In re Sutter Medizintechnik GmbH
| Decision Date | 30 August 2021 |
| Docket Number | 88688701 |
| Parties | In re Sutter Medizintechnik GmbH |
| Court | Trademark Trial and Appeal Board |
This Opinion is not a Precedent of the TTAB
Ludomir A. Budzyn of Budzyn IP Law, LLC, for Sutter Medizintechnik GmbH.
Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115 Daniel Brody, Managing Attorney.
Before Shaw, Goodman and Hudis, Administrative Trademark Judges.
Shaw Administrative Trademark Judge:
Sutter Medizintechnik GmbH ("Applicant") seeks registration on the Principal Register of the mark SWYNG, in standard characters, for "Surgical instruments for bipolar coagulation; [and] bipolar surgical forceps," in International Class 10.[1]
The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant's mark, as used in connection with the goods indicated above, so resembles the marks SWINGJAW[2] for "Treatment instruments for use with medical and surgical endoscopes, namely, biopsy forceps," in International Class 10, and SWINGTOP[3] for "Surgical apparatus and instruments for use in general surgery and laparoscopic surgery; medical apparatus and instruments, namely, port access systems comprising cannulae, trocars, valves, seals luer caps and facia adapters; parts and fittings for surgical and medical apparatus and instruments, namely, cannulae, trocars, valves, seals, luer caps and facia adapters," in International Class 10, both on the Principal Register, as to be likely to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and twice requested reconsideration. The Examining Attorney denied the requests for reconsideration and the appeal resumed. The case is fully briefed. We affirm the refusal to register the mark.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973) ("DuPont") cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293, 113 U.S.P.Q.2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 U.S.P.Q.2d 1160, 1162-63 (Fed. Cir. 2019).
In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 U.S.P.Q.2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) (); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1747 (Fed. Cir. 2017) () (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002)). We address each factor in turn.
We begin with the first DuPont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 U.S.P.Q. at 567. "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." In re Inn at St. John's, LLC, 126 U.S.P.Q.2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 U.S.P.Q.2d 1810, 1812 (TTAB 2014)), aff'd mem., 777 Fed.Appx. 516 (Fed. Cir. 2019). The emphasis of our analysis must be on the recollection of the average purchaser-here, a surgeon or a buyer at a surgical hospital-who normally retains a general, rather than specific, impression of trademarks. In re Assoc. of the U.S. Army, 85 U.S.P.Q.2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106, 108 (TTAB 1975).
"[S]imilarity is not a binary factor but is a matter of degree." In re St. Helena Hosp., 774 F.3d 747, 113 U.S.P.Q.2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 U.S.P.Q.2d 1059, 1062 (Fed. Cir. 2003)). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, "our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks." In re Ox Paperboard, LLC, 2020 U.S.P.Q.2d 10878, at *4 (TTAB 2020) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014)).
However, "there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." Stone Lion, quoting In re Nat'l Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). We begin with a review of the particular features of the marks, and then consider the marks "in their entireties." Nat'l Data, 224 U.S.P.Q. at 751.
The Examining Attorney argues that [4]
We have often found that the phonetic equivalent of a word may be perceived as the known word. See In re Tapco Int'l Corp., 122 U.S.P.Q.2d 1369, 1372 (TTAB 2017) ("Although we note that KLEER has a non-standard spelling, Applicant has provided no evidence that consumers would perceive KLEER as something other than the phonetic equivalent of 'clear.'"); In re Calphalon Corp., 122 U.S.P.Q.2d 1153, 1163 (TTAB 2017) (); Hi-Shear Corp. v. Nat'l Auto. Parts Ass'n, 152 U.S.P.Q. 341, 343 (TTAB 1966) (HI-TORQUE "is the phonetic equivalent of the words 'HIGH TORQUE'"). Applicant admits that its mark, SWYNG, "suggests to consumers a fanciful spelling of the word 'swing.'"[5] We agree that consumers will likely perceive SWYNG as an alternate spelling of SWING.
Moreover, Applicant's entire mark, SWYNG, and the first portions of the cited marks, SWING, are most likely "to be impressed upon the mind of the purchaser and remembered." Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 U.S.P.Q.2d 1895, 1897 (TTAB 1988) (). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 U.S.P.Q.2d 1698, 1700 (Fed. Cir. 1992) ().
As noted by the Examining Attorney, "applicant's applied-for mark has no additional wording or elements [to] distinguish it from the registered marks."[6] While there is no explicit rule that we must automatically find marks similar when one mark incorporates the entirety of another mark, the fact that Applicant's mark is wholly incorporated within the cited marks increases the similarity between them. China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 U.S.P.Q.2d 1123, 1125 (Fed. Cir. 2007) (); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1271 (TTAB 2009) ().
As for the terms "top" and "jaw" in the cited marks, SWINGTOP and SWINGJAW, the Examining Attorney argues that these terms are less significant than SWING because they are secondary in position and are descriptive when used in connection with the goods. Regarding the mark SWINGTOP, the Examining Attorney argues that the mark "connotes the commercial impression of such goods having some sort of swinging function or feature"[7] This is consistent with the Applicant's Google image search of "swingtop" bottles[8] and Applicant's statement that "SWINGTOP imparts to purchasers the phrase "swing top," which connotes a swinging top."[9]
Regarding the mark SWINGJAW, the Examining Attorney argues that "the term 'JAW is commonly used to describe a feature, function or shape of medical or surgical instruments."[10] For support, the Examining Attorney relies on several web site excerpts showing use of the term "jaw" in connection with a variety of biopsy forceps:[11]
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