Adlin
Heasley*
Pologeorgis
This Opinion is not a
Precedent of the TTAB
Mailed: August 22, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Masimo Corporation
v.
Rooti Labs Limited
_____
Opposition No. 91224804
_____
Gregory B. Phillips, Mark D. Kachner, and Deborah S. Shepherd
of Knobbe, Martens, Olson & Bear, LLP, for Masimo Corporation.
P. Jay Hines of Muncy, Geissler, Olds & Lowe P.C.
for Rooti Labs Limited.
_____
Before Adlin, Heasley and Pologeorgis,
Administrative Trademark Judges.
Opinion by Heasley, Administrative Trademark Judge:
Rooti Labs Limited (Applicant) seeks registration on the Principal Register1 of
the stylized word and design mark for Computer software for using in
database management of data mining for healthy care, home care, foodstuff, travel,
1 Application Serial No. 86395592 was filed on September 16, 2014, based upon Applicants
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b). The application describes the mark as the stylized term
ROOTI with a semi-circle dotting the I.
Opposition No. 91224804
life style or medical information and related goods2 in International Class 9, and
wearable digital electronic devices comprised primarily of a transmitting and
receiving apparatus found in wireless digital phones for medical use to measure
physiological parameters such as body weight, blood pressure, blood-oxygen level,
polysomnography; blood pressure monitors and related goods3 in International Class
10.
2 The goods identified in International Class 9 are: Computer software for using in database
management of data mining for healthy care, home care, foodstuff, travel, life style or medical
information; Computer software and hardware for using cloud computing in network
management for healthy care, home care, foodstuff, travel, life style or medical information;
Downloadable electronic game software for use on mobile and cellular phones, handheld
computers and desktop computers; Computer-gaming software; Computer operating
software; Computer operating programs; Computer operating programs, recorded; Satellite-
aided navigation systems; Global positioning system (GPS); Computer terminal; Computer
game programs; Computer game programs downloadable via the Internet; Digital music
downloadable from the Internet; Films downloaded via the Internet; Downloadable films and
television programs featuring healthy care, home care, foodstuff, travel, life style or medical
information provided via a video-on-demand; Downloadable films and movies featuring
healthy care, home care, foodstuff, travel, life style or medical information provided via a
video-on-demand service; Downloadable image file containing artwork, text, audio, video,
games and Internet Web links relating to sporting and cultural activities; Downloadable
electronic books in the field of healthy care, home care, foodstuff, travel, life style or medical
information; Downloadable e-books in the field of healthy care, home care, foodstuff, travel,
life style or medical information; Downloadable pictures in the field of healthy care, home
care, foodstuff, travel, life style or medical information; Wear-mounted digital electronic
devices comprised primarily of a transmitting and receiving apparatus found in digital
phones for use in displaying the information of time, date, GPS, position, direction, distance,
speed, step, calories, climate, temperature, wind speed, height, deviation of speed and
heartbeat, not for medical use; GPS tracking device to be worn on the wrist of an athlete
during endurance events; Wearable digital electronic devices comprised primarily of software
and display screens for analytic reports of algorithms results and cloud computing for
viewing, sending and receiving texts, emails, data and information from smart phones, tablet
computers and portable computer; Wear-mounted digital electronic devices comprised of a
transmitting and receiving apparatus for digital phones to display time, date, GPS, position,
distance, speed, step, climate, temperature, and wind speed.
3 The goods identified in International Class 10 are: Wearable digital electronic devices
comprised primarily of a transmitting and receiving apparatus found in wireless digital
phones for medical use to measure physiological parameters such as body weight, blood
pressure, blood-oxygen level, polysomnography; blood pressure monitors; Thermometers for
medical purposes; Clinical thermometers; Medical examination apparatus, namely, wireless
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Opposition No. 91224804
Masimo Corporation (Opposer) has opposed registration of Applicants mark on
the ground of likelihood of confusion with Opposers previously used and registered
mark ROOT (in standard characters) for medical devices, namely patient monitors
and patient sensors for monitoring and measuring blood properties, respiration,
exhaled gases or brain function in International Class 10.4 In view of Opposers
prior statutory and common law trademark rights, it pleads in its Notice of
Opposition, Applicant is not entitled to registration of the Application pursuant to
Section 2(d) of the Lanham Act, 15, U.S.C. § 1052(d).5 In its Answer, Applicant
admits that Opposer owns its pleaded Registration, but denies all salient allegations
of likelihood of confusion.6 Its purported affirmative defenses merely amplify its
monitors intended for use by healthcare professionals for unattended surveillance of
physiological data with healthcare settings; Skin examination apparatus, namely,
ambulatory devices that measure skin surface moisture, skin color, sebum, skin surface pH
and temperature; Heartbeat measuring apparatus; Electrocardiographic (ECG) recorders;
Pulse and heartbeat measuring devices; Medical devices, namely, wireless data collection
monitors that continuously gather physiological data from the subjects being monitored and
then transmit encrypted data via a bi-directional relay to the central server; Medical
instruments, namely, ambulatory patient monitors that provide remote vital signs
monitoring for subjects in healthcare, occupation and home settings; Medical apparatus,
namely, physiological monitoring telemetry device intended for monitoring subjects in the
home, work place and alternate care settings; Blood pressure measuring apparatus; Wear-
mounted digital electronic devices comprised of a transmitting and receiving apparatus for
digital phones to display caloric utilization, heartbeat and respiration in athletes.
4 Registration No. 4491598, issued on the Principal Register on March 4, 2014.
5 Notice of Opposition ¶ 6, 1 TTABVUE 8. Opposer also predicated its opposition on Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Notice of Opposition ¶ 7, 1 TTABVUE 8. This
is not a cognizable ground for opposition. See Persons Co., Ltd v. Christman, 900 F.2d 1565,
14 USPQ2d 1477, 1481 (Fed. Cir. 1990); Fiat Group Automobiles S.p.A. v. ISM, Inc., 94
USPQ2d 1111, 1116n. 8 (TTAB 2010). Furthermore, it was not pursued in Opposers briefing,
and is therefore waived. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d
1477, 1479 (TTAB 2017).
6 Answer, 4 TTABVUE.
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Opposition No. 91224804
denials.7
For the reasons that follow, we sustain the opposition.
I. Standing and Priority
Because Opposers registration is properly of record, Opposer has
established its standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S.
Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999); 15 U.S.C. § 1063; see Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). And priority is
not at issue as to the mark and goods identified therein. King Candy Co., Inc.
v. Eunice Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA
1974). Applicant states that it does not contest the priority of the Opposer by
virtue of its pleaded registration.8
II. The Evidentiary Record
The record includes the pleadings, Applicants application file under Trademark
Rule 2.122(b), and the following:
A. Opposers evidence
7 Answer, 4 TTABVUE 3-4.
8 Applicants brief p. 7, 15 TTABVUE 9.
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Opposition No. 91224804
The testimonial deposition of Kristen Budreau, Opposers Director of
Marketing Communications, with exhibits;9
Opposers Notice of Reliance on its registered mark, Applicants answers to
Opposers first and second sets of interrogatories and requests for admission,
with exhibits, as well as printouts from Applicants website,
www.rootilabs.com;10
B. Applicants evidence
Applicants Notice of Reliance on printouts from Opposers website
www.masimo.com, from Applicants website www.rootilabs.com, from
Applicants Facebook page www.facebook.com/rootilabs, from
www.kickstarter.com, from www.techcrunch.com and from www.Amazon.com
III. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (DuPont) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __,
135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In applying the DuPont factors, we bear in mind the fundamental principles
underlying the Lanham Act in general and Section 2(d) in particular, which are to
9 13 TTABVUE.
10 9 TTABVUE.
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Opposition No. 91224804
secure to the owner of the mark the goodwill of his business and to protect the ability
of consumers to distinguish among competing producers. Park N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985) quoted in Matal v. Tam, __
U.S. __, 122 USPQ2d 1757, 1762 (2017); see also DuPont, 177 USPQ at 566.
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated any other factors as neutral. See M2 Software, Inc. v. M2
Commcns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors may play
more or less weighty roles in any particular determination).
Two key considerations are the similarities between the marks and the
similarities between the goods. See In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d
__, 2017 WL 3393456, *3 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth
Van Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013).
A. Similarity of the marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicants and Opposers marks as compared in their entireties, taking into account
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Opposition No. 91224804
their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ
at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Applicant contends that there are significant differences in the appearance, sound
and meaning of the respective marks. In appearance, it contends, the stylized
lettering of its mark creates an entirely unique and memorable appearance11:
In terms of sound, while conceding that there is no correct pronunciation of a
mark, Applicant argues that consumers might pronounce its mark ROO-TIE or
ROO-TEA, and either pronunciation differentiates its mark from the hard t ending
and single syllable of Opposers mark.12 In terms of meaning, it urges that the
additional I in its mark transforms the meaning of the word?e.g., JED v. JEDI,
TAX v. TAXI.13 Applicant concludes that the differences in sight, sound and meaning
weigh strongly against a likelihood of confusion.
However, two marks may be found to be confusingly similar if there are sufficient
similarities in terms of sound or visual appearance or connotation. In re Mr. Recipe,
LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (emphasis in original; quoting Kabushiki
11 Applicants brief p. 9, 15 TTABVUE 11.
12 Applicants brief p. 10, 15 TTABVUE 12.
13 Applicants brief p. 10, 15 TTABVUE 12.
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Opposition No. 91224804
Kaisha Hattori Seiko v. Satellite Intl, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), affd
mem., 979 F.2d 216 (Fed. Cir. 1992)). Here we agree with Opposer that there is
similarity in virtually all respects.
In appearance, Applicants stylized lettering does not differentiate it because
Opposers standard character mark could be displayed in any size, color, or font,
including a size, color, and font identical to those in Applicants mark. In re Morinaga
Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1742-43 (TTAB 2016) (citing In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc.
v. Capital City Bank Group, 98 USPQ2d at 1258?59). The small semi-circle design
dotting the I in Applicants mark makes little or no difference. See In re Davia, 110
USPQ2d 1810, 1814 (TTAB 2014) (As for the raised dots and periods in the mark,
they are unpronounceable and contribute very little to the overall commercial
impression of the mark.). The literal portion?the part used by purchasers to request
the goods?is normally accorded greater weight in determining whether marks are
confusingly similar. In re Viterra, 101 USPQ2d at 1908, 1911.
Applicants mark incorporates Opposers entire ROOT mark, which increases the
likelihood of confusion. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419 (CCPA 1977) (CALIFORNIA CONCEPT with surfer logo for
mens hair and cosmetic products confusingly similar to CONCEPT for cold
permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis, Tenn.,
Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(BENGAL LANCER for club soda, quinine water and ginger ale likely to cause
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Opposition No. 91224804
confusion with BENGAL for gin). As the first four letters in Applicants five-letter
mark, ROOT is its most prominent, dominant component. See Palm Bay Imps., 73
USPQ2d at 1692 (Veuve is the most prominent part of the mark VEUVE
CLICQUOT because veuve is the first word in the mark and the first word to appear
on the label); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) ([I]t is often the first part of a mark which is most likely to be impressed in the
mind of a purchaser and remembered). Applicant does not suggest that ROOT is
pronounced differently in either mark.
The only difference in sound is the letter I at the end of Applicants mark. While
there is no one correct pronunciation of a mark, see In re Viterra Inc., 101 USPQ2d at
1912, Applicants letter I, whether pronounced as a long E or a long I, is a minor
subordinate suffix, which fails to differentiate the marks meaningfully. In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) ([T]he presence of
an additional term in the mark does not necessarily eliminate the likelihood of
confusion if some terms are identical.). In fact, [t]he general rule is that a
subsequent user may not appropriate the entire mark of another and avoid a
likelihood of confusion by adding descriptive or subordinate matter thereto. Thus, if
the dominant portion of both marks is the same, the confusion may be likely
notwithstanding peripheral differences. In re Jump Designs, 80 USPQ2d 1370, 1375
(TTAB 2006) (quoting TMEP § 1207.01 (b)(iii)).
It is true, as Applicant suggests, that the addition of an I can sometimes
transform the meaning of a word, but that transformation generally takes place when
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Opposition No. 91224804
the addition forms a new, familiar word, as in JEDI and TAXI. Lever Bros. Co. v.
Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR! for
household cleaner not confusingly similar to ALL for household cleansing products).
