Tuesday, July 24, 2012

Despite Sophisticated Purchasers, TTAB Finds PREVAIL Confusingly Similar to PEEK PREVAIL for Medical Implants

Applicant Vibrynt put up a gallant but losing effort in this Section 2(d) appeal from a refusal to register its applied-for mark PREVAIL for "medical devices, namely, abdominal implants and delivery systems therefor." The Board found the mark likely to cause confusion with the registered mark PEEK PREVAIL for "surgical implants comprising artificial material." In re Vibrynt, Inc., Serial No. 77701760 (July 20, 2012) [not precedential].

The marks: Vibrynt contended that PEEK is the dominant portion of the cited mark, but the Board found the marks similar in their entireties. Although the first portion of a mark the more likely to be remembered, here the word PEEK may have some suggestive descriptive connotation (i.e., polyether ether-ketone). In any event, the cited mark includes Applicant's mark in its entirety.

As to meaning, the term PEEK may give the cited mark a "more specific meaning" in the medical field, but both marks "suggest that the respective goods will assist a patient in prevailing over a medical infirmity."

Vibrynt pointed to a number of third-party registration, uses, and business names, as well as one website, involving use of PREVAIL in the medical or healthcare fields, but none of them referred to surgical implants. Moreover, there was no showing of the extent of use of PREVAIL by third parties. In short, this evidence was of minimal value.

The goods: The Board agreed with Examining Attorney Barbara A. Gaynor that Registrant's goods are not, as Vibrynt urged, limited to orthopedic implants. The identification of goods in the registration are not so limited, and must be construed to include Vibrynt's abdominal implants. This, the Board noted, is a "critical fact" in its analysis.

Vibrynt submitted nine declarations distinguishing abdominal implants from orthopedic implants. It argued that the word PEEK refers to the organic thermoplastic "polyether ether ketone," which is a biomaterial used with orthopedic implants. The Board, however, refused to allow a restriction of the goods of the cited registration. Although extrinsic evidence may be considered when an identification of goods is unclear, here there is no ambiguity in the registration. In fact, "surgical implants comprising artificial material" is an exact identification included in the Acceptable Identification of Goods and Services Manual.

Sophistication: The Examining Attorney conceded that the goods would be purchased with care, after some research and discussion. Nonetheless, the Board pointed out once again that "even sophisticated purchasers are not immune to source confusion, especially in cases such as the instant one involving similar marks and related goods." [This last statement seems to eliminate sophistication of purchasers as a factor in the du Pont analysis - ed.].

TTABlog comment: The Board noted that "the principal problem with applicant's case ... is registrant's broadly worded identification." Would a Section 18 modification or amendment of the registration, limiting it to orthopedic implants, make a difference in the 2(d) analysis?

Text Copyright John L. Welch 2012.


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