The identity of the marks and the inherent strength of the cited mark weighed heavily against Applicant TriVascular.
As to the goods, the Board must look only to the identifications in the involved application and registration. However, extrinsic evidence may assist in understanding of the nature of the identified goods. The evidence showed that the involved goods are "medical devices in the nature of prosthetics, designed to be implanted into a patient's body through complex surgery." TriVascular's products are used in repairing blood vessels; the registrant's goods are used in hip reconstruction surgery.
The Examining Attorney argued that the goods are highly related, travel in the same channels of trade, and are provided by the same suppliers. She pointed to eight third-party registrations, three of which included both vascular and orthopedic implants. These three registrations may indicate that the goods of both TriVascular and the registrant may emanate from a single source. [See TTABlog comment below].
The Board, however, concluded that the involved goods are "relatively unrelated." They are technologically distinct, cannot be substituted for each other, and are not used together in a single medical procedure. Although a medical products company might produce both products, nothing in the record indicated that these goods are more closely related than they would be to other medical products.
Therefore, the duPont factor regarding the similarity or dissimilarity of the marks favored TriVascular.
The Board observed that a critical question in the 2(d) analysis is "whose confusion should trigger a refusal of registration." The Examining Attorney contended that hospital administrators or medical office manager might make the purchasing decision. The Board accepted TriVascular's evidence that physicians participate in the purchasing decision, but it found plausible the PTO's suggestion that hospital administrators, managers, purchasing agents, and other personnel might be involved.
Pointing to several appellate court decisions holding that a hospital purchasing agent is not necessarily a "relevant person" for the Section 2(d) determination, and considering the highly specialized and technical nature of the goods, the Board concluded that "any reasonable decision" to purchase the involved goods would involve the advice of a specialist in the respective field of orthopedics or vascular medicine.
Orthopedic specialists and vascular medicine specialists are likely to be separate classes of customers, so that neither is likely to have exposure to the products of interest to the other. Considering the nature of the goods, one would expect both classes of purchasers to exercise a high degree of care when making purchasing decisions.
The Board therefore reversed the refusal to register.
TTABlog comment: Concerning the third-party registrations cited by the Examining Attorney under the Albert Trostel and Mucky Duck approach, the following thought has come into my head. The PTO is concerned, as are practitioners, about so-called "deadwood" on the Register: registrations that cover a number of goods, not all of which goods are actually sold (or ever were sold) under the mark. Part of this deadwood problem stems from the fact that the PTO requires only one specimen per class of goods, not a specimen for each item in the class. So if there are many deadwood registrations, what is the evidentiary value of the PTO's citing a third-party registration to show that item A is related to item B? How do we know that the third-party mark is actually in use, or ever was used, on both item A and B? Maybe it's a deadwood registration.
Some time ago, I suggested that an Examining Attorney has much more ability, in this Internet age, to find out whether a mark is in use on a particular product. Rather than allow the PTO to rely on third-party registrations to show the relatedness of goods, should we now require some evidence that the marks are actually in use for the cited goods? In other words, is Mucky Duck a dead duck?
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Text Copyright John L. Welch 2012.
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