10 (TTAB 2021) (quoting Federated Foods, Inc. v. Fort Serial No. 88867461 - 4 - Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)); In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. The similarity or dissimilarity of the marks. We turn first to the DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). In comparing marks, we are mindful “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Serial No. 88867461 - 5 - Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). We keep in mind that “[s]imilarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Applicant is seeking to register JOUST BEAMING SCREW and the registered mark is JOUST. The marks are similar because they both feature the word “Joust.” They differ because Applicant has added the term “Beaming Screw.” The MERRIAM WEBSTER DICTIONARY (merriam-webster.com) defines “Joust,” inter alia, as a verb “to fight in combat with lances on horseback” and as a noun as “a combat on horseback between two knights with lances especially as part of a tournament.”3 Because the word “Joust” has no meaning when used in connection with Registrant’s “minimally invasive surgical devices and equipment for use in orthopedic surgery,” it is an arbitrary term entitled to a broad scope of protection or exclusivity of use. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected or uncommon way” and observing that such marks are typically strong); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin 3 June 29, 2020 Office Action (TSDR 9). Serial No. 88867461 - 6 - Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong trademarks). We find that the word “Joust” in Applicant’s mark JOUST BEAMING SCREW is the dominant part of Applicant’s mark because Applicant disclaimed the exclusive right to use “Beaming Screw” in response to the Examining Attorney’s requirement.4 The Examining Attorney presented evidence that “Beaming Screw” is merely descriptive when used in connection with the products described in Applicant’s description of goods and, therefore, required Applicant to disclaim the exclusive right to use it.5 It is well settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing Dixie Rests., 41 USPQ2d at 1533-34 ); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). 4 August 17, 2020 Response to Office Action (TSDR 1 and 5). 5 June 29, 2020 Office Action (TSDR 5). Serial No. 88867461 - 7 - There is nothing improper in stating that, for rational reasons, we give more or less weight to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Nat’l Data Corp., 224 USPQ at 751. Another reason reinforcing the importance of the word “Joust” in Applicant’s mark is its position as the first part of the mark. The lead element of a mark often has a position of prominence because it is more likely that consumers will notice and remember it. See Detroit Athletic, 128 USPQ2d at 1049 (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); 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); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). Thus, the dominant part of Applicant’s mark, the word “Joust,” is identical to the registered arbitrary mark JOUST. Under these circumstances, the fact that Applicant’s mark encompasses Registrant’s entire mark increases the similarity between the two. See, e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar to opposer’s mark CHI both for electric massagers); Coca-Cola Bottling Co. of Memphis, TN, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 Serial No. 88867461 - 8 - (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); In re West Point- Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design for fabrics is likely to cause confusion with WEST POINT for woolen piece goods); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic apparatus). Consumers familiar with Registrant’s JOUST “minimally invasive surgical devices and equipment for use in orthopedic surgery” encountering Applicant’s JOUST BEAMING SCREWS for bone screws used in podiatric surgery may believe that Applicant’s mark identifies a particular line of JOUST products because both marks share the arbitrary word “Joust.” We find that Applicant’s mark JOUST BEAMING SCREW is similar to the registered mark JOUST in appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the goods. In determining whether the goods are related, it is not necessary that the goods be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes that the goods are related in some manner or that conditions and activities surrounding marketing of these goods are such that they would or could be encountered by same persons under circumstances that could, Serial No. 88867461 - 9 - because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Coach Servs., 101 USPQ2d at 1722. The issue here, of course, is not whether purchasers would confuse the respective goods, but rather whether there is a likelihood of confusion as to the source of these goods. