Thursday, June 23, 2022

TTAB Denies RESET Cancellation Petition Due to Failure to Show Relatedness of Opiod Treatment Software and Medical Sensors

The Board denied a petition for cancellation of registrations for the mark RESET for "Software for the treatment of substance use disorder" and RESET-O for "Software for the treatment of opioid use disorder, namely, software for collecting information and data from and for delivering information and therapy to patients with opioid use disorder," finding that Opposer Masimo failed to prove likelihood of confusion with its registered marks SET, RAINBOW SET, and RD RAINBOW SET for patient sensors and monitors. The Board found the marks to be "marginally more similar than dissimilar," but the evidence did not establish that the involved goods are related. Masimo Corporation v. Pear Therapeutics, Inc., Cancellation No. 92073785 (June 17, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Petitioner’s SET-formative marks were found to be inherently strong in connection with the sensors and monitors used in the medical field. As to commercial strength, the respondent's third-party registration evidence failed to demonstrate commercial weakness of the term SET, and so the Board deemed the the sixth DuPont factor to be neutral.

The Board found the involved marks to be "marginally more similar than dissimilar in appearance, sound, meaning and commercial impression, and so this factor slightly favored Masimo.

Masimo contended that the goods are "highly related" because "Respondent's software allows doctors and clinicians to 'monitor the patient’s progress in a substance abuse program through a mobile app and clinician-facing dashboard,' and Petitioner’s monitors and sensors 'are used in connection with monitoring those using prescribed opioids, and are in development for use monitoring persons in treatment for opioid addiction." The Board, however, found Masimo's evidence to be "tangential at best." "Petitioner’s evidence shows that its sensors and monitors can be used by medical personnel to monitor patients who have been prescribed opioids in order to prevent respiratory issues. Respondent’s software, on the other hand, is used for the treatment of substance and opioid abuse disorders."

As Respondent points out in its argument, there is only a vague “generalized opioid user ‘connection’” between these goods. The evidence does not show, for example, that these are the types of goods that consumers would expect to emanate from a common source or that those purchasing software for treating opioid and substance abuse would also be consumers of Petitioner’s monitors and sensors, even if the latter goods are used to prevent adverse medical conditions that may result from opioids. Again, we are mindful that the mere fact that the involved goods can be classified as within the medical field does not mean the goods are related.

Masimo did not establish its sensors and monitors sold under its marks are marketed to consumers who are involved in the treatment of substance or opioid abuse disorders. Furthermore, given the inherent nature of the involved goods, "those looking to purchase these different goods constitute two distinct groups of sophisticated purchasers."

The Board concluded that, because there was "no real demonstrated relationship" between the parties' goods, and because there was no evidence demonstrating that these goods are offered in the same channels of trade to the same classes of consumers, it could not find that confusion is likely. And so it denied the petition for cancellation.

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TTABlogger comment: I agree with this one. How about you?

Text Copyright John L. Welch 2022.


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