Precedential No.13: Divided TTAB Panel Dismisses "VIGILANZ" Opposition, Finding Purchasers Sophisticated and Goods Not Related

In a 55-page decision that includes a 12-page dissent, the TTAB dismissed a Section 2(d) opposition to registration of the mark VIGILANZ for "near real-time computer monitoring system comprised of a software application and database that anticipates and detects possible adverse drug events, and alerts healthcare providers to adverse drug events." The majority found that, despite the niche fame of Opposer's registered mark VIGILANCE for "heart monitors" and the similarity between the marks, likelihood of confusion with the registered mark was de minimis in view of the differences in goods, channels of trade, and classes of customers and the sophistication of the purchasers. Edwards Lifesciences Corporation v. VigiLanz Corporation, 94 USPQ2d 1399 (TTAB 2010) [precedential].


The panel was in agreement that Opposer's mark VIGILANCE has achieved niche market fame, based on use of the mark since 1990, sales figures that "appear to be relatively large," and a claimed market share of 75%.

The majority found the involved marks to be "similar." They are similar in appearance and sound and have the same meaning and overall commercial impression.

As to the goods, the majority found that "[d]espite the superficial similarities between the goods," they are very different. Opposer's product is a monitor used in critical care settings to measure cardiac output, whereas Applicant's system comprises software and a database used by hospital pharmacies to analyze patient lab results. Opposer argued that Applicant's identification of goods is not limited to use by pharmacies, but the majority accepted Applicant's extrinsic evidence to "demonstrate the meaning of its description of goods, and not to restrict or limit the goods."

Moreover, the majority found, "the purchasing process is so attenuated and lengthy for both products that there is time for all involved to understand clearly and completely the vendors with whom they are dealing." The majority pointed out that "the mere purchase of goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers." The likelihood of confusion must involve not merely a purchasing institution, but "customers or purchasers."

We are left with a record showing that the same people do not encounter the marks and products; or, if they did, they would do so only in the context of lengthy sales processes leaving no room for misunderstanding about the sources of the respective products.

The majority concluded that the involved products are not related and move in different channels of trade to different classes of consumers.

Weighing the relevant du Pont factors, the majority found the extent of any possible confusion to be de minimis.

In dissent, Judge Ritchie asserted that the majority had not given sufficient weight to the fame of Registrant's mark. Moreover, she would find the marks to be not merely "similar," but "almost entirely identical."

Her key disagreement concerned the relatedness of the goods.

[I]t is error on the part of the majority to give credence to applicant's argument that the market conditions are relevant where applicant seeks an unrestricted registration for its goods. Nowhere does [the application] say that it is limited to use by pharmacists, nor does that limitation ring true.

Judge Ritchie maintained that the Board should take judicial notice that the term "healthcare providers" in Applicant's identification includes physicians and nurses. Moreover, the "health monitors" of Opposer's registration are likewise unrestricted, and could include over-the-counter health monitors sold via prescription by pharmacists.

Judge Ritchie did not contest the finding that the involved goods are purchased with care by sophisticated purchasers, but she noted that sophisticated purchasers are not immune from source confusion when the marks are effectively identical. She would resolve "what little doubt" she had in favor of the prior registrant.

TTABlog note: The posting is, of course, a condensation of this lengthy and thoughtful decision, which merits a full read.

Text Copyright John L. Welch 2010.