Vibrynt, Inc.

Trademark Trial and Appeal Board

Jul 20, 2012

No. 77701760 (T.T.A.B. Jul. 20, 2012)

Hearing: Mailed:
2/2/12 7/20/12

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vibrynt, Inc.
________

Serial No. 77701760
_______

Jill M. Pietrini and Paul A. Bost of Manatt, Phelps & Phillips
for Vibrynt, Inc.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Quinn, Bergsman and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Vibrynt, Inc. filed, on March 29, 2009, an intent-to-use
application to register the mark PREVAIL (in standard
characters) for “medical devices, namely, abdominal implants and
delivery systems therefor” in International Class 10.
The examining attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark PEEK PREVAIL (in
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 77701760

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standard characters) for “surgical implants comprising
artificial material” in International Class 101 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs, and both
appeared at an oral hearing.
Applicant argues that the marks are distinguishable; that
the goods are not related and move in different trade channels
to different customers; that the purchase of the respective
goods requires care and sophistication; and that the cited mark
is weak due to third-party use. In support of its arguments,
applicant introduced nine declarations of physicians (seven
abdominal surgeons and two orthopedic surgeons), a Wikipedia
entry, excerpts of third-party websites, an excerpt from a
printed publication,2 and copies of third-party registrations and
applications.
The examining attorney maintains that the marks are
similar, with the term PREVAIL dominating over the term PEEK.
The examining attorney is not persuaded by applicant’s evidence
of third-party uses and registrations of “PREVAIL.” With

1 Registration No. 3616753, issued May 5, 2009.
2 An additional article from a printed publication was attached to the
reply brief. The examining attorney objected to this evidence (but
did not object to a second article because it was not previously
available); the Board, in an order dated April 14, 2011, sustained the
objection, indicating that the objected-to article (identified by
applicant as Exhibit B to its reply brief) does not form part of the
record on appeal.
Ser. No. 77701760

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respect to the goods, the examining attorney states that, as
they are described in the application and cited registration,
the goods are presumed to be identical. The examining attorney
does not dispute that the conditions under which the goods are
purchased suggest care and sophistication, but goes on to argue
that even sophisticated purchasers are not immune from source
confusion.
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 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, 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).
We first focus our consideration on the du Pont factor of
the similarity/dissimilarity between the marks. We must compare
the marks in their entireties as to appearance, sound,
connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. The test, under the
Ser. No. 77701760

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first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the
source of the goods offered under the respective marks is likely
to result.
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the
marks in their entireties.”).
Applicant and the examining attorney have a difference of
opinion over which portion is the dominant portion of
registrant’s mark, with applicant contending that PEEK is
dominant, while the examining attorney contends that PREVAIL is
dominant. Of significant importance, of course, is the role of
PEEK in registrant’s mark. Throughout all of the prosecution of
the application, neither applicant nor the examining attorney
attributed any meaning to PEEK as applied to registrant’s goods.
It was not until applicant filed its request for reconsideration
Ser. No. 77701760

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that the issue of the descriptiveness of the acronym “PEEK” was
first raised. In that request, applicant asserted as follows:
In the medical community, the term “PEEK” is
a term of art referring to the organic
thermoplastic “polyether ether-ketone.”
Polyether ether-ketone is a biomaterial
frequently used in medical implants that,
due to its organic composition, is easily
accepted by the body and is resistant to
wear. In particular, PEEK is used with
orthopedic implants because it is highly
biocompatible to the body and the body will
not attempt to attack the orthopedic device
as if it is an infection.
(Request for Reconsideration, July 12, 2010,
pp. 3-4).