But here there is no such transformation. Purchasers normally retain a general
rather than a specific impression of trademarks, Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016), so they would most likely focus on the
marks common root element, ROOT, disregarding the one-letter suffix.14
In terms of connotation, root is something resembling or suggesting the root of
a plant in position or function, the fundamental or essential part, or the source or
origin of a thing,15 and both parties use ROOT in this sense. Opposers Director of
Marketing Communications, Kristen Budreau, testified that it uses ROOT for a
medical monitor to which various medical sensors attach: an in-room hub.16 Its
annual report referred to The root of our inspiration the healing connection
14We do not accept Opposers suggestion that the I at the end of Applicants mark would be
associated with Internet. As Applicant points out, while the use of the letter I at the
beginning of a word has become common shorthand for Internet, the letter is not used for
this purpose when placed at the end of the word. There is no basis in the record for the
Opposer to contend otherwise. Nor do we credit Opposers suggestion that the I represents
the word index. As Applicant observes, the examples on which Opposer relies were
acronyms, such as PVI for Pleth Variability Index or ORI for Oxygen Reserve Index. As root
does not represent an acronym, Applicant notes, there is no basis for consumers to ascribe
the index meaning in this case. We agree. The letter I fails to distinguish the parties
marks, not because it is descriptive, but because it is subordinate to the dominant component
ROOT.
15Dictionary.com, Random House Dictionary (2017). The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests.
LP, 110 USPQ2d at 1229n.4, affd 118 USPQ2d 1632 (Fed. Cir. 2016); In re Hodgdon Powder
Co., 119 USPQ2d 1254, 1256n.5 (TTAB 2016).
16 Budreau dep. 19:7-24, 13 TTABVUE 22.
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Opposition No. 91224804
between patients and their caring caregivers .17 Applicant, in its discovery
responses, admits that goods bearing its mark are used for health monitoring,18 and
states that Applicant conceived the name and mark to represent its focus on human
health. Applicant chose the ROOT component as a foundation for this purpose and
the I to represent human, thus conveying the notion of caring for the health of
ourselves, families and friends. Applicant also owns pending application Serial No.
86419252 for the mark which design implies the roots of a tree in support of the
central concept and the goal of developing products that improve health and life. 19
Hence, the dominant term ROOT in Applicants mark is intended to convey the same
or similar connotation as Opposers ROOT mark.
In sight, sound, and meaning, the dominant portion of Applicants mark is the
same as Opposers mark. While the similarity or dissimilarity of the marks is
determined based on the marks in their entireties there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016)
(citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Despite Applicants addition of a peripheral suffix, and despite its stylization and
17 Budreau dep. 26:9-11, 13 TTABVUE 29.
18Applicants Responses to Opposers Request for Admission Nos. 1-3, Opposers Notice of
Reliance, 9 TTABVUE 37-38.
19 Applicants Answer to Interrogatory No. 3, Opposers Notice of Reliance, 9 TTABVUE 16.
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Opposition No. 91224804
design, the marks, taken in their entireties, are highly similar in overall commercial
impression.
For these reasons, the first DuPont factor weighs in favor of finding a likelihood
of confusion.
B. Similarity of the Goods
Under the second DuPont factor, we consider the similarity or dissimilarity of
Applicants and Opposers goods. DuPont, 177 USPQ at 567. We base our evaluation
on the goods as they are identified in the application and registration. Stone Lion,
110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston Comp. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).20
Opposers identification of goods reads medical devices, namely patient monitors
and patient sensors for monitoring and measuring blood properties, respiration,
exhaled gases or brain function. Opposer contends that the following International
20 Opposer also claims common law rights in the ROOT mark. Notice of Opposition ¶ 5, 1
TTABVUE 7, Opposers brief p. 25, 14 TTABVUE 32. But its pleadings, briefing and record
evidence do not clarify how these claimed common law rights differ from its rights under its
cited registration?either as to goods covered or duration of use. Opposer alludes generally to
a variety of health measurement devices it has offered under other marks, such as RADICAL-
7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7, Opposers brief pp. 8-11, 14 TTABVUE
15-18. And it claims a zone of natural expansion for its ROOT mark into the product lines
it offers under these other marks. Opposers brief p. 29, 14 TTABVUE 36. As our ensuing
analysis demonstrates, this evidence may be relevant to show how various sensors can be
connected to the ROOT monitor and used in a complementary manner, but it does not
demonstrate common law rights in the ROOT mark that differ in any meaningful way from
the rights asserted under Opposers registration. And since the goods identified in Opposers
registration are similar or related to Applicants identified goods, as we ultimately find, we
do not need to reach or rely upon Opposers asserted zone of natural expansion argument.
See generally Orange Bang, Inc. v Ole Mexican Foods, Inc., 116 USPQ2d 1102 (TTAB 2015)
(no need to apply natural zone of expansion analysis).
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Opposition No. 91224804
Class 10 goods in the subject application are identical to the goods identified in its
cited registration:
Pulse and heartbeat measuring devices;
Heartbeat measuring apparatus;
Electrocardiographic (ECG) recorders; and
Blood pressure measuring apparatus.21
In response to this list, Applicant does not dispute this point as the identification
is currently drafted.22 More generally, Applicant admits that certain of the goods
identified in the involved application are used for health monitoring,23 such as
monitoring for heart arrhythmia and blood pressure.24
Applicant argues, however, that these four identified goods refer to its wearable
consumer product, unlike the pleaded registration, which is restricted to patient
monitors and patient sensors and therefore restricted to medical professional and
not consumer use.25 But the application identifies inter alia devices for medical use
including medical examination apparatus, namely wireless monitors intended for
use by healthcare professionals . And Applicant does not limit its Class 10 goods to
consumer use. The Board does not read limitations into an unrestricted application.
See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) cited
21 Opposers brief p. 26, 14 TTABVUE 33.
22 Applicants brief p. 11, 15 TTABVUE 13.
23Applicants Responses to Opposers Request for Admission Nos. 1-3, Opposers Notice of
Reliance, 9 TTABVUE 37-38.
24 Applicants Answer to Interrogatory No. 14, 9 TTABVUE 20.
25 Id. (emphasis in original).
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Opposition No. 91224804
in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *3; In
re Mr. Recipe, 118 USPQ2d at 1091.
Since Applicant has conceded that its measuring devices are identical to those in
the cited registration, the similarity of marks needed to support a determination that
confusion is likely declines as to those goods. See Bridgestone Ams. Tire Operations
LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).
Furthermore, a likelihood of confusion may be found with respect to a particular class
based on any item within the identification of goods or services for that class. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190 (TTAB 2014).
Although Applicants Class 9 goods are not identical to Opposers goods, they are
still sufficiently related to engender a likelihood of confusion. It is not necessary that
these goods be identical or even competitive to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are related in some manner, or that
the circumstances surrounding their marketing are such, that they would be
encountered by the same persons in situations that would give rise, because of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods. In re Thor Tech Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009).
