TTAB Reverses 2(d) Refusal of DURAJECT for Ophthalmic Instruments Over DURO-JECT for Bone Cement Injector

The DURAJECT decision that was included in yesterday's TTABlog Test deserves closer attention, both because of the applicant's impressive evidence and arguments, and the Board's careful analysis of the second, third, and fourth DuPont factors. The Board reversed a Section 2(d) refusal of the mark DURAJECT for "medical and surgical apparatus and instruments for use in ophthalmic procedures," finding confusion unlikley with the registered mark DURO-JECT for a "medical device, namely, a high pressure bone cement injector." Although the marks are "very similar," the Board found the goods dissimilar, the channels of trade distinct, and the relevant purchasers sophisticated. In re EyePoint Pharmaceuticals US, Inc., Serial No. 98414251 (March 6, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Examining Attorney argued that ophthalmic instruments and bone cement injectors are related because they can both be found on the same websites, including those of certain large medical suppliers - pointing to Rarefied International, Cardinal Health, Medtronic, Stryker, 3M/Solventum, and others. Applicant Eyepoint argued that "all such sites cited by the Examining Attorney are (1) large marketplaces offering a wide range of medical goods from different manufacturers or (2) single vendors offering a wide range of medical goods under different categories. In no case are both kind of goods offered under the same category or on the same page."

As the Board explained in OSF Healthcare, examining attorneys and the Board must focus on the precise language of the relevant identifications of goods or services, not on broadened or generalized goods or services, OSF Healthcare, 2023 WL 6140427, at *12, especially where, as here, at least one of the identifications is very specific.

The Board found that none of the sites showed ophthalmic instruments and a "high pressure bone cement injector" being sold under the same mark. The Rarefied International site listed both dental instruments (including "dental cement injectors") and ophthalmic instruments, but under separate headings and not under the same mark - and the Examining Attorney never established that teeth are made of bone or that a bone cement injector is used in dental procedures. The 3M evidence suffered the same dental-versus-bone problem. The Stryker products were for sinus surgery, not ophthalmic procedures. The Cardinal Health site showed ophthalmic kits and a bone surgery supply checklist, but no high pressure bone cement injector.

Because the record does not show that “medical and surgical apparatus and instruments for use in ophthalmic procedures” and “a high pressure bone cement injector” are commonly sold under the same marks, and there is no other probative evidence of relatedness, we find that the second DuPont factor strongly supports a conclusion that confusion is not likely. OSF Healthcare, 2023 WL 6140427, at *17.

As to channels of trade and classes of consumers, there was agreement that the goods ultimately flow through the same large GPOs (group purchasing organizations) and end up in the same hospitals and medical centers that provide ophthalmic and orthopedic surgery. But the Board, relying on Electric Design & Sales v. Electronic Data Systems, 954 F.2d 713 (Fed. Cir. 1992), drew a key distinction: the mere fact that two products are purchased by the same institution does not establish overlapping channels of trade or consumer confusion. “The likelihood of confusion must be shown to exist not in a purchasing institution, but in a ‘customer or purchaser.’”

The Board found that here, as in Elec. Design & Sales, the involved goods are sold to large institutions, but their brand names are not exposed to the same “customer or purchaser” within those institutions. The Examining Attorney appeared to agree that “‘there is no such thing as a single purchaser for a hospital customer’ because ‘different individuals or groups within a buying institution are responsible for purchasing different kinds of medical goods.’” The Board therefore found that the third DuPont factor supported reversal.

As to purchaser sophistication, the Board found the purchaser class consists entirely of professional buyers of medical supplies - not a mixed class of professionals and consumers. Even the least sophisticated professional buyer could be expected to exercise care when purchasing FDA-regulated surgical instruments for specific medical specialties. The fourth factor supported reversal.

The Board concluded that "the dissimilarity of the goods and channels of trade, and the sophistication of the professional purchasers of the goods, outweigh the similarity of the marks, and make confusion unlikely."

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TTABlogger comment: This is another example where the involved goods or services fall under a broad umbrella term, but evidence was lacking to show that anyone sells the identified goods or services under the same mark. Judge Larkin has stressed this point in at least two other relatively recent decisions: here and here.

Text Copyright John L. Welch 2026.