In support of this argument, applicant submitted an excerpt of
Wikipedia showing that thermoplastic polyether ether-ketone,
referred to as “PEEK,” assists the body to build up fibrous
tissue to protect an orthopedic implant (such as used in hip
replacements) from being attacked by the body. Applicant also
submitted the declarations of two orthopedic surgeons who
attested to similar facts.
Irrespective of any meaning of the letters PEEK as an
acronym for “poly ether-ketone,” we find that registrant’s mark,
PEEK PREVAIL, when considered in its entirety, is similar to
applicant’s mark PREVAIL. We recognize that the PEEK portion of
registrant’s mark is the first portion, and that the first
portion of a mark is the one most likely to be remembered by
purchasers. See, e.g., Presto Prods., Inc. v. Nice-Pak Prods.,
Ser. No. 77701760

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Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). However, the evidence
suggests that the first portion may have some descriptive
significance or connotation, thereby diminishing its
distinctiveness. In any event, registrant’s mark includes
PREVAIL, which is identical to the entirety of applicant’s mark.
Given the commonality of this term in both marks, the marks are
similar in sound and appearance. As to meaning, the presence of
PEEK in registrant’s mark may give the overall mark a more
specific meaning relative to the medical field;3 however, both
marks suggest that the respective goods will assist a patient in
prevailing over a medical infirmity. These similarities between
the marks PEEK PREVAIL and PREVAIL engender overall commercial
impressions that are similar. Any difference in meaning is
outweighed by the similarities between the marks.
The overall similarity between the marks in their
entireties is a factor that weighs in favor of a finding of
likelihood of confusion.
In an attempt to diminish the distinctiveness of the cited
registration, applicant introduced evidence of five third-party
registrations,4 five common law uses, eight business names and

3 This presence, however, cannot be used to limit registrant’s goods
when such limitation is not also reflected in the identification set
forth in the cited registration.
4 The third-party applications have no probative value. Third-party
applications are evidence only of the fact that they have been filed.
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468
n.6 (TTAB 2003).
Ser. No. 77701760

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one website, all involving PREVAIL for medical or healthcare
goods and/or services. We initially point out that none of the
uses or registrations specifically covers surgical implants,
namely the specific type of goods involved in this appeal.
With respect to the third-party registrations, “[t]he
existence of [third-party] registrations is not evidence of what
happens in the market place or that consumers are familiar with
them nor should the existence on the register of confusingly
similar marks aid an applicant to register another likely to
cause confusion, mistake or to deceive.” AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973); and In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010).
Insofar as the evidence of actual use is concerned, we
focus on a critical infirmity in applicant’s evidence, namely
the absence of any information regarding the extent of use of
PREVAIL by third parties. That is to say, there is no way to
gauge what effect, if any, these uses may have had in the minds
of consumers. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1693-94 (third-party use was
not “so widespread as to ‘condition’ the consuming public”); Han
Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1561 (Fed. Cir. 2001); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1110 (TTAB 2007); and Fort James Operating Co. v.
Ser. No. 77701760

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Royal Paper Converting Inc., 83 USPQ2d 1624, 1629 (TTAB 2007).
Thus, in the absence of evidence to corroborate the extent of
the third-party uses, this evidence is entitled to only minimal
probative value.
In sum, the evidence of third-party registrations and uses,
while considered, is of only minimal value. At bottom, we find
this factor to be neutral in our analysis.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
well settled that the goods of the parties need not be identical
or competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would
or could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The
issue, of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion as
Ser. No. 77701760

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to the source of the goods. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
As explained by the examining attorney, applicant’s notion
that registrant’s goods are limited to orthopedic implants is
ill founded. To the contrary, the issue of likelihood of
confusion in Board proceedings is determined on the basis of the
goods as they are identified in the application and the cited
registration, no matter what the goods may actually be in
nature. Thus, where the goods in an involved registration
and/or application are broadly identified as to their nature and
type such that there is an absence of any restrictions as to the
channels of trade and no limitation as to the classes of
purchasers (as in the case of registrant’s “surgical implants
comprising artificial material”), it is presumed that in scope
the identification of goods encompasses all the goods of the
nature and type described therein, that the identified goods are
offered in all channels of trade which would be normal therefor,
and that they would be purchased by all potential buyers
thereof. Paula Payne Products Co. v. Johnson Publishing Co.,
473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Registrant’s identification of goods reading “surgical
implants comprising artificial material” is broadly worded, not
Ser. No. 77701760

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indicating any specific type of surgery. Because registrant’s
identification does not limit the type of surgical implants, the
identification must be broadly construed to include all types of
such goods, including abdominal surgical implants comprising
artificial material.
To reiterate, registrant’s goods are not limited to the
orthopedic field. This is a critical fact for the comparison
between the goods for purposes of our likelihood of confusion
analysis that must be based on the identifications of goods as
identified in the respective application and cited registration.
It is improper to decide the issue of
likelihood of confusion based upon a
comparison of applicant’s actual goods with
registrant’s actual goods. If registrant’s
goods are broadly described in its
registration so as to include types of goods
which are similar to applicant’s goods, then
an applicant in an ex parte case cannot
properly argue that, in point of fact,
registrant actually uses its mark on a far
more limited range of goods which range does
not include goods which are similar to
applicant’s goods.