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (“[T]he test is not whether consumers would be likely to confuse these goods, but rather whether they would be likely to be confused as to their source.”); In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). We consider the goods as Applicant and Registrant describe them in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, Serial No. 88867461 - 10 - 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). We do not read limitations into the identification of goods. In re i.am.symbolic, LLC, 123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, at *47 (TTAB 2020); In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). Applicant is seeking to register its mark for the goods listed below: Medical implants, namely, bone screws, made from artificial materials for use in podiatric surgery, namely, exclusively in the foot and ankle and associated surgical instruments for use in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine; sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine. Registrant’s description of goods is for “minimally invasive surgical devices and equipment for use in orthopedic surgery.” The Wikipedia.org entry for “orthopedic surgery” defines “orthopedic surgery” as “the branch of surgery concerned with conditions involving the musculoskeletal Serial No. 88867461 - 11 - system.”6 Foot and ankle surgery is sub-specialty of orthopedic surgery.7 It is also a sub-specialty of podiatry.8 Orthopedics is “a branch of medicine concerned with the correction or prevention of deformities, disorders, or injuries of the skeleton and associated structures (such as tendons and ligaments).”9 Podiatry is “the medical care and treatment of the human foot.”10 “Minimally invasive surgery refers to any surgical procedure that is performed through tiny incisions instead of a large opening.”11 During minimally invasive surgery, your MedStar Surgeon will make several small incisions in your skin, typically a few millimeters long. Your surgeon will then insert an endoscope (a long thin tube flexed with a camera and light) into one of the incisions. Images from the endoscope are sent to the monitors in the operating room so that your surgeon can view clear, magnified pictures of the area needing surgery.12 6 June 29, 2020 Office Action (TSDR 15). 7 Id. at TSDR 17. See also Wikipedia.org entry for “foot and ankle surgery” attached to the June 29, 2020 Office Action (TSDR 21). 8 Wikipedia.org entry for “foot and ankle surgery” attached to the June 29, 2020 Office Action (TSDR 21). 9 Examining Attorney’s Brief (11 TTAVUE 26). 10 Merriam-Webster Dictionary (merriam-webster.com) (accessed January 11, 2022). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 11 “Surgical Services,” MedStar Health website (medstarfranklinsquare.org) attached to the October 26, 2020 Office Action (TSDR 32). 12 Id. Serial No. 88867461 - 12 - “Minimally Invasive Foot Surgery (MIFS) uses the latest advanced technology to treat foot and ankle pain caused by a variety of conditions.”13 Special surgical instruments, devices and advanced imaging techniques are used to visualize and perform the surgery through small incisions. The aim of MIFS is to minimize damage to the muscles and surrounding structures enabling faster recovery and less pain. ___ Minimally invasive foot surgery is performed through very small incisions. Through these small incisions, segmental tubular retractors and dilators are inserted to retract muscles away from the operative area and provide access to the affected area of the foot. This minimizes damage to the muscles and soft tissues and lessens blood loss during surgery. An endoscope, a thin telescope-like instrument with a video camera on the end is inserted. Sometimes surgical microscopes may also be used to magnify the visual field. Once the surgery is complete, the tissues fall back in place, as the various instruments are removed. The incision is then closed and covered with surgical tape.14 “When a medical device is placed within a patient during such a surgery, it is a minimally invasive device.”15 Specialists performing minimally invasive foot surgery may use screws and implants for fixing bones.16 13 New England Orthopedic Surgeons website (neortho.com) attached to the October 26, 2020 Office Action (TSDR 35). 14 Id. at TSDR 35-36. 15 “What are minimally invasive devices?” Medical Design & Outsourcing website (medicaldesignandoutsourcing.com) attached to the October 26, 2020 Office Action (TSDR 26). 16 Gelen-Klinik website (joint-surgeon.com) attached to the October 26, 2020 Office Action (TSDR 16-17). Although this is a German website, we find that purchasers of the products at issue may encounter this website because it dispenses medical information. See In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017) (“Potential consumers of Applicant’s scientific research services and product testing services are likely to encounter the foreign websites as part of a search for companies that offer services related to the research, testing and development of products that are designed to improve one’s health and Serial No. 88867461 - 13 - Inasmuch as foot and ankle surgery is a sub-specialty of orthopedic surgery and podiatry, podiatric surgery includes minimally invasive foot surgery, and screws may be used in minimally invasive foot surgery, Registrant’s “minimally invasive surgical devices and equipment for use in orthopedic surgery” is broad enough to encompass Applicant’s “medical implants, namely, bone screws, made from artificial materials for use in podiatric surgery, namely, exclusively in the foot and ankle and associated surgical instruments for use in podiatric surgery. See In re Solid State Design Inc., 125 USPQ2d 1409, 1413-14 (TTAB 2018) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Applicant argues to the contrary. [T]he goods associated with the Registered Mark are limited to “minimally invasive surgical devices and equipment” whereas the Applicant’s goods are specifically limited to exclude such “minimally invasive surgical well-being, particularly research that can be applied to indoor environments such as a workplace.”), aff’d, 749 F. App’x 987 (Fed. Cir. 2018); In re Int’l Bus. Machs. Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006) (web page from foreign source considered because case involved computer technology, and “it is reasonable to consider a relevant article regarding computer hardware” from an English-language website from another country); In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (professionals in medicine, engineering, computers, telecommunications and other fields are likely to utilize all available resources, regardless of country of origin or medium, and the Internet is a resource that is widely available to these same professionals and to the general public in the United States). Serial No. 88867461 - 14 - devices and equipment.” Therefore, the goods are not identical.17 First, we do not have to find the goods to be identical to find the goods related for purposes of the likelihood of confusion analysis. As indicated above, the issue is whether consumers will perceive the goods as emanating from the source. Second, Registrant’s minimally invasive surgical devices encompass devices that foot surgeons may use in minimally invasive foot surgery (i.e., podiatric surgery), including screws. Although Applicant’s goods exclude “minimally invasive surgical devices and equipment,” its goods do include bone screws used in podiatric surgery. Thus, both Applicant’s description of goods and Registrant’s description of goods include surgical screws that may be used in foot surgery. Applicant also argues that the Applicant and Registrant use the goods in different fields. The differences in the medical fields (i.e. [Registrant’s] spine surgery versus [Applicant’s] foot and ankle surgery) between Applicant’s Mark and Registrant’s Mark are significant in that these fields require entirely different sales personnel and expertise from each other. And further, any products that are for minimally invasive procedures have an even higher level of training.18 17 Applicant’s Brief, p. 7 (9 TTABVUE 8). See also id. at p. 9 (9 TTABVUE 10) (Applicant’s description of goods excludes the products from being minimally invasive surgical devices and from being used in spinal surgery). 18 Applicant’s Brief, p. 8 (9 TTABUE 9). See also id. at pp. 9-10 (9 TTABVUE 10-11) (Registrant’s products are limited to minimally invasive surgical devices used in orthopedic surgery and Applicant’s products exclude minimally invasive surgical devices in orthopedic surgery and “Registrant specializes in the production and sale of surgical devices and equipment for use in the spine.”). Serial No. 88867461 - 15 - Notwithstanding Applicant’s argument and evidence regarding the actual scope of its own and the cited Registrant’s commercial use of its mark, we may not limit, by resort to extrinsic evidence, the scope of goods as identified in the cited registration or in the subject application. E.g., Dixie Rests., 41 USPQ2d at 1534; In re Fisher Scientific Co., 440 F.2d 43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that we find any item encompassed by the identification of goods in a particular class in the application and registration related. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re St. Julian Wine Co., 2020 USPQ2d 10595, at *3-4 (TTAB 2020). We find Applicant’s bone screws used in podiatric surgery are in part legally identical to Registrant’s “minimally invasive surgical devices and equipment for use in orthopedic surgery.” C. Established, likely-to-continue channels of trade and classes of consumers. Because the goods described in the application and the cited registration are in part legally identical, we presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 101 USPQ2d at 1908 (identical goods Serial No. 88867461 - 16 - are presumed to travel in same channels of trade to same class of purchasers) (cited in Cai v. Diamond Hong, Inc., 127 USPQ2d at 1801) (“With respect to similarity of the established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods….’”). Applicant argues that there is no overlap in the channels of trade and classes of consumers because Applicant’s goods are sold by highly trained staff to podiatrists and other surgical specialists who only perform surgical procedures in the niche foot and ankle space while Registrant’s goods are sold by different sales persons who sell to medical professionals who only practice spine surgery.19 In an ex parte proceeding, we are required to give “full sweep” to Registrant’s identified goods. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 177 USPQ at 77-78; In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). Absent restrictions in the registration, we must presume Registrant offers its goods in the same channels of trade to the same classes of consumers as Applicant’s goods. In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). 19 Applicant’s Brief, p. 8 (9 TTABVUE 9). Serial No. 88867461 - 17 - D. Conditions under which and consumers to whom sales are made (i.e., impulse v. careful, sophisticated purchasing). Applicant contends that there is no likelihood of confusion because “the least sophisticated purchaser of the Applicant’s goods is not the public, but rather is highly likely to be a medical professional.”20 Applicant’s co-founder and Chief Technology Officer testified about the sales process. Applicant employs a direct sales force to market the identified goods to specific consumers, e.g., surgeons who specialize in foot and ankle surgery, podiatrists, and their professional colleagues, such as physician assistants and surgical nurses. Applicant’s sales force is highly trained in the goods themselves and the unique niche in the medical field, e.g., podiatric medicine, in which the goods are used. This highly trained sales force follows specific call patterns to target podiatrists and specialized surgeons and are further able to provide support to the customer.21 Applicant further contends that the professionals that its products are marketed to are highly sophisticated, discriminating purchasers.22 It has long been recognized that purchasers of medical equipment, whether hospital personnel or physicians, are highly sophisticated and, as such, are more likely to distinguish between marks and goods than is the general consuming public. In re N.A.D., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985) (“The record shows the machines to be elaborate, sizeable, complex pieces of technical apparatus of the kind which would be purchased only in consultation with an anesthesiologist or someone with equivalent technical 20 Applicant’s Brief p. 5 (9 TTABVUE 6). 21 Frank Bono Decl. ¶5 attached to the April 26, 2021 Request for Reconsideration (TSDR 39- 40). 22 Applicant’s Brief p. 5 (9 TTABVUE 6). Serial No. 88867461 - 18 - knowledge. In other words, only very sophisticated purchasers are here involved who would buy with great care and unquestionably know the source of the goods.”); Pfizer Inc. v. Astra Pharm. Prods. Inc., 858 F. Supp. 1305, 33 USPQ2d 1545, 1562 (S.D.N.Y. 1994) (“The consumers here are doctors, as sophisticated a group as one could imagine.”). Finally, Applicant argues that the relevant consumers are unlikely to purchase surgical implants, namely, bone screws for use in the foot and ankle on impulse given their high retail price and the fact that the product addresses very specific and varied medical needs, unlike certain other types of medical supplies (e.g., disposable exam gowns).23 We agree. Given the inherent nature of the products at issue, i.e., surgical devices, the relevant consumers will exercise a heightened degree of purchasing care. E. Conclusion Even assuming that purchasers of the products at issue exercise a heightened degree of purchasing care when it comes to their buying decisions, even careful, sophisticated purchasers are not immune from source confusion, especially in cases such as this one involving similar marks and in part legally identical goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“Human 23 Id. at p. 6 (9 TTABVUE 7). We do not consider Applicant’s argument regarding the cost of the products because Applicant did not submit any evidence showing cost. “Attorney argument is no substitute for evidence.” Cai v. Diamond Hong, Inc., 127 USPQ2d at 1799 (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); Galen Med. Assocs., Inc. v. U.S., 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of counsel . . . are not evidence.”). Serial No. 88867461 - 19 - memories even of discriminating purchasers...are not infallible.”) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). See also See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Furthermore, careful purchasers who do notice the difference in the marks will not necessarily conclude that there are different sources for the goods, but because of the close similarity of the marks will see the marks as variations of each other, pointing to a single source. See, e.g., Kangol Ltd. v. Kangaroos U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (“What is important is not whether people will necessarily confuse the marks, but whether the marks will be likely to confuse people into believing that the goods they are purchasing emanate from the same source.”) (citations omitted). Because the marks are similar, the goods are in part legally identical and we presume Registrant offers its products in the same channels of trade and to the same classes of consumers as Applicant, we find that Applicant’s mark