Friday, December 14, 2012

Purchaser Sophistication Yields TTAB Reversal: OVATION for Vascular Implants Not Confusable with OVATION for Hip Implants

Despite the identity of the marks and the inherent strength of the cited mark, the Board reversed a Section 2(d) refusal to register OVATION for vascular stents and related devices, finding it not likely to cause confusion vis-a-vis Registrant's hip prosthesis used in joint reconstruction surgery. The Board  concluded that "any reasonable decision to purchase goods of applicant or registrant would in all likelihood involve a person having specialized expertise in orthopedic or vascular medicine, as appropriate." In re TriVascular, Inc., Serial No. 77941535 (November 27, 2012) [not precedential].

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?

Post your comment here

Text Copyright John L. Welch 2012.


At 8:01 AM, Blogger Frank said...

I would welcome the demise of Mucky Duck. I think your suggestion is sound and hope the TTAB agrees.

At 8:57 AM, Anonymous Susan said...

I agree. I am tired of the refusals based on theoretical usage, especially with the laundry lists submitted by foreign applicants who don't need to show any use in the USA at all.

At 9:34 AM, Anonymous Orrin A. Falby said...

John - I agree that the reliance on Mucky Duck and Trostle presents some problems. However, you are assuming that all companies use the Internet to market their goods/services and that use of all of their trademarks could be uncovered by doing a simple Google search. In theory, this is a fallacy. The probative value of 3rd party registrations is to show that the goods "could" emanate from the same source based on the fact the various companies have registrations that cover such goods. This is similar to how registrations are used to establish connotation. In the context of an ex parte proceeding, I can understand the reliance on these registrations as one of the facts that is used to show that goods are related and to expect the EA to come up with evidence of use is not reasonable. This will slow down the process. The probative value of these registrations are limited and registrations with laundry list or those that are house marks are not given consideration. This tends to eliminate quite a few of them and narrow the focus on those companies that are actually using the marks with the goods. Also, when it comes to specialized highly sophisticated type goods, there tend not to be enough registrtions to support the relatedness of the goods factor. Perusing through the registrations is a time consuming and daunting task, but I find that you could knockout a lot of these registrations where the EA tries to connect goods that are obvious disparate. My experience is that practioners do not take enough time to refute this evidence.

At 9:41 AM, Anonymous Alex said...

I would agree that actual use evidence from the Internet would & should be more compelling but I don't think any written rule needs to be changed or added for this. I do agree, however, that the TTAB (& USPTO) could implement this in practice in the weight they afford to each form of evidence.

Good point.

At 9:48 AM, Anonymous Orrin A. Falby said...

Susan - those Section 44 and 66 registrations do not have any value in the analysis and its up to the practioner to point this out to the EA. Only use-based registrations are relevant. I do not like to deal with these registrations either. I think that the Board needs to require more than just registrations. Industry news articles or actually evidence that companies in general do sell the goods that are claimed to be related should suffice. Remember, we are living in a world where indistries are converging and consumer expectations are changing. Take for example the financial industry. A few decades ago, the argument could be made that insurance and investment services are not related. However, due to regulatory changes, finance and insurance services now emanate from the same sources -- or look at home goods and apparel. The concept of lifestyle marketing has given companies the ability to expand their brands across numerous product lines, which have in the past been considered disparate.

At 9:49 AM, Blogger John L. Welch said...

My main point is this. If there is a lot of deadwood on the register, should the TTAB be applying Mucky Duck at all? That's a separate issue from the Internet search issue.

At 10:15 AM, Anonymous Orrin A. Falby said...

John I see you point. I think that the 3rd party registrations should be a starting point. The issue should be more sophisticated than just relying on registrations. Evidence of the industry practices and consumer expections should be considered. So, to get around the issue of proving use with all of the goods cited in the registration, require evidence that show those types of goods actually emanate from the same source based on industry practices, which tend to influence consumer expectations.

At 11:19 AM, Anonymous Anonymous said...

These suggestions raise tough issues of balance, however, and could lead down a slippery slope.

It may not be fun, or fair, for applicants to have "deadwood" registrations cited against their marks. But, what looks like deadwood could be a perfectly valid registration. As noted in other comments, some companies don't use the Internet to do a noticeable portion of their advertising. Furthermore, the USPTO does not require specimens for foreign applications or extensions of protection.

For these reasons, it is dangerous to heap more and more responsibility solely on examining attorneys to flush out deadwood. More stringent filing requirements and more intra partes cancelation actions are the only fair way to protect against deadwood. Without more ways to compel real evidence of use, examiners cannot be expected to bear all expectations of having a register that is genuine.

So while applicants may hate examinations that seem unfair, owners of marks (and those that hope to be) should be grateful that their registrations are prima facie proof of validity.

At 11:35 AM, Anonymous Mark Donahey said...

I fully agree with Orrin's points above. I believe well-established limitations on the probative value of third-party registration evidence, as outlined in that great presentation by James Walsh and Michael Hall, already account for the problem of over-broad lists of goods and services that may or may not be in use. For example, laundry-lists of unrelated goods receive limited weight, Section 44 and 66 registrations have no value at all, and the third-party regs must include both of the specific goods at issue.

While it is always better (and more probative) when an Examining Attorney relies on actual evidence of use, I believe that in most cases third-party registration evidence is the most efficient means of establishing a prima facie case on the record in support of common sense relationships between goods and services, and therefore I disagree that the evidence should be disregarded altogether.

As I've noted before, I believe the biggest problem with Mucky Duck evidence is the absence of a yard stick to measure whether a particular number of third-party registrations is sufficient to support a relationship between two goods and services. For example, some goods (like t-shirts) appear in so many registrations that it is easy to find a couple dozen third-party registrations connecting them with just about anything, but for less common goods a handful of registrations might be enough to indicate a strong relationship. In this case, the Board found that three third-party registrations were not enough, but it didn't explain why.

Developing a sensible yardstick for putting the number of third-party registrations in context would benefit applicants by helping EAs better determine when the record is strong enough to maintain a refusal versus when, as in this case, it is likely to be reversed on appeal.

At 2:06 PM, Blogger Chistianus Publius said...

Perhaps the USPTO audits on deadwood will reveal quantitative information that (if this is one’s desire) could be used to undercut the force of arguing that goods or services are related because they are covered in the same mark registration.

On another note, powerful corporate trademark departments and INTA both oppose requiring proof of usage of the mark on each item of goods and services claimed in a registration. I disagree with their position (and favor requiring such proof) but, regardless, expect them also to fight against any sort of reality check on what goods or services are actually being branded, because that will weaken their position of resistance to proof of usage of the mark on each item of goods and services.


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