APEX 3D for Ankle Implant Materials and Instruments Confusable With APEX for Bone Pins and Screws, Says TTAB

The Board issued its 155th (CLV) Section 2(d) affirmance this year (against 11 (XI) reversals), finding the mark APEX 3D for "Medical devices, namely, ankle joint implants comprised of artificial materials and associated surgical instruments used exclusively with total ankle implants," to be confusingly similar to the registered mark APEX for "bone pins and screws." Applicant Paragon 28 (XXVIII) argued that "[e]ven if the goods may potentially be used during the same surgery (which they are not)," the goods "themselves are significantly different and serve entirely different purposes." The Board was not impressed. In re Paragon 28, Inc., Serial No. 88692159 (October 18, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Rejecting applicant's feeble assertion that the addition of the term 3D distinguishes the marks, the Board found the marks to be similar in sound and appearance and very similar in connotation and commercial impression.

As to the goods, applicant contended that "the descriptions [in the identifications] alone are sufficient to establish that the medical devices are different, and thus the targeted consumers are different." However, the Board noted, the cited registration is broad enough to include "bone pins and screws" used in ankle surgery. Moreover, Examining Attorney Anthony Rinker submitted eleven (XI) third-party registrations showing that the same entity has registered a single mark identifying goods in both the subject application and the cited registration. The Board concluded that we "the goods are related in such a manner that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source."

The Board found lacking any evidence of any overlap of channels of trade, and so this DuPont factor favored applicant. Also favoring applicant was the evidence that medical goods may be purchased by a hospital purchasing committee, who make the decision of which goods to purchase after considerable time and deliberation. The Board therefore found that applicant’s and registrant’s goods "are purchased by medical personnel and the purchasing process requires some deliberation and care."

Nonetheless, these two factors favoring applicant did not outweigh the similarity of the marks and the relatedness of the goods, and so the Board affirmed the refusal.Read comments and post your comment here.

TTABlogger comment: Does it often happen that the consumers overlap, but not the channels of trade?

Text Copyright John L. Welch 2022.