Tuesday, May 19, 2009

Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too

Confirming that an applicant’s ownership of a family of marks cannot overcome a Section 2(d) likelihood of confusion refusal, the Board upheld the PTO’s rejection of the mark CYNERGY for "medical lasers for the cosmetic and medical treatment of the face and skin, and vascular treatment, sold directly to licensed medical practitioners." Despite the sophistication of the relevant purchasers, the Board found the mark likely to cause confusion with the registered mark SYNERGIE PEEL for “medical devices used for microdermabrasion” [PEEL disclaimed]. In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009) [precedential].

The marks: The Board had little difficulty in concluding that the marks are similar: they begin with words that are phonetic equivalents; the word SYNERGIE is the dominant portion of the cited mark; and both marks connote “synergy.”

Applicant argued that familiarity with its corporate name and its two registered marks, CYNOSURE and CYNOSURESPA, would cause consumers to pronounce the subject mark with a long “I”, whereas the cited mark would have a short “I” sound. [Any proof of this? -ed.] The Board, however, pointed out that the focus of its 2(d) analysis must be on the mark sought to be registered, not on other marks of applicant. “In other words, a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.”

The Goods: Examining Attorney Barbara A. Gaynor maintained that the involved goods both perform cosmetic procedures: e.g., they remove dead skin cells. The evidence showed that the goods are used for overlapping purposes and are purchased by the same entities for use in the same facilities. Applicant did not directly dispute that conclusion.

Instead, Applicant pointed to the specified, restricted channels of trade for its goods, relying “most emphatically” on the sophistication of the purchasers of its goods. Its lasers cost in the $90,000 to $170,000 range and are sold through a direct sales force that assists purchasers with installation and training. The goods of the cited registration fall in the $8,000 to $15,000 range, and users must be trained and certified.

Nonetheless, the Board concluded that “the level of care which would attend the purchases is not sufficient to preclude a likelihood of confusion under the totality of the circumstances in this case.” As the Board has previously stated, “Even technically trained purchasers who are extremely familiar with expensive machinery may be confused when similar marks are used with respect to the same goods.”

And so the Board affirmed the refusal to register.

TTABlog comment: I’ve always thought that the “sophistication of purchasers” factor was a make-weight that was seldom outcome determinative. [See, for example, Section 5 of this old article.] One may always argue that a person who is sophisticated in one field of endeavor is not necessarily “sophisticated” when it comes to trademarks. What, I wonder, would happen to that argument in a case involving, say, two software products sold under similar marks to trademark professionals?

As to Applicant’s argument about pronunciation of the marks, I was surprised that the Board didn’t pull out the old adage that “there is no correct pronunciation of a trademark.” [Really? What about APPLE?] Nor did the Board point out that, since Applicant’s mark and the cited mark both connote “synergy,” they would both be pronounced like “synergy.”

Text Copyright John L. Welch 2009.


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