Here, Opposers ROOT monitor provides a hub for monitoring and transmitting
medical data from a patient to doctors, nurses and other medical personnel .26 It
26 Budreau dep. 19:8-20:7, 13 TTABVUE 22-23.
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Opposition No. 91224804
monitors multiple data sources, measuring blood pressure, blood oxygen level,
respiration, pulse rate, exhaled gases and brain functions, and other parameters.27 It
then displays this data:
28
Opposers website (introduced in Applicants Notice of Reliance) describes the ROOT
monitor:
27 Id.
28(showing RADICAL 7 handheld monitor docked at ROOT monitor), Opposers brief p. 12,
13, 14 TTABVUE 19, 20; Budreau dep. 27:10-12, Ex. 5, 13 TTABVUE 30, 140.
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Opposition No. 91224804
29
Opposers ROOT monitor connects with many third-party medical devices, from
which it collects, monitors, displays and transmits data, creating a comprehensive
electronic medical record.30
Applicants identified goods in Class 9 are, in pertinent part:
Computer software for using in database management of data mining for
healthy care, home care, foodstuff, travel, life style or medical information;
Computer software and hardware for using cloud computing in network
management for healthy care, home care, foodstuff, travel, life style or
medical information;
Wearable digital electronic devices comprised primarily of software and
display screens for analytic reports of algorithms results and cloud
computing for viewing, sending and receiving texts, emails, data and
29 www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 7.
Opposers brief pp. 13, 20, 14 TTABVUE 20, 27; Budreau dep. 28:8-20, 13 TTABVUE 31;
30
www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 8.
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Opposition No. 91224804
information from smart phones, tablet computers and portable
computer
.
Applicant maintains that these goods are health monitoring devices for general use
by consumers, unlike Opposers goods, which are expensive sensors used by health
care professionals to monitor patients.31 But once again, the identification in the
application is not so limited. In re Mr. Recipe, 118 USPQ2d at 1091. We must consider
the application and registration to include all goods of the type identified. See, e.g.,
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d
1167, 1173 (Fed. Cir. 2013).
Moreover, as Applicants discovery responses reveal, its goods complement
Opposers ROOT monitors:
Interrogatory No. 17
Describe how the goods or services in use, or intended to be in
use, with Applicant’s Mark interface with professionals in the
healthcare or medical industries.
Response to Interrogatory No. 17
Applicants devices can be recommended by doctors or other health
professionals. All of the vital data of the patients or other users are
uploaded to a cloud-based data center via smart phone or Wi Fi.
Doctors and their patients can login to Applicants platform to access
reports and historical data trends.32
Interrogatory No. 37
In response to Opposers interrogatory No. 12, Applicant states that its initial
focus is on health wearables. Describe in detail what are health wearables.
Response to Interrogatory No. 37
31 Applicants brief pp. 12-14, 15 TTABVUE 14-16.
32 Opposers Notice of Reliance, 9 TTABVUE 20-21.
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Opposition No. 91224804
Health wearables are smart devices worn on the body that measure core health
data such as blood pressure, vision quality, and body temperature.33
Request for Admission No. 1
Admit that Applicants Mark is used in connection with an interactive
healthcare platform.
Response to Request No. 1
Admitted.34
Request for Admission No. 2:
Admit that goods bearing Applicant’s Mark are used for health monitoring.
Response to Request No. 2
Admitted.35
Request for A dmission No. 3
Admit that goods bearing Applicants Mark are used for continuous
hea1th monitoring.
Response to Request No. 3.
Admitted.36
Request for Admission No. 8
Admit that goods bearing Applicants Mark allow persons to monitor health
information.
Response to Request No. 8
Admitted.37
Request for Admission No. 9
33 Opposers Notice of Reliance, 9 TTABVUE 33.
34 Opposers Notice of Reliance, 9 TTABVUE 37.
35 Opposers Notice of Reliance, 9 TTABVUE 38.
36 Opposers Notice of Reliance, 9 TTABVUE 38.
37 Opposers Notice of Reliance, 9 TTABVUE 39.
– 18 –
Opposition No. 91224804
Admit that goods bearing Applicants Mark allow Health Professionals to
monitor health information.
Response to Request No. 9
Admitted.38
Request for Admission No. 11
Admit that goods bearing Applicants Mark provide a platform for Health
Professionals to monitor patients biometric data.
Response to Request No. 11
Admitted.39
Request for Admission No. 23
Admit that goods bearing Applicants Mark transmit hea[l]th data
electronically.
Response to Request No. 23
Admitted.40
Request for Admission No. 32
Admit that goods bearing Applicants Mark are intended for use by Health
Professionals for surveillance of physiological data.
Response to Request No. 32
Admitted.41
Request for Admission No. 33
Admit that Healthcare Professionals may use Applicants goods to monitor
patient biometric data.
Response to Request No. 33
38 Opposers Notice of Reliance, 9 TTABVUE 39.
39 Opposers Notice of Reliance, 9 TTABVUE 39.
40 Opposers Notice of Reliance, 9 TTABVUE 41.
41 Opposers Notice of Reliance, 9 TTABVUE 43.
– 19 –
Opposition No. 91224804
Admitted.42
Applicants discovery responses do not differentiate between its Class 9 and Class
10 goods, and its identifications of goods in both classes, quoted above, are broadly
worded enough to encompass health care monitoring devices. Indeed, Applicants own
promotional materials confirm that health care professionals as well as patients use
Applicants branded goods:
43
As the foregoing evidence demonstrates, Applicants goods are similar and highly
related to Opposers ROOT-branded goods. Health care professionals recommend
Applicants wearable devices to patients, and the devices monitor and transmit the
patients health data electronically to a platform where the data may be reviewed by
the patients and/or the health care professionals. Applicants wearable devices thus
42 Opposers Notice of Reliance, 9 TTABVUE 43.
43 Opposers Notice of Reliance, Requests for Admission Exhibit 1, 9 TTABVUE 54
(highlighting added); see also Applicants Responses to Requests for Admission 36-39,
confirming quotes from the exhibit, 9 TTABVUE 44-45.
– 20 –
Opposition No. 91224804
resemble third-party medical devices that connect to Opposers ROOT monitors. If
goods are complementary in nature, or used together, this relatedness can support a
finding of likelihood of confusion. In re Cook Medical Technologies, LLC, 105
USPQ2d 1377, 1380 (TTAB 2012) (citing In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)). In short, the parties ROOT and
branded goods would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the sources
of the goods. See Thor Tech Inc., 90 USPQ2d at 1635.
For these reasons, the second DuPont factor also weighs in favor of finding a
likelihood of confusion.
