Two key DuPont factors for likelihood of confusion under Section 2(d) of the Trademark Act are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”).

APEX Marks

The USPTO refused to register 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,” under Section 2(d) in view of the registered mark APEX for “bone pins and screws.” In re Paragon 28, Inc., Ser. No. 88692159 (TTAB Oct. 18, 2022).

The Marks and The Goods

On appeal, the Trademark Trial and Appeal Board (“TTAB”) found that the marks themselves were similar.

With respect to the goods, Applicant argued that “[e]ven if the goods may potentially be used during the same surgery,” the goods “are significantly different and serve entirely different purposes.” But the TTAB found that the cited registration for “ankle joint implants” was broad enough to include “bone pins and screws” used in ankle surgery.

Neutral Channels of Trade

As for the third DuPont factor regarding “trade channels,” the TTAB noted that there were no restrictions or specific limitations in the identification of goods set forth in the application and cited registration. DeVivo v. Ortiz, 2020 USPQ2d 10153, at *39-41 (TTAB 2020) (“absent an explicit restriction in the application, the identified goods in the application must be presumed to move in all channels of trade that would be normal for such goods and to all usual prospective purchasers for goods of that type”).

Applicant's CTO testified that the identified goods are sold directly from Applicant through sales representatives and are not sold in stores or available for resale.

The TTAB found evidence of trade channel overlap to be lacking, and thus neutral. See Bond v. Taylor, 119 USPQ2d 1049, 1054 (TTAB 2016) (“However, while the consumers may be identical, the evidence is not sufficient to establish an overlap in the channels of trade for the services.”).

Conditions of Sale

The TTAB also noted evidence that, “in the medical field, medical goods may be purchased by a hospital purchasing committee, who make the decision of which goods to purchase after considerable time and deliberation” and exercise considerable care in the purchase decision. See, e.g., In re Cook Med. Techs. LLC, 105 USPQ2d 1377, 1383 (TTAB 2012) (“Given the nature of [medical devices] it is reasonable for us to assume that the relevant purchasers are likely to exercise some degree of care when it comes to buying and using [goods] that would be used in performing medical procedures.”); Edward Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) (finding that “heart monitors,” and computer monitoring systems in the field of adverse drug events, “are purchased and licensed only after careful consideration [significant study and negotiations] by persons who are highly knowledgeable about the products”); In re Toshiba Medical Sys. Corp., 91 USPQ2d 1266, 1273 (TTAB 2009) (“it seems beyond dispute that ultrasound and MRI imaging equipment is expensive and that the purchasers of these products would be sophisticated”); Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1393 (TTAB 1991) (potential customers of medical instruments and medical equipment would be purchased by highly educated sophisticated purchasers who know their equipment needs and would be expected to exercise great care in their selection).

Even though the conditions of sale and buyers to whom sales are made weighs in Applicant's favor, the TTAB held this DuPont factor does not overcome similarity of the marks and relatedness of the goods for likelihood of confusion.

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