Spinal USA

Trademark Trial and Appeal BoardJul 2, 2013

No. 85386695 (T.T.A.B. Jul. 2, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 2, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Spinal USA _____ Serial No. 85386695 _____ Matthew B. Dernier of Gibson & Dernier LLP for Spinal USA. Maureen Dall Lott, Trademark Examining Attorney, Law Office 117 (J. Brett Golden, Managing Attorney). _____ Before Kuhlke, Mermelstein and Adlin, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Spinal USA, filed an application to register on the Principal Register the mark ALLAY in standard characters for goods ultimately identified as “spinal column braces for medical purposes, namely, back braces and cervical neck braces,” in International Class 10.1 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified 1 Application Serial No. 85386695, filed on August 2, 2011, alleging a bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 85386695 2 goods, so resembles the registered mark shown below for “high frequency electromagnetic therapy apparatus,” in International Class 102 as to be likely to cause confusion, mistake or deception. The wording MENSTRUAL PAIN THERAPY is disclaimed and the registration also includes the following description and color claim: The color lilac appears as background; the color purple appears as the design of a pansy and as the shadow to the letters in the wording “ALLAY”; the color white appears as the wording “ALLAY” and in the design of the center of a pansy; and the color black appears in the wording “MENSTRUAL PAIN THERAPY”; The color(s) black, white, lilac and purple is/are claimed as a feature of the mark. When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (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 or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The examining attorney, relying primarily on the language of applicant’s and registrant’s respective identifications of goods, contends that the products are 2 Registration No. 3783316, issued on May 4, 2010. Serial No. 85386695 3 related because the registration has no restrictions and the wording is presumed to encompass all goods of the type described. Thus, as identified, registrant’s goods could include a “high frequency electromagnetic therapy apparatus” for treating medical conditions pertaining to the back. To support the point, the examining attorney submitted web pages from several third-party websites showing use of the same mark in connection with back braces, cervical neck braces and various types of devices and wraps that provide or facilitate electromagnetic stimulation for treating back pain. See, e.g., LGMedSupply (www.lgmedsupply.com) Office Action (September 26, 2011) pp. 9-18; R2F (return2fitness.net) Office Action (September 26, 2011) pp. 17-34; Advantageous MD (http://advantageousmd.com.) Office Action (April 16, 2012) p. 3; After the Fall, Inc. (http://afterthefallinc.com) Office Action (April 16, 2012) pp. 49-52;; Pain Management Technologies (http://paintechnology.com) Office Action (April 16, 2012) pp. 53-58; and OssurProducts (www.ossurproducts.com) Office Action (April 16, 20102) pp. 64-73. In addition, excerpts from registrant’s website show the apparatus placed on the abdomen but also what appears to be the product wrapped around the waist and positioned on the back. However, there is nothing in the record to support a finding that devices for treating menstrual pain emanate from the same source as spinal column braces for medical purposes, namely, back braces and cervical neck braces. As we routinely state, we must base our evaluation on the goods as they are identified in the registration and application. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v. Serial No. 85386695 4 Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The question remains, however, what is the scope of protection to be accorded this mark, despite the broad wording in the goods section of the registration, when the mark itself contains prominent and limiting wording. In other words, do we protect this particular mark that includes the wording MENSTRUAL PAIN THERAPY against an application for products which are unrelated to menstrual pain therapy? It is hard to imagine use of a mark that includes the wording MENSTRUAL PAIN THERAPY in connection with braces for the spinal column. Moreover, this record does not include evidence that purveyors of braces for the spinal column also sell products for menstrual pain. Thus, we look to the du Pont factor focusing on the similarities and dissimilarities in the marks. We analyze “the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting du Pont, 177 USPQ at 567. See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). We begin by noting that the term ALLAY in connection with the goods of both parties is somewhat suggestive as to the purpose or desired outcome of the goods, that is, to allay or alleviate menstrual pain and to allay or alleviate spinal or back conditions. Looking at the literal components separately, the word ALLAY in registrant’s mark is the strongest and most memorable portion. However, the Serial No. 85386695 5 addition of the wording MENSTRUAL PAIN THERAPY limits the connotation of this mark to allaying menstrual pain, in contrast to applicant’s ALLAY mark, which, when considered in relation to applicant’s spinal column braces, has no such connotation. In addition to the difference in connotation, there are stark differences in appearance created by the flower design and color claims in registrant’s mark. As a result, the marks have very different overall commercial impressions. Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (THE RITZ KIDS for gloves not confusingly similar to RITZ for barbeque mitts, addition of “KIDS” serves to distinguish the mark because “it is unlikely that consumers would mistakenly believe that Shen, the manufacturer of kitchen textiles, has expanded into children’s clothing”); and In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (the marks as applied to the respective goods and services create different commercial impressions). Here, the additional matter in registrant’s mark creates a different commercial impression such that confusion is not likely, in particular when considered in connection with the parties’ respective goods. Thus, the similarity of the shared suggestive element ALLAY is outweighed by the differences in appearance, connotation and commercial impression. Moreover, we find this factor to be pivotal in that even considering the other du Pont factors, this factor of the dissimilarities of the marks outweighs the other factors. See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor may not be dispositive”). Serial No. 85386695 6 In conclusion, because the marks are sufficiently different, we conclude that there is no likelihood of confusion between applicant’s mark and registrant’s mark. In re E.I. du Pont de Nemours & Co., 177 USPQ at 567 (“[E]ach [of the thirteen elements] may from case to case play a dominant role”). Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is reversed.