C. Similarity of Channels of Trade
The third DuPont factor concerns the similarity or dissimilarity of the parties
established, likely-to-continue trade channels. DuPont, 177 USPQ at 567.
Applicant stresses that Opposers products are marketed to medical professionals.
For example, Opposers promotional materials regarding its ROOT monitor, as used
in connection with its SEDLINE brand sensor monitoring electroencephalogram
(EEG) brain function signals, cautions that Federal (USA) law restricts this device
to sale by or on the order of a physician.44 In addition, Applicant contends,
Registrants goods are very expensive and marketed to sophisticated medic[al]
44 Budreau dep. ex. 10, 13 TTABVUE 261-261.
– 21 –
Opposition No. 91224804
professionals. In stark contrast, Applicants goods are relatively inexpensive and
marketed to general consumers.45
As Opposer points out, however, Applicant concedes that many of the goods
identified in this application are essentially identical to the goods in Opposers
pleaded registration.46 It is well established that absent restrictions in the
application and registration, [identical] goods and services are presumed to travel
in the same channels of trade to the same class of purchasers. In re Viterra, 101
USPQ2d at 1908.Here, Applicant has conceded that four of its identified goods, used
the monitor heart rate and blood pressure, are essentially identical to Opposers.47
Because the goods are in-part identical, the identical goods are presumed to travel
in the same channels of trade to the same classes of purchasers. Bond v. Taylor, 119
USPQ2d at 1053.
The parties remaining identified goods contain no limitations, see SquirtCo, 216
USPQ at 940, so we must presume that they would be sold in all usual channels of
trade to all normal potential purchasers. See In re Viterra, 671 F.3d at 1362, quoted
in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *8. As
discussed above, it is apparent from the record evidence that the parties goods are
complementary. As Applicant stated in its answer to Interrogatory no. 17:
Applicants devices can be recommended by doctors or other health
professionals. All of the vital data of the patients or other users are
uploaded to a cloud-based data center via smart phone or Wi Fi.
45 Applicants brief p. 6, 15 TTABVUE 8.
46 Opposers reply brief p. 2, 16 TTABVUE 6.
47 Applicants brief p. 11, 15 TTABVUE 13.
– 22 –
Opposition No. 91224804
Doctors and their patients can login to Applicants platform to access
reports and historical data trends.48
The goods are so complementary that health care providers could recommend
Applicants goods, and patients or other adult users could purchase them in the
expectation that they would be compatible with Opposers monitors. See In re Davia,
110 USPQ2d at 1816 (complementary goods likely to travel in same channels of trade
to same class of customers). This confluence of trade channels and purchasers weighs
in favor of finding a likelihood of confusion under the third DuPont factor.
D. Purchaser Sophistication and Degree of Care
The fourth DuPont factor concerns the conditions under which and buyers to
whom sales are made, i.e., impulse versus careful, sophisticated purchasing.
DuPont, 177 USPQ at 567.
Applicant, true to its prior position, maintains that Opposers patient monitors
and patient sensors would be sold to medical professionals, not to general consumers.
Importantly, Opposers registered goods are very expensive and typically sell for
upward of $2,000. In stark contrast, the evidence of record shows that Applicants
goods, namely its wearable devices, are sold to general consumers in the $30-$100
range.49
Applicants argument calls to mind Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399 (TTAB 2010). In that case, opposers heart monitors cost $14,000
48 Opposers Notice of Reliance, 9 TTABVUE 20-21.
49 Applicants brief pp. 14-15, 15 TTABVUE 15-16.
– 23 –
Opposition No. 91224804
apiece, and the applicants computer monitoring system for possible adverse drug
events cost $47,000 per license, and both were purchased by experienced hospital
personnel after significant study and negotiations. So this DuPont factor weighed
against a likelihood of confusion. Id. at 1413.
In this case, however, there is no record evidence of the cost of Opposers ROOT
monitoring goods. The $30 to $100 range to which Applicant alludes in its brief refers
to the price of its CliMate Environment Tracker,50 not its monitors for pulse rate,
blood pressure, and the like. So the asserted price differential is unproven. Moreover,
as Opposer points out, its ROOT monitor is compatible with third-party
measurement devices, so relevant consumers are accustomed to seeing Opposers
marks used with other authorized medical device companys products.51 Applicants
wearable devices are not only compatible with but complementary to Opposers
ROOT monitors. In these circumstances, even sophisticated hospital purchasers
exercising care in their purchases may be confused by highly similar marks. See, e.g.,
In re Toshiba Medical Sys. Corp., 91 USPQ2d 1266, 1273-74 (TTAB 2009) (even
sophisticated hospital purchasers could be confused by marks TITAN and VANTAGE
TITAN on ultrasound and MRI diagnostic apparatus, respectively); In re Cook
Medical Tech., 105 USPQ2d at 1383 (where applicants medical guiding sheaths were
compatible with opposers catheters, [w]e find that the similarities between the
marks and the goods sold thereunder outweigh any sophisticated purchasing
50 12 TTABVUE 10-12; see Applicants Answer to Interrogatory no. 34, 9 TTABVUE 31.
51Opposers brief p. 32, 14 TTABVUE 39; see Budreau dep. 28:8-20, 13 TTABVUE 31;
www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 8.
– 24 –
Opposition No. 91224804
decision, especially in the absence of evidence relating to the degree of care in making
the decision.).
Indeed, given the similarity between Opposers and Applicants marks, careful
purchasers who do notice the difference in the marks will not necessarily conclude
that there are different sources for the goods, but will see the marks as variations of
each other, pointing to a single source. In re Hitachi High-Technologies Corp., 109
USPQ2d 1769, 1774 (TTAB 2014). And if health care professionals are susceptible to
confusion, their patients, who could purchase Applicants ostensibly low-cost devices
directly,52 would be even more susceptible to confusion. See Stone Lion, 110 USPQ2d
at 1163 (consider least sophisticated potential purchasers.).
For these reasons, the fourth DuPont factor is neutral.
E. Actual Confusion
The seventh and eighth DuPont factors address whether there has been an
opportunity for confusion to occur, and if so, whether there is evidence of actual
confusion. DuPont, 177 USPQ at 567.
Applicant argues that Opposer has presented no evidence of actual confusion.53
Proof of actual confusion is not necessary to show a likelihood of confusion. E.g., In re
I.AM.Symbolic, LLC, 2016-1507, __F.3d __, 2017 WL 3393456 at *3 (Fed. Cir. 2017);
Herbko Intl Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. (2002); Giant Food, Inc. v. Nations Foodservice, Inc., 710 F.2d 1565, 218 USPQ
52See Opposers First Notice of Reliance, Applicants Answer to Interrogatory no. 10, 9
TTABVUE 18.
