Tuesday, August 17, 2010

TTAB Reverses 2(d) Refusal of "HEARTWORKS" Despite Substantial Identity of Cited Mark

In a heartwrenchingly mundane case, the Board reversed a Section 2(d) refusal to register the mark HeartWorks for “apparatus for measuring blood pressure, body fat, weight and pulse, namely, body and health monitoring machine for standard measurements, namely, weight, body mass index, body fat content, heart rate and blood pressure, to be operated by an individual in public indoor locations” and “wheelchairs; convertible wheel chairs,” finding it not likely to cause confusion with the registered mark HEARTWORKS for "medical equipment, namely, diagnostic workstations in the field of cardiology diagnostics, comprised of computer hardware and monitors, associated graphical user interface, and instruction manual sold in conjunction therewith." In re Takano Co., Ltd. Serial No. 77412149 (August 10, 2010) [not precedential].

Applicant Takano argued that its products are used in "health promotion facilities," like gyms, "where healthy persons want to use the measurement machine to enhance and maintain their health," whereas Registrant's goods are used by doctors or specialists for patients having cardiac problems.

The Examining Attorney relied on many website pages purporting to show the goods to be related. The Board agreed with Takano that Registrant’s products are sold only to entities in the business of diagnostic cardiology, and conclude that the evidence "fails to show that companies that make "sophisticated medical devices for hospitals or doctors' offices also make health monitoring machines for use in public places such as pharmacies, sports gyms and health clubs." The Board further found that the involved goods "will move through distinct channels of trade to substantially different classes of purchasers."

Finally, the Board noted that the involved goods are relatively expensive, and "the persons charged with decision making at these various enterprises would be fairly sophisticated purchasers."

In conclusion, while the marks are substantially identical, this is outweighed by the fact that there is no apparent relationship between the respective goods, there are distinct channels of trade, the salient goods are expensive and will be marketed to distinct groups of fairly sophisticated persons.

And so the Board reversed the refusal.

Text Copyright John L. Welch 2010.


At 12:45 PM, Anonymous Anonymous said...

Looks to me like the Board went outside the scope of the cited mark ID and looked deeper into the cited mark's actual market rather than sticking to the ID alone. Is an Opposition soon to come?


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