Thursday, November 17, 2016

TTAB Test: Are HOLAIRA and ALAIR Confusable for Lung-Related Medical Devices?

Boston Scientific opposed an application to register the mark HOLAIRA for "medical devices for treating obstructive lung diseases; medical apparatus and instruments for treating obstructive lung diseases," claiming a likelihood of confusion with the registered mark ALAIR for "medical therapeutic devices for use in the treatment of pulmonary diseases, namely, catheters, probes, generators, bronchoscopes, and electrodes." The goods are identical or overlapping, a factor that "weighs heavily" in favor of opposer. But what about the marks? How do you think this came out? Boston Scientific Corp. and Asthmatx, Inc. v. Holaira, Inc., Opposition No. 91215699 (October 6, 2016) [not precedential].


The Board asserted that "[t]he only difference between the marks is the initial syllable of each, and the addition of an “a” at the end of Applicant’s mark." [Those are pretty big differences, aren't they? - ed.]. It found that the marks have a "strong visual similarity." [Really? - ed.]

Although there is no correct pronunciation of a mark that is not a recognized word, the Board found that "consumers are likely to vocalize the words in a similar manner, given that the stressed, middle portion in each mark is identical." [So there is a correct pronunciation? - ed.].

Moreover, the marks evoke "highly similar connotations:" they suggest "a sense of one's 'breathing in all the air' or getting 'air to the whole lung.'" According to the Board, "[t]he word “all” (evoked by the 'al' of Opposers’ mark) and the word 'whole' (evoked by the letter string 'hol' in Applicant's mark) are established synonyms." And the Board concluded that we find that the marks create "similar overall commercial impressions when used on goods used to treat pulmonary or respiratory disease."

And so, balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do? I think this case was a lot closer than the Board made it seem. Maybe the Board got it wrong.

Text Copyright John L. Welch 2016.

8 Comments:

At 8:44 AM, Blogger Frank said...

The Board definitely got it wrong.

 
At 9:12 AM, Anonymous Anonymous said...

what?

 
At 12:29 PM, Blogger Gene Bolmarcich said...

Does anyone have a good explanation as to why the TTAB is so overly protective of the register? I think it's to the point that they assume consumers have absolutely no memories and are wholly unable to distinguish words that are CLEARLY different. Is the theory in this case that consumers would mistake one mark from the other or that they would think one is an extension of the other? After all trademark owners don't modify their marks willy nilly but only if it makes sense from a marketing standpoint and the extension itself has some meaning. Trademark law needs a lot more focus on marketing reality as opposed to theoretical factor analysis combined with a completely subjective "weighing" of those factors.

 
At 12:44 PM, Anonymous Fred James said...

I agree with Frank.

 
At 1:32 PM, Anonymous Anonymous said...

The marks do not seem similar enough to support a finding of a likelihood of confusion. It'll be interesting to see whether it's appealed.

 
At 1:47 PM, Anonymous Anonymous said...

A very unpersuasive decision.

 
At 2:29 PM, Anonymous Anonymous said...

I agree with the disagreement. What about the descriptiveness/weakness of the AIR formation e on these breathing related medical goods plus the sophisticated purchaser argument?

 
At 10:31 PM, Anonymous Mitch Stabbe said...

I would have thought that the Board would say that the different first syllables create a different visual and aural impression. I also just spoke the marks out loud and must agree with the disagreers.

 

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