53 Applicants brief p. 15, 15 TTABVUE 17.
– 25 –
Opposition No. 91224804
390, 396 (Fed. Cir. 1983). Moreover, the absence of evidence of actual confusion,
under the seventh du Pont factor, by itself is entitled to little weight in our likelihood
of confusion analysis unless there also is evidence, under the eighth du Pont factor,
that there has been a significant opportunity for actual confusion to have occurred.
In re Assn of the U.S. Army, 85 USPQ2d 1264, 1273 (TTAB 2007) (citing Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)).
In this case, as Opposer observes, there has been no significant opportunity for
actual confusion to occur. The subject application was filed based on Applicants
claimed intent to use the mark in commerce, and that remains its filing basis. 15
U.S.C. § 1051(b).54 The record does not reflect the extent or duration of use of
Applicants mark sufficiently to enable us to gauge the opportunity for actual
confusion to have occurred in the marketplace. See Primrose Ret. Cmtys., LLC v.
Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB 2016).
Accordingly, the seventh and eighth DuPont factors are neutral.
F. Strength of Opposers Mark
As our primary reviewing court, the Court of Appeals for the Federal Circuit, has
stated, marks exist along a spectrum from very strong to very weak. Joseph Phelps
Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734
(Fed. Cir. 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694). The strength of a mark
rests on the extent to which a significant portion of the relevant consuming public
54 Opposers reply brief pp. 5-6, 16 TTABVUE 9-10.
– 26 –
Opposition No. 91224804
recognizes the mark as a source indicator. Id. In determining the strength of a mark,
we consider both its inherent strength, based on the nature of the mark itself and its
commercial strength, based on the marketplace recognition value of the mark. See In
re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)
(A marks strength is measured both by its conceptual strength (distinctiveness) and
its marketplace strength.); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011).
Opposer claims that its ROOT mark is conceptually strong because it is arbitrary
for monitors.55 See Nautilus Grp., Inc. v. ICON Health & Fitness Inc., 372 F.3d 1330,
71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (An arbitrary mark is a known word used in
an unexpected or uncommon way.). Applicant counters that the term is suggestive:
Like the root of a plant or a tree serving to attach the plant to the ground, the ROOT
monitor serves as a hub and docking station for the Opposers other products as well
as complementary third party products. That is the evidence of record shows that
the products are rooted or attached to Opposers ROOT monitors. It is therefore not
arbitrary but highly suggestive in relation to the goods.56
As we have found, Opposers ROOT mark connotes the roots of a tree?a
connotation that suggests, metaphorically, the function of its ROOT monitors, to
which various health monitoring devices may be attached. This connotation is
suggestive, in the sense of requiring imagination, thought or perception to reach a
55 Opposers brief p. 21, 14 TTABVUE 28.
56 Applicants brief p. 8, 15 TTABVUE 10.
– 27 –
Opposition No. 91224804
conclusion as to the nature of the goods. DuoProSS Meditech Corp. v. Inviro Medical
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016). While Opposers mark is
suggestive, it is still inherently distinctive. See generally Two Pesos Inc. v. Taco
Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and
fanciful marks are deemed inherently distinctive). And if the mark is inherently
distinctive, it is presumed that consumers will view it as a source identifier. In re
Chippendales USA, Inc., 96 USPQ2d at 1685. Furthermore, even if the
suggestiveness of Opposers mark marginally erodes its conceptual strength, it does
not reduce the relative likelihood of confusion between the parties marks, because
both parties use the term ROOT in the same or similar suggestive sense.57
The commercial strength of Opposers mark may be measured indirectly by the
volume of sales and advertising expenditures in connection with the products sold
under the mark, and other factors such as length of use of the mark, widespread
critical assessments; notice by independent sources of the products identified by the
mark; and the general reputation of the products. In re Mr. Recipe, 118 USPQ2d at
1086 (citing Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305-06, 1309 (Fed. Cir. 2002)). As the party asserting that its mark is famous,
Opposer has the burden of proving it. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers
Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Opposer
57 See text above accompanying footnotes 19-23.
– 28 –
Opposition No. 91224804
claims that its mark achieved fame in the medical device industry when the ROOT
monitor was awarded the 2015 GOLD Medical Design Excellence Award, the highest
level of recognition presented in the Medical Design Excellence Award competition,
and is the highest achievement awarded in the medical device industry.58 Opposer
further contends that it is a recognized leader in the U.S. pulse oximeter market,
which includes Opposers ROOT monitors. Opposers annual revenue for 2015 was
approximately $650 million. Accordingly, Opposers monitors are well-known in the
medical industry.59
Applicant responds that Opposer has failed to carry its burden of proving
commercial strength; it has failed to present sales or advertising figures for its ROOT
monitor products; it only presented irrelevant evidence as to the company as a whole;
and the only consumer recognition it points to is a fairly obscure industry product
design award; Opposer presented no evidence of recognition among general
consumers.60
We consider a marks commercial strength with the class of consumers and
potential consumers of a product. Palm Bay Imps., 73 USPQ2d at 1694-95. In this
case, that would be health care professionals and patients and other members of the
public who use the monitoring devices. Opposers medical design excellence award
would tend to catch the attention of health care professionals, and Opposer has used
58Opposers brief p. 21, 14 TTABVUE 28, citing Budreau Dep. 20:2122:3, Ex. 2, 13
TTABVUE 2325, 102130.
59 Opposers brief p. 21, 14 TTABVUE 28, citing Budreau Dep.13:913, 13 TTABVUE 16.
60 Applicants brief p. 8, 15 TTABVUE 10.
– 29 –
Opposition No. 91224804
the award to promote its ROOT monitor among them.61 Opposers remaining
evidence, though, fails to focus on its ROOT mark. Its Director of Marketing
Communications testified that Masimo is a widely known, high profile company in
the patient monitoring field; that its customers know it as a company that produces
a premium product; that it has a very good reputation; that it is growing yearly in
sales and revenue, with $630 million in revenue in 2015 and a 40 percent share of the
U.S. pulse oximetry market; and that it is expanding, not just in hospital space but
in consumer space.62 That evidence may show Opposers general popularity, but
Opposer has offered a variety of health measurement devices under other marks,
such as RADICAL-7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7.63 Its
evidence does not demonstrate the commercial strength of its ROOT mark in
particular. Thus, Opposer has not proven that its ROOT mark is commercially
strong.
The fifth DuPont factor is neutral.
