Monday, June 29, 2009

Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB

The Board played "Whac-A-Mole" with Applicant Toshiba's several arguments as it affirmed the PTO's Section 2(d) refusal to register the mark VANTAGE TITAN for "medical magnetic resonance imaging diagnostic apparatus, namely, MRI diagnostic apparatus." Despite the sophistication of the purchasers, the differences in the marks and the goods, and the distinctiveness of the word VANTAGE, the Board found the mark likely to cause confusion with the registered mark TITAN for "medical diagnostic apparatus, namely, medical ultrasound device." In re Toshiba Medical Systems Corporation, 91 USPQ2d 1266 (TTAB 2009) [precedential].

The Marks: Toshiba argued that, while addition of a house mark to someone else's registered mark does not avoid likely confusion, the term VANTAGE is not a house mark but a product mark used in two other Toshiba marks. The Board, however, observed that it does not matter whether VANTAGE is a house mark or a product mark. Even if the latter, "[t]he addition of a distinctive term, which is not a house mark, does not necessarily result in marks that are dissimilar." In other words, "there is no rule that adding a product mark to a registered mark avoids confusion while adding a house mark results in confusion."

Inasmuch as the words "Vantage" and "Titan" are not naturally associated, the term TITAN will retain its identify as a separately identifiable mark.

Toshiba pointed to a number of third-party registrations for TITAN-formative marks, contending that TITAN is highly suggestive and deserving of a "very narrow scope of protection." The Board noted, however, that Toshiba offered no evidence that these third-party marks are in use, and further that the registrations involved different goods.

These third-party registrations may, however, be considered "as a form of dictionary definition." Toshiba asserted that TITAN is laudatory (pointing to a TTAB decision involving cigars), but the Board concluded that, with regard to the machines at issue here, TITAN is "only slightly laudatory, and it is not entitled to only a narrow scope of protection."

The Board ruled that the marks are similar, supporting a finding of likely confusion:

... the marks TITAN and VANTAGE TITAN are more similar than they are different. Applicant has taken registrant's mark and added its "product mark" to it. It is not clear why the addition of the word VANTAGE would avoid confusion. It is more likely to be considered another product from the previously anonymous source of TITAN medical diagnostic apparatus, namely, medical ultrasound devices.

The goods: The Board found that "several facts" supported the conclusion that the involved goods are related: (1) they are both medical diagnostic apparatus with imaging functions; (2) both goods "originate from the same source" (i.e., some third party companies, and Toshiba itself, sell both); (3) the goods are used in the same facilities; and (4) the goods can serve complementary purposes because they may be used by medical personnel to treat the same patient for such diseases as prostate cancer.

Toshiba pointed to six pairs of registrations showing that the PTO "has allowed similar marks for MRI and ultrasound equipment." The Board, however, pointed out that third-party registrations "cannot justify the registration of another confusingly similar mark." Moreover, none of the pairs of registrations involved the taking of an entire registered mark and adding an additional word to it, and the marks involved were quite different from those at issue here.

The Board next found that the channels of trade and the concerned purchasers are likely to overlap: "both items [are] likely to be purchased by the same departments of diagnostic facilities with the involvement of the same physicians in the purchasing decision."

Sophistication of purchasers: The Board acknowledged that sophistication of purchasers is "an important factor in avoiding confusion." The goods at issue are expensive and the purchasers are sophisticated. However, the Board noted once again that "even sophisticated purchasers may be confused."

Here, the Board could not conclude that the sophisticated purchasers would not be confused when the marks TITAN and VANTAGE TITAN are used on the respective goods.

These purchasers are likely to be aware that a single entity can be the source of both such products. *** These purchasers, familiar with registrant’s products, are likely to participate in purchasing decisions involving applicant’s goods, and assume that the products are associated or related in some way. The fact that purchasers may study the specimens and determine that applicant’s and registrant’s imaging devices originate from different sources is not relevant. We must consider whether the marks TITAN and VANTAGE TITAN when used on the identified goods are confusingly similar. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 104 n.6 (CCPA 1979) ("Likelihood of confusion occurs upon observance of the mark and goods. It need not await a reading of the book. The mark, not the specimen, is submitted for registration").

The Board therefore affirmed the refusal to register.

TTABlog questions: What is it about this opinion that led the Board to deem it precedential? What do you think of the Board's treatment of the sophisticated purchaser argument? Do you think the Board got this one right? Would you appeal?

Text Copyright John L. Welch 2009.


At 11:37 AM, Anonymous LexyTM said...

I think the board got it right, although I question some of the assertions and cases cited in the sophistication section. The opinion seems to equate "sophisticated" with plain-old "smart." I would have liked to see a more extensive explanation of WHO makes a purchasing decision about expensive medical apparatuses. If it's always a designated hospital administrator, fine, but if doctors are weighing in on these decisions then no-- they're usually not going to be sophisticated consumers in the trademark sense.


Post a Comment

<< Home