FRIADENT v. Dr. IHDE DENTAL, 91185795 (TTAB 4-28-2011)
Opposition No. 91185795United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: April 28, 2011Page 1
C. Bruce Hamburg of Jordan and Hamburg for Friadent GmbH.
Robert C. Haldeman of Husch Blackwell Sanders, LLP for Dr. Ihde Dental AG.
Before Walters, Wellington, and Ritchie, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Dr. Ihde Dental AG, a Swiss entity, filed an application to register the mark XIGN (in standard character format) for “artificial implants” in International Class 10.[fn1]
Friadent GmbH (hereinafter, “opposer”), a German entity, has opposed registration of applicant’s mark. As its ground for opposition, opposer alleges that it is the owner of Registration No. 2966391 for the mark XIVE for aPage 2
long list of surgical and dental implant goods that includes “dental crowns, dental bridges, dental prostheses” as well as instruments and tools for dental, surgical and bone implant procedures;[fn2] and that applicant’s applied-for mark “is likely, when used on or in connection with applicant’s goods to cause confusion, or to cause mistake, or to deceive due to its similarity to XIVE and its use on goods similar to the goods sold by opposer under its mark.”
In its answer, applicant denied the salient allegations of the notice of opposition regarding a likelihood of confusion.
Only opposer filed a trial brief. However, throughout the entire brief, opposer transposes the parties’ marks. That is, opposer consistently refers to applicant’s mark as XIVE, which in actuality is opposer’s mark and the subject mark of the pleaded registration, and refers to its owns mark as XIGN, which in actuality is the opposed mark. Either this is an elaborate attempt to demonstrate that confusion is likely or a failure to proofread one’s own brief. In any event, we are able to delineate the arguments contained in the brief, and have given them full consideration, to the extent that opposer argues that there is a likelihood of confusion between the parties’ respective marks.Page 3
The record in this proceeding is sparse. It includes the pleadings and, by operation of the rules, the subject application file. The only evidence submitted is a status and title copy of opposer’s pleaded registration.[fn3]
Standing and Priority
Because opposer has properly made of record its pleaded registration, it has established its standing to oppose registration of applicant’s mark. Cunningham v. Laser GolfCorp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
In addition, Section 2(d) priority is not an issue in this case because the pleaded registration is of record. See KingCandy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of confusion
Our determination of likelihood of confusion under Section 2(d) of the Lanham Act is based on an analysis of all the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont deNemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. SeeFederated Foods, Inc. v. Fort Howard Paper Co., 544 F.2dPage 4
1098, 192 USPQ 24 (CCPA 1976). Again, we have very limited evidence of record and our likelihood of confusion analysis is limited to opposer’s registered mark vis-?-vis applicant’s applied-for mark as well as the goods covered by the pleaded registration and subject application.[fn4]
We also note that although applicant did not take testimony, introduce any evidence, or file a trial brief, it is opposer, as plaintiff, who bears the burden of establishing likelihood of confusion by a preponderance of the evidence. Bose Corp.v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[t]he burden of proof rests with the opposer . . . to produce sufficient evidence to support the ultimate conclusion of [priority of use] and likelihood of confusion”).
With the above principles in mind, we first consider the duPont factors regarding the similarity or dissimilarity of the goods, trade channels and classes of purchasers. In our evaluation of these factors, we are bound by the goods identified in the involved application and pleaded registration. In the absence of any restrictions or limitations in the application andPage 5
registration, we must assume the goods are sold through all the normal and usual trade channels for such goods to all the usual purchasers of such goods. See Hewlett-Packard Co. v.Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston ComputerServices Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). Here, applicant’s goods (“artificial implants”) are legally identical to certain goods covered by opposer’s registration. Opposer’s “dental implants and accessories, namely, dental crowns, dental bridges, dental prostheses” are encompassed by the broader “artificial implants” term. Moreover, we note that many of the other goods covered by opposer’s registration involve “tools” or “medical instruments” used for “bone implants” and “prostheses operation” and thus are clearly related to applicant’s artificial implants. And, because there are no restrictions in the application and registration, we must presume that the parties’ respective items, at least where we find them to be identical, would be found in the same channels of trade and be subject to purchase by the same consumers. See Hard Rock Cafe Licensing Corp.v. Elsea, 48 USPQ2d 1400 (TTAB 1998). Accordingly, the aforementioned du Pont factors favor finding a likelihood of confusion.
This brings us to the similarity or dissimilarity of the marks. Our focus is on whether the marks are similar inPage 6
sound, appearance, meaning, and commercial impression.Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin MaisonFondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We keep in mind that when marks would appear on identical goods, as they do at least in part here, the degree of similarity of marks necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. CenturyLife of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In comparing the marks, we find that opposer’s mark, XIVE, is overall dissimilar to and distinguishable from applicant’s mark, XIGN. Although both marks begin with the letters “XI,” the remaining letters are different and suffice for purposes of creating a different appearance and, to the extent that consumers attempt to pronounce the terms, result in different pronunciations. That is, opposer’s mark ends with the letters “IVE” whereas applicant’s mark ends with “IGN”, both of which are recognizable and not uncommon endings for words,e.g., strive, live, five, jive, alive. . .and sign, align, malign, design, etc. Accordingly, while we acknowledge and have long said that there is no correct manner to pronounce marks that are not defined or are common words, it stands to reason that the parties’ marks will be pronounced differently.Page 7
In terms of connotation and commercial impression, there is no evidence to suggest that either XIVE or XIGN has any special meaning or is suggestive of anything. Furthermore, it has not been argued that either mark is an initialism or acronym. Thus, each mark will likely be viewed by consumers as an arbitrary term without any meaning or suggestiveness in connection with the identified goods.
Opposer cites to McCarthy on Trademarks and UnfairCompetition (4th Ed. 2008) and argues that its registered mark should be given a “wide scope of protection” because it is a “letter marks.” Brief, p. 3. While opposer is correct that this treatise asserts that “[a]rbitrary arrangements of letters have generally been given a wide scope of protection,” the underlying premise is that it is “more difficult for buyers to remember a series of arbitrarily arranged letters than marks consisting of pictures or recognizable words.” McCarthy onTrademarks and Unfair Competition, Section 7:10 (4th Ed. 2008). Indeed, many of the examples provided by way of cited cases in the relevant section of this treatise are for initialisms. Here, the parties’ marks do not appear to be arbitrarily arranged letters in the form of an initialism, but rather each appears to be a coined term due to each having a recognizable and different word ending, e.g., IGN versus IVE. As opposed to initialisms, consumers who encounter thePage 8
parties’ respective marks in this case, XIVE and XIGN, will have less trouble remembering these marks.
Based on the record before us, opposer has not met its burden of establishing by a preponderance of the evidence that the marks are sufficiently similar that, even when used on identical goods such as dental implants and being advertised in the same trade channels and sold to the same customers, that there is a likelihood of confusion.
Decision: The opposition is dismissed and the subject application will be forwarded for issuance of a registration in due course.
[fn1] Application Serial No. 79040862 is a request for an extension of protection, based on an international registration, under Section 66(a). [fn2] Issued on July 12, 2005 under Section 44(e). [fn3] Opposer submitted the status and title copy of its pleaded registration on February 16, 2010, by way of a notice of reliance. [fn4] In its brief, opposer argues that it is the owner of two additional registrations and argues that applicant’s mark is likely to cause confusion with the marks/goods covered by said registrations. These registrations were neither pleaded nor properly made of record and thus they have not been considered in this decision.