IV. Conclusion
We have considered of all of the evidence of record and all of the parties
arguments, including evidence and arguments not specifically discussed in this
opinion, as it pertains to the relevant DuPont likelihood of confusion factors. The
61 Budreau Dep. 20:2122:3, Ex. 2, 13 TTABVUE 2325, 102130.
62 Budreau Dep.13:913, 13 TTABVUE 16.
63 Opposers brief pp. 8-11, 14 TTABVUE 15-18.
– 30 –
Opposition No. 91224804
marks are similar, the goods are in-part identical and in-part complementary and
related and move in the same channels of trade. These factors outweigh any
purchaser sophistication and care. The evidence as a whole leads us to conclude that
there is a likelihood of confusion under Section 2(d).
Decision: The opposition is sustained and registration is refused to Application
Serial No. 86395592 for the mark .
– 31 –
This Opinion is not a
Precedent of the TTAB
Mailed: August 22, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Masimo Corporation
v.
Rooti Labs Limited
_____
Opposition No. 91224804
_____
Gregory B. Phillips, Mark D. Kachner, and Deborah S. Shepherd
of Knobbe, Martens, Olson & Bear, LLP, for Masimo Corporation.
P. Jay Hines of Muncy, Geissler, Olds & Lowe P.C.
for Rooti Labs Limited.
_____
Before Adlin, Heasley and Pologeorgis,
Administrative Trademark Judges.
Opinion by Heasley, Administrative Trademark Judge:
Rooti Labs Limited (Applicant) seeks registration on the Principal Register1 of
the stylized word and design mark for Computer software for using in
database management of data mining for healthy care, home care, foodstuff, travel,
1 Application Serial No. 86395592 was filed on September 16, 2014, based upon Applicants
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b). The application describes the mark as the stylized term
ROOTI with a semi-circle dotting the I.
Opposition No. 91224804
life style or medical information and related goods2 in International Class 9, and
wearable digital electronic devices comprised primarily of a transmitting and
receiving apparatus found in wireless digital phones for medical use to measure
physiological parameters such as body weight, blood pressure, blood-oxygen level,
polysomnography; blood pressure monitors and related goods3 in International Class
10.
2 The goods identified in International Class 9 are: Computer software for using in database
management of data mining for healthy care, home care, foodstuff, travel, life style or medical
information; Computer software and hardware for using cloud computing in network
management for healthy care, home care, foodstuff, travel, life style or medical information;
Downloadable electronic game software for use on mobile and cellular phones, handheld
computers and desktop computers; Computer-gaming software; Computer operating
software; Computer operating programs; Computer operating programs, recorded; Satellite-
aided navigation systems; Global positioning system (GPS); Computer terminal; Computer
game programs; Computer game programs downloadable via the Internet; Digital music
downloadable from the Internet; Films downloaded via the Internet; Downloadable films and
television programs featuring healthy care, home care, foodstuff, travel, life style or medical
information provided via a video-on-demand; Downloadable films and movies featuring
healthy care, home care, foodstuff, travel, life style or medical information provided via a
video-on-demand service; Downloadable image file containing artwork, text, audio, video,
games and Internet Web links relating to sporting and cultural activities; Downloadable
electronic books in the field of healthy care, home care, foodstuff, travel, life style or medical
information; Downloadable e-books in the field of healthy care, home care, foodstuff, travel,
life style or medical information; Downloadable pictures in the field of healthy care, home
care, foodstuff, travel, life style or medical information; Wear-mounted digital electronic
devices comprised primarily of a transmitting and receiving apparatus found in digital
phones for use in displaying the information of time, date, GPS, position, direction, distance,
speed, step, calories, climate, temperature, wind speed, height, deviation of speed and
heartbeat, not for medical use; GPS tracking device to be worn on the wrist of an athlete
during endurance events; Wearable digital electronic devices comprised primarily of software
and display screens for analytic reports of algorithms results and cloud computing for
viewing, sending and receiving texts, emails, data and information from smart phones, tablet
computers and portable computer; Wear-mounted digital electronic devices comprised of a
transmitting and receiving apparatus for digital phones to display time, date, GPS, position,
distance, speed, step, climate, temperature, and wind speed.
3 The goods identified in International Class 10 are: Wearable digital electronic devices
comprised primarily of a transmitting and receiving apparatus found in wireless digital
phones for medical use to measure physiological parameters such as body weight, blood
pressure, blood-oxygen level, polysomnography; blood pressure monitors; Thermometers for
medical purposes; Clinical thermometers; Medical examination apparatus, namely, wireless
-2-
Opposition No. 91224804
Masimo Corporation (Opposer) has opposed registration of Applicants mark on
the ground of likelihood of confusion with Opposers previously used and registered
mark ROOT (in standard characters) for medical devices, namely patient monitors
and patient sensors for monitoring and measuring blood properties, respiration,
exhaled gases or brain function in International Class 10.4 In view of Opposers
prior statutory and common law trademark rights, it pleads in its Notice of
Opposition, Applicant is not entitled to registration of the Application pursuant to
Section 2(d) of the Lanham Act, 15, U.S.C. § 1052(d).5 In its Answer, Applicant
admits that Opposer owns its pleaded Registration, but denies all salient allegations
of likelihood of confusion.6 Its purported affirmative defenses merely amplify its
monitors intended for use by healthcare professionals for unattended surveillance of
physiological data with healthcare settings; Skin examination apparatus, namely,
ambulatory devices that measure skin surface moisture, skin color, sebum, skin surface pH
and temperature; Heartbeat measuring apparatus; Electrocardiographic (ECG) recorders;
Pulse and heartbeat measuring devices; Medical devices, namely, wireless data collection
monitors that continuously gather physiological data from the subjects being monitored and
then transmit encrypted data via a bi-directional relay to the central server; Medical
instruments, namely, ambulatory patient monitors that provide remote vital signs
monitoring for subjects in healthcare, occupation and home settings; Medical apparatus,
namely, physiological monitoring telemetry device intended for monitoring subjects in the
home, work place and alternate care settings; Blood pressure measuring apparatus; Wear-
mounted digital electronic devices comprised of a transmitting and receiving apparatus for
digital phones to display caloric utilization, heartbeat and respiration in athletes.
4 Registration No. 4491598, issued on the Principal Register on March 4, 2014.
5 Notice of Opposition ¶ 6, 1 TTABVUE 8. Opposer also predicated its opposition on Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Notice of Opposition ¶ 7, 1 TTABVUE 8. This
is not a cognizable ground for opposition. See Persons Co., Ltd v. Christman, 900 F.2d 1565,
14 USPQ2d 1477, 1481 (Fed. Cir. 1990); Fiat Group Automobiles S.p.A. v. ISM, Inc., 94
USPQ2d 1111, 1116n. 8 (TTAB 2010). Furthermore, it was not pursued in Opposers briefing,
and is therefore waived. See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d
1477, 1479 (TTAB 2017).