In re Trackmobile, Inc., 15 USPQ2d 1152, 1153 (TTAB 1990).
Insofar as the trade channels and classes of purchasers are
concerned, we note that there are no limitations in either
applicant’s or registrant’s identification of goods.
Accordingly, we must presume that the implants, as identified,
are marketed in all normal trade channels for such goods and to
all normal classes of purchasers for such goods. In re Elbaum,
Ser. No. 77701760

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211 USPQ 639 (TTAB 1981). Because the implants are used in
surgical procedures, we presume that the implants move through
the same or similar trade channels, as for example surgical
supply distributors, and are sold to the same classes of
purchasers, namely surgeons and other medical professionals,
such as hospital purchasing agents.
We do not intend to belabor the point, but because
applicant expended so much effort in trying to distinguish the
goods based on extrinsic evidence, we are compelled to
specifically respond.
The record includes seven identically worded declarations
(varying only in terms of the years of experience of the
declarant) of abdominal surgeons, all of whom do bariatric
surgery. The field of bariatrics is directed to reducing the
ability of patients to overeat and to force weight loss.
Bariatric surgery includes reducing the size of the patient’s
stomach by removing part of the stomach, bypassing part of the
digestive system, and more recently by the insertion of medical
implants (such as applicant’s) to reduce the size of the
patient’s stomach or to create a feeling of fullness for the
patient to stop the desire to eat. These physicians distinguish
their practice from that of orthopedic surgery that is directed
to the repair or enhancement of bones, joints, and vertebrae in
Ser. No. 77701760

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a patient’s body. The declarants state, in pertinent part, the
following:
I am involved in the selection and purchase
of the brands and types of abdominal
implants used in bariatric surgery and the
procedures related thereto. Abdominal
implants and their associated set of
surgical instruments are expensive medical
devices, selling in the range of about $100
to $5,500. The final cost is typically the
result of negotiations between myself,
insurance provider, and/or hospital
administrator, and the vendor. When I
select and purchase or recommend the
purchase of abdominal implants and related
surgical instruments, I undergo an extensive
and critical determination of the implants
and instruments, the makers of the implants
and instruments, and the clinical data
supporting the safety and effectiveness of
the implants and instruments...The sales
cycle (that is, the duration of time between
first being contacted by a vendor and
finalizing a purchase) for abdominal
implants and delivery instruments is often
months.

[O]rthopedic implants are wholly unrelated
to abdominal implants for
bariatrics...Orthopedic surgery [is a]
distinct physician specialty which [does]
not involve the same critical evaluation and
decision making steps involved in the
selection of abdominal implants for
bariatric procedures.

Also of record are two identically worded declarations of
orthopedic surgeons (with seven and nine years of experience,
respectively). These declarations track the other ones, to the
extent that the doctors draw significant distinctions between
orthopedic implants and abdominal implants, and that the
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purchase and use of orthopedic implants involve a sophisticated
decision that is often three months or more. The doctors
further state, in relevant part, the following:
In the orthopedic community, the term “PEEK”
is a term of art referring to the organic
thermoplastic “polyether ether ketone.”
Polyether ether ketone is a biomaterial
frequently used with orthopedic implants
that, due to its organic composition, is
easily accepted by the body and is resistant
to wear. PEEK is particularly useful with
orthopedic implants because it is highly
biocompatible to the body and the body will
not attempt to attack the orthopedic device
as if it is an infection. PEEK allows the
body to build up fibrous tissue to protect
the orthopedic device from being attacked by
the body...when I encounter the word PEEK in
my medical specialty, I understand it to
refer to, and be used with, orthopedic
devices and implants.