JOUST BEAMING SCREW for, inter alia, “medical implants, namely, bone screws, made from artificial materials for use in podiatric surgery, namely, exclusively in the foot and ankle and associated surgical instruments for use in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine” is likely to cause Serial No. 88867461 - 20 - confusion with the registered mark JOUST for “minimally invasive surgical devices and equipment for use in orthopedic surgery.” We affirm the Section 2(d) refusal to register Applicant’s mark. II. Description of Goods As noted above, Applicant is seeking to register its mark JOUST BEAMING SCREW for, inter alia, “sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine.” The Examining Attorney refused to register Applicant’s mark on the ground that Applicant failed to comply the requirement “to clarify the wording ‘sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine’ in the identification of goods in International Class 10 because it is indefinite and too broad.” See Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6) (“(a) The application must be in English and include … (6) A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”). According to the Examining Attorney: This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “sterilization units for surgical instruments” are in International Class 11 and “Paper envelopes for use in the Serial No. 88867461 - 21 - sterilization of medical instruments” are in International Class 16.24 Although Applicant did not address the requirement to amend the description of goods in its brief or reply brief, Applicant, in its Request for Reconsideration, provides the following: Applicant’s identification of “sterilization cases for surgical instruments to be used in podiatric surgery” is neither indefinite nor broad. This language details exactly the types of goods offered under Applicant’s Mark; products used in the sterilization of surgical instruments for foot surgery. As it is explicitly meant for surgical use, the identification is properly in International Class 10 which covers, among other goods, “surgical … apparatus and instruments”.25 The Examining Attorney points out that Applicant, in the Request for Reconsideration, did not address the Examiner’s explanation for the requirement aside from denying it.26 The USPTO ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL provides, effective January 1, 2020, “sterilization units for medical instruments” is classified in International Class 11.27 The manual notes that “sterilization units for medical instruments,” in International Class 10 was misclassified.28 24 Examining Attorney’s Brief (11 TTABVUE 16). See also June 7, 2021 Denial of Request for Reconsideration (TSDR 5) (“This wording is indefinite because it does not make clear what the goods are.”). 25 April 26, 2021 Request for Reconsideration (TSDR 7). 26 Examining Attorney’s Brief (11 TTABVUE 16). 27 June 7, 2021 Denial of Request for Reconsideration (TSDR 8). 28 Id. at TSDR 7. Serial No. 88867461 - 22 - We find Applicant’s identification of “sterilization cases for surgical instruments to be used in podiatric surgery” is as definite as “sterilization units for medical instruments” which is approved by the USPTO ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL. For example: ● MERRIAM WEBSTER DICTIONARY (merriam-webster.com) (accessed January 12, 2022) defines “case” as, inter alia, “a box or receptacle for holding something.” ● MERRIAM WEBSTER DICTIONARY (merriam-webster.com) (accessed January 12, 2022) defines “unit” as, inter alia, “a piece or complex of apparatus serving to perform one particular function.” ● MERRIAM WEBSTER DICTIONARY (merriam-webster.com) (accessed January 12, 2022) defines “apparatus” as, inter alia, “an instrument or appliance designed for a specific operation.” Thus, Applicant’s “sterilization cases” are “sterilization boxes or receptacles” for surgical instruments, while the Examining Attorney’s preferred “sterilization units” are “sterilization apparatus” for medical instruments include sterilization cases. Because the two descriptions of goods are essentially the same, we find that Applicant’s proposed description of goods, “sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive surgical devices and equipment or for use in the spine” is not indefinite or too broad. We reverse the final requirement that Applicant amend the description of goods. However, because Applicant’s description of goods for “sterilization cases for surgical instruments to be used in podiatric surgery and not for minimally invasive Serial No. 88867461 - 23 - surgical devices and equipment or for use in the spine” is classified in International Class 11, not International Class 10, if our finding of likelihood of confusion is reversed on appeal, Applicant must amend the description of goods to Class 11 and pay the required fee for an additional class before this application will be published for opposition. Decision: We affirm the refusal to register Applicant’s mark JOUST BEAMING SCREW under Section 2(d) of the Trademark Act. We reverse the requirement that Applicant amend the description of goods.