Sirona Dental Systems GmbH

Trademark Trial and Appeal BoardJan 21, 2009

No. 79030513 (T.T.A.B. Jan. 21, 2009)

Mailed: January 21, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Sirona Dental Systems GmbH ________ Serial Nos. 79030513 and 79030514 _______ Adesh Bhargava and Michelle R. Osinski of Dykema Gossett PLLC for Sirona Dental Systems GmbH Katherine Stoides, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Seeherman, Walters and Cataldo, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Sirona Dental Systems GmbH has filed applications for GALILEOS in standard character form and GALILEOS and design, as shown below, for goods ultimately identified as “dental tomography apparatus and software” in Class 10.1 Registration of both applications has been finally refused pursuant to Section 2(d) of the Act, 15 U.S.C. §1052(d), on THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser Nos. 79030513 and 79030514 2 the ground that the marks so resemble the mark GALILEO, registered for “medical imaging software and medical image co-registration software,”2 that, when used on applicant’s identified goods, they are likely to cause confusion or mistake or to deceive. Applicant has appealed the refusals of both applications. Because the issues and records in the appeals are the same, we are deciding both in a single opinion. As a preliminary matter, we note that applicant has submitted numerous exhibits with its reply briefs. This material is manifestly untimely and has not been considered. See Trademark Rule 2.142(d).3 Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1 Application No. 79030513 for GALILEOS and design, and Application No. 79030514 for GALILEO, both filed on June 20, 2006, based on Section 66(a) of the Trademark Act. 2 Registration No. 3027414, issued December 13, 2005. 3 Even if the material had properly been made of record, it would have no effect on our decision. Likelihood of confusion must be decided on the basis of the goods identified in the applications and the cited registration, not on what evidence shows the actual goods to be. Ser Nos. 79030513 and 79030514 3 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Turning first to the goods, “tomography” is defined as “any of several techniques for making detailed x-rays of a predetermined plane section of a solid object while blurring out the images of other planes.”4 Thus, applicant’s “dental tomography apparatus and software” is used for medical imaging. The registrant’s “medical imaging software,” as identified, encompasses imaging software used in all medical fields, including applicant’s tomography imaging software used for dental purposes. Applicant does not dispute that the registrant’s medical imaging software encompasses the software identified in its applications. Rather, it argues that there is no indication that the registrant sells any 4 The American Heritage Dictionary of the English Language, 3d ed. © 1992, submitted with the November 13, 2007 Office action. Ser Nos. 79030513 and 79030514 4 medical apparatus or device in conjunction with the software. Thus, it appears to be applicant’s position that because its software is sold with its tomography apparatus, this is sufficient to differentiate the goods. The problem with applicant’s position is that its software is not limited to software sold only with its dental tomography apparatus. As a result, applicant’s software can compete with, or be sold as an alternative to, the registrant’s medical imaging software. Moreover, because the registrant’s software, as identified, can be used with dental tomography apparatus, the goods must be considered complementary. For the foregoing reasons, the goods are related, and this du Pont factor favors a finding of likelihood of confusion. We turn next to a consideration of the marks, keeping in mind that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s word mark differs from Ser Nos. 79030513 and 79030514 5 registrant’s mark in that it has an additional letter “S,” while its word and design mark also includes a design element. However, these differences are not sufficient to distinguish the marks. Although applicant asserts that its marks are “an arbitrary or fanciful word,” we think that consumers viewing the marks would immediately perceive the word mark and the word portion of the word and design mark as the name of the famous scientist Galileo, to which an “S” has been added. As for the design element, generally if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). When the marks are compared in their entireties, they are similar in appearance and pronunciation, and they are the same in connotation and commercial impression. This du Pont factor, too, favors a finding of likelihood of confusion. Applicant has argued that the conditions of purchase indicate that there is not likely to be confusion. We agree that, because of the very nature of applicant’s and registrant’s goods, the purchasers will be sophisticated. However, given the similarity of the marks and the related nature of the goods, even sophisticated purchasers are Ser Nos. 79030513 and 79030514 6 likely to be confused by the marks. That is, even if consumers were to note that applicant’s marks contain an additional “S” and, in the case of GALILEOS and design, a design element, they are likely to assume that these marks are merely variations of the registrant’s mark, and that they all indicate goods emanating from a single source. This is particularly likely given that there is no evidence of any third-party use of GALILEO marks, thus showing that registrant’s mark is a strong mark. After considering all of the relevant du Pont factors, and particularly the similarities of the marks and the relatedness and/or legal identity of the goods, we find that applicant’s marks, as used on its identified goods, is likely to cause confusion with the cited registration. Decision: The refusals of registration are affirmed.