Orthopedic implants and their associated set
of surgical instruments are expensive
devices, selling in the range of
approximately $100 to $100,000.

Registrant’s goods are identified as “surgical implants
comprising artificial material.” As indicated by the examining
attorney, this exact identification is set forth as an
acceptable identification of goods in the Acceptable
Identification of Goods and Services Manual (“ID MANUAL”).
Applicant’s arguments regarding registrant’s specific goods and
function, that is, that registrant’s surgical implants are for
orthopedic applications, must fail because an applicant may not
restrict the scope of goods in an otherwise unrestricted
Ser. No. 77701760

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registration by argument or extrinsic evidence. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). In
that regard, applicant's reliance on In re Trackmobile Inc., 15
USPQ2d at 1153, is misplaced. In that case, the Board
reiterated the well-established rule of law that “the Board must
compare applicant's goods as set forth in its application with
the goods as set forth in the cited registration. It is
improper to decide the issue of likelihood of confusion based
upon a comparison of applicant's actual goods with registrant's
actual goods.” Id. The Board went on to state that “when the
description of goods for a cited registration is somewhat
unclear, as is the case herein, it is improper simply to
consider that description in a vacuum and attach all possible
interpretations to it when the applicant has presented extrinsic
evidence showing the description of goods has a specific meaning
to members of the trade.” Id. at 1154. Trackmobile stands for
the proposition that when the nature of the goods is unclear
(e.g., mobile railcar movers v. light railway motor tractors),
extrinsic evidence may be used to demonstrate what a specific
term means in an industry to understand whether or not one is
encompassed by the other. Unlike the situation in Trackmobile,
the nature of registrant’s goods, as described in the
registration’s identification, is clear. The absence of the
specific type of surgery for which registrant’s implants are
Ser. No. 77701760

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used does not present a vacuum; it simply provides for broader
protection. That is, there is nothing unclear in registrant’s
identification; rather, applicant is merely attempting, under
the guise of providing clarity, to limit the scope of
registrant’s identification of goods and, thereby, the reach of
the cited registration.
The similarity between the goods, channels of trade and
classes of purchasers weigh in favor of a finding of a
likelihood of confusion.
Insofar as the relevant purchasers are concerned, we
readily acknowledge that purchasers of surgical/abdominal
implants, whether physicians, hospital purchasing agents, or
some other professionals involved in the purchasing decision,
are likely to be very careful in making their decision after
some research and discussion. This condition of sale is
reflected in the declarations of the surgeons. However, even
accepting that these medical professionals are sophisticated
when it comes to buying surgical products, such as implants for
procedures, it is settled that even sophisticated purchasers are
not immune from source confusion, especially in cases such as
the instant one involving similar marks and related goods. See
In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
Ser. No. 77701760

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1970) [“Human memories even of discriminating purchasers...are
not infallible.”]. See also In re Decombe, 9 USPQ2d 1812 (TTAB
1988). Nevertheless, we find that the care and sophistication
of medical professionals in their purchase of surgical/abdominal
implants weigh in favor of a finding of no likelihood of
confusion. See, e.g., Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399 (TTAB 2010).
In sum, the similarities between the marks and the goods,
as well as the presumptions that the goods move in the same
trade channels and are sold to the same classes of purchasers,
weigh in favor of a finding of a likelihood of confusion; the
sophistication of purchasers weighs against a likelihood of
confusion. As we have explained above, the principal problem
with applicant’s case, as is obvious from its attempt to
restrict the identification of goods in the cited registration,
is registrant’s broadly worded identification which, at least
for purposes of our Section 2(d) analysis, forms the basis of
the comparison of the goods. We find that the similarities
between the marks and the goods sold thereunder outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v.
Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and marks
Ser. No. 77701760

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outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods].
We conclude that purchasers familiar with registrant’s
“surgical implants comprising artificial material” sold under
the mark PEEK PREVAIL would be likely to mistakenly believe,
upon encountering applicant’s similar mark PREVAIL for “medical
devices, namely, abdominal implants and delivery systems
therefor,” that the goods originated from or are associated with
or sponsored by the same entity.
Decision: The refusal to register is affirmed.