Sutter Medizintechnik GmbH

Trademark Trial and Appeal Board

Jan 13, 2022

88688701RE (T.T.A.B. Jan. 13, 2022)

This Opinion is not a Precedent of the TTAB Mailed: January 13, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sutter Medizintechnik GmbH _____ Serial No. 88688701 _____ On Request for Reconsideration _____ Ludomir A. Budzyn of Budzyn IP Law, LLC, for Sutter Medizintechnik GmbH. Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Shaw, Goodman and Hudis, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: I. Background Sutter Medizintechnik GmbH (“Applicant”) filed a timely request for reconsideration of the Board’s decision dated August 30, 2021, in which we affirmed the refusal to register Applicant’s SWYNG mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the separately-owned registered marks SWINGTOP and SWINGJAW. Serial No. 88688701 - 2 - The premise underlying a request for reconsideration under Trademark Rule 2.129(c) is that, based on the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. It is not to be a reargument of the points presented in the movant’s brief on the case, nor is it to be used to raise new arguments or introduce additional evidence. Rather, the request should be limited to a demonstration that based on the facts before it and the applicable law, the Board’s decision is in error and requires appropriate change. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 543 (2021) and cases cited therein. The first DuPont factor1 and the SWINGTOP mark In the decision affirming the refusal to register the applied-for mark, we found “the term SWING to be the dominant portion of the cited marks, SWINGTOP and SWINGJAW because it comes first in the marks and the other wording is descriptive.”2 Applicant first argues that the Board’s decision is in error because “there is no evidence or legal support for finding the term TOP in SWINGTOP to be descriptive.”3 This argument is unpersuasive. Applicant ignores or improperly discounts the evidence of record, including its own evidence. It takes no great leap to deduce that SWINGTOP connotes goods having a swinging top feature. As the Examining Attorney argues, SWINGTOP “connotes the commercial impression of such goods 1 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (discussing the various factors to determine whether confusion is likely). 2 Opinion of August 30, 2021, p. 8, 14 TTABVUE 8. 3 Applicant’s second Request for Reconsideration, p. 2, 15 TTABVUE 3. Serial No. 88688701 - 3 - having some sort of swinging function or feature.”4 As we noted in our decision, the connotation put forth by the Examining Attorney “is consistent with the Applicant’s Google image search of ‘swingtop’ bottles and Applicant’s statement that “SWINGTOP imparts to purchasers the phrase ‘swing top,’ which connotes a swinging top.”5 Thus, even Applicant concedes that SWINGTOP connotes a swinging top. Applicant nevertheless argues that the Google search results showing swingtop bottles mentioned in the decision “have no connection to the medical equipment of the SWINGTOP registration. This does not provide any proof that the term TOP is not capable of source identification in connection with the goods of the SWINGTOP registration.”6 We disagree. First, we did not state that the swingtop bottles shown in the Google search had a connection to medical equipment. Rather we simply noted that “the commercial impression of [SWINGTOP] having some sort of swinging function or feature . . . is consistent with the Applicant’s Google image search of ‘swingtop’ bottles[.]”7 (Emphasis added). Further, Applicant’s Google evidence is not the only evidence regarding the meaning of TOP in the SWINGTOP mark. Although not mentioned in the decision, 4 Opinion of August 30, 2021, p. 7, 14 TTABVUE 8 (quoting the Examining Attorney’s Br., p. 7, 10 TTABVUE 7). 5 Id. at 7, 14 TTABVUE 8 (quoting Applicant August 18, 2020 Response to Office action, at TSDR 11.). 6 Applicant’s second Request for Reconsideration, p. 4, 15 TTABVUE 5. 7 Opinion of August 30, 2021, p. 7, 14 TTABVUE 7. Serial No. 88688701 - 4 - Applicant submitted an example of Registrant’s advertising which clearly shows its SWINGTOP device to be at the top of the instrument: 8 9 8 Ex. E to Applicant’s first Request for Reconsideration dated March 1, 2021, TSDR p. 39. 9 Id. at 40. Serial No. 88688701 - 5 - This evidence also supports the finding that TOP is descriptive of a feature of Registrant’s goods, and therefore SWING is the dominant feature of SWINGTOP. Second, we never found, as Applicant alleges, that the term TOP in Registrant’s mark is “not capable of source identification in connection with the goods of the SWINGTOP registration.”10 Descriptive terms may be capable of source identification and registered in the Principal Register under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), upon a showing of acquired distinctiveness, or on the Supplemental Register if they are capable of source identification, 15 U.S.C. §§ 1091-1096. Rather we simply found that the SWING portion of SWINGTOP was the dominant portion of the mark, primarily “because it comes first[.]” Thus, as we noted in our decision: Applicant’s entire mark, SWYNG, and the first portions of the cited marks, SWING, are most likely “to be impressed upon the mind of the purchaser and remembered.” 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 upon the mind of a purchaser and remembered”). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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).11 Applicant also argues that “that the term TOP cannot be discounted from the SWINGTOP mark and that the SWINGTOP mark must be considered in its 10 Applicant’s second Request for Reconsideration, p. 4, 15 TTABVUE 5. 11 Opinion of August 30, 2021, p. 6, 14 TTABVUE 6. Serial No. 88688701 - 6 - entirety.”12 In essence, Applicant argues that the Board improperly “‘dissected’ the marks.”13 We disagree. Contrary to Applicant’s argument, the Board’s finding that the term TOP is descriptive does not mean that the decision did not consider the SWINGTOP mark in its entirety. Rather, we simply found that the SWING portion of the SWINGTOP mark was dominant as compared to the TOP portion. As we noted in our decision, “‘there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.’ [Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161] quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).”14 “Indeed, this type of analysis appears to be unavoidable.” Nat’l Data, 224 USPQ at 751. Instead we simply found that Applicant’s mark SWYNG, the phonetic equivalent of “swing,” “is wholly incorporated within the cited marks [which] increases the similarity between them.”15 See China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (CHI PLUS is similar to CHI both for electric massagers); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic apparatus). 12 Applicant’s second Request for Reconsideration, p. 2, 15 TTABVUE 3. 13 Id. at 2, 15 TTABVUE 3. 14 Opinion of August 30, 2021, p. 4, 14 TTABVUE 4. 15 Id. at 6, 14 TTABVUE 6. Serial No. 88688701 - 7 - Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting distinctive matter or a term that is descriptive or suggestive of the named goods. If the dominant portion of both marks is the same, i.e., SWING and its phonetic equivalent SWYNG, then the marks may be confusingly similar notwithstanding peripheral differences. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming Board’s finding that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are nearly identical in terms of sound, appearance and commercial impression, and noting that, while “the words ‘Co.’ and ‘Club’ technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue”); Stone Lion, 110 USPQ2d at 1161 (affirming Board’s finding that applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties’ marks); In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming Board’s finding that applicant’s mark, ML, is likely to be perceived as a shortened version of registrant’s mark, ML MARK LEES (stylized), when used on the same or closely related skin-care products); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming Board’s holding that contemporaneous use of appellant’s mark, VEUVE ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion, noting that the presence of the “strong Serial No. 88688701 - 8 - distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE”). We see no error with the finding that, based on the evidence of record, SWING is the dominant portion of the mark SWINGTOP and therefore SWYNG and SWINGTOP are similar for purposes of a likelihood of confusion. The second and third DuPont factors and the SWINGJAW mark Applicant next argues that the Board’s decision is in error as to the SWINGJAW mark because “there is no proof that Applicant’s goods and the biopsy forceps of the SWINGJAW registration are related, travel through the same trade channels, or that the same class of consumers uses both goods.”16 As we noted in our decision, the Examining Attorney’s website evidence from Becton, Dickenson, ConMed, Integralife, Medline, Surgicalinstruments.com, and Sklarcorp establishes that the respective goods are made by some of the same companies and sold through the same channels of trade to the same consumers.17 Evidence that consumers encounter one mark designating a single source for the goods of both parties supports a finding that the goods are related. See Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis”); In re I-Coat Co., 126 USPQ2d 16 Applicant’s second Request for Reconsideration, p. 6, 15 TTABVUE 7. 17 August 27, 2020 final Office Action, TSDR pp. 2-46. Serial No. 88688701 - 9 - 1730, 1738 (TTAB 2018) (internet evidence supported finding that “consumers would readily expect that these goods emanate from the same sources.”). Applicant nevertheless argues that the respective goods are unrelated because they are used for different surgical procedures: “[c]onsidering the disparate uses of the two classes of goods (diagnostic tissue removal versus blood coagulation), there is no suggestion that the same class of medical practitioners will use Applicant’s Goods and biopsy forceps in the same field of use.” In support, Applicant points out that the foregoing web pages list the respective goods on different pages, classified by use. For example, Applicant points out that the ConMed page lists biopsy forceps under the medical specialty of “gastroenterology and pulmonary,” whereas Applicant’s bipolar forceps are listed under the specialty of “electrosurgery.”18 This argument too is unpersuasive. The test is not whether consumers would be likely to confuse the goods themselves, but rather whether they likely would be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). We have no doubt that surgeons are able to distinguish between bipolar forceps and biopsy forceps and would use them in different procedures; however, that is not the standard. See, e.g., Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA 1975) (“[C]onfusion found to be likely is not as to the products but as to their source”) (citation omitted); Recot, Inc. v. 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 18 Applicant’s second Request for Reconsideration, p. 7, 15 TTABVUE 10. Serial No. 88688701 - 10 - the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.”). Accordingly, we remain of the view that consumers of surgical instruments, i.e., hospital purchasers and surgeons, are accustomed to encountering both bipolar forceps and biopsy forceps that are made by the same manufacturers, offered under the same marks, and sold by the same vendors. We see no error in our finding that the goods are related, travel through the same trade channels, and are used by the same classes of consumers. Conclusion We find Applicant has not demonstrated that, based on the evidence properly made of record and the applicable law, the Board’s decision is in error. Rather, Applicant simply expresses disagreement with the result reached therein or reargues positions raised in its appeal brief. As a result, we remain of the belief that our August 30, 2021 decision is correct. Decision: The request for reconsideration is denied.