6 Answer, 4 TTABVUE.
-3-
Opposition No. 91224804
denials.7
For the reasons that follow, we sustain the opposition.
I. Standing and Priority
Because Opposers registration is properly of record, Opposer has
established its standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S.
Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26
(Fed. Cir. 1999); 15 U.S.C. § 1063; see Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). And priority is
not at issue as to the mark and goods identified therein. King Candy Co., Inc.
v. Eunice Kings Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA
1974). Applicant states that it does not contest the priority of the Opposer by
virtue of its pleaded registration.8
II. The Evidentiary Record
The record includes the pleadings, Applicants application file under Trademark
Rule 2.122(b), and the following:
A. Opposers evidence
7 Answer, 4 TTABVUE 3-4.
8 Applicants brief p. 7, 15 TTABVUE 9.
-4-
Opposition No. 91224804
The testimonial deposition of Kristen Budreau, Opposers Director of
Marketing Communications, with exhibits;9
Opposers Notice of Reliance on its registered mark, Applicants answers to
Opposers first and second sets of interrogatories and requests for admission,
with exhibits, as well as printouts from Applicants website,
www.rootilabs.com;10
B. Applicants evidence
Applicants Notice of Reliance on printouts from Opposers website
www.masimo.com, from Applicants website www.rootilabs.com, from
Applicants Facebook page www.facebook.com/rootilabs, from
www.kickstarter.com, from www.techcrunch.com and from www.Amazon.com
III. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (DuPont) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __,
135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In applying the DuPont factors, we bear in mind the fundamental principles
underlying the Lanham Act in general and Section 2(d) in particular, which are to
9 13 TTABVUE.
10 9 TTABVUE.
-5-
Opposition No. 91224804
secure to the owner of the mark the goodwill of his business and to protect the ability
of consumers to distinguish among competing producers. Park N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985) quoted in Matal v. Tam, __
U.S. __, 122 USPQ2d 1757, 1762 (2017); see also DuPont, 177 USPQ at 566.
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated any other factors as neutral. See M2 Software, Inc. v. M2
Commcns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors may play
more or less weighty roles in any particular determination).
Two key considerations are the similarities between the marks and the
similarities between the goods. See In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d
__, 2017 WL 3393456, *3 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth
Van Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013).
A. Similarity of the marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicants and Opposers marks as compared in their entireties, taking into account
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Opposition No. 91224804
their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ
at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Applicant contends that there are significant differences in the appearance, sound
and meaning of the respective marks. In appearance, it contends, the stylized
lettering of its mark creates an entirely unique and memorable appearance11:
In terms of sound, while conceding that there is no correct pronunciation of a
mark, Applicant argues that consumers might pronounce its mark ROO-TIE or
ROO-TEA, and either pronunciation differentiates its mark from the hard t ending
and single syllable of Opposers mark.12 In terms of meaning, it urges that the
additional I in its mark transforms the meaning of the word?e.g., JED v. JEDI,
TAX v. TAXI.13 Applicant concludes that the differences in sight, sound and meaning
weigh strongly against a likelihood of confusion.
However, two marks may be found to be confusingly similar if there are sufficient
similarities in terms of sound or visual appearance or connotation. In re Mr. Recipe,
LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (emphasis in original; quoting Kabushiki
11 Applicants brief p. 9, 15 TTABVUE 11.
12 Applicants brief p. 10, 15 TTABVUE 12.
13 Applicants brief p. 10, 15 TTABVUE 12.
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Opposition No. 91224804
Kaisha Hattori Seiko v. Satellite Intl, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), affd
mem., 979 F.2d 216 (Fed. Cir. 1992)). Here we agree with Opposer that there is
similarity in virtually all respects.
In appearance, Applicants stylized lettering does not differentiate it because
Opposers standard character mark could be displayed in any size, color, or font,
including a size, color, and font identical to those in Applicants mark. In re Morinaga
Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1742-43 (TTAB 2016) (citing In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc.
v. Capital City Bank Group, 98 USPQ2d at 1258?59). The small semi-circle design
dotting the I in Applicants mark makes little or no difference. See In re Davia, 110
USPQ2d 1810, 1814 (TTAB 2014) (As for the raised dots and periods in the mark,
they are unpronounceable and contribute very little to the overall commercial
impression of the mark.). The literal portion?the part used by purchasers to request
the goods?is normally accorded greater weight in determining whether marks are
confusingly similar. In re Viterra, 101 USPQ2d at 1908, 1911.
Applicants mark incorporates Opposers entire ROOT mark, which increases the
likelihood of confusion. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419 (CCPA 1977) (CALIFORNIA CONCEPT with surfer logo for
mens hair and cosmetic products confusingly similar to CONCEPT for cold
permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis, Tenn.,
Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975)
(BENGAL LANCER for club soda, quinine water and ginger ale likely to cause
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Opposition No. 91224804
confusion with BENGAL for gin). As the first four letters in Applicants five-letter
mark, ROOT is its most prominent, dominant component. See Palm Bay Imps., 73
USPQ2d at 1692 (Veuve is the most prominent part of the mark VEUVE
CLICQUOT because veuve is the first word in the mark and the first word to appear
on the label); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) ([I]t is often the first part of a mark which is most likely to be impressed in the
mind of a purchaser and remembered). Applicant does not suggest that ROOT is
pronounced differently in either mark.
The only difference in sound is the letter I at the end of Applicants mark. While
there is no one correct pronunciation of a mark, see In re Viterra Inc., 101 USPQ2d at
1912, Applicants letter I, whether pronounced as a long E or a long I, is a minor
subordinate suffix, which fails to differentiate the marks meaningfully. In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) ([T]he presence of
an additional term in the mark does not necessarily eliminate the likelihood of
confusion if some terms are identical.). In fact, [t]he general rule is that a
subsequent user may not appropriate the entire mark of another and avoid a
likelihood of confusion by adding descriptive or subordinate matter thereto. Thus, if
the dominant portion of both marks is the same, the confusion may be likely
notwithstanding peripheral differences. In re Jump Designs, 80 USPQ2d 1370, 1375
(TTAB 2006) (quoting TMEP § 1207.01 (b)(iii)).
It is true, as Applicant suggests, that the addition of an I can sometimes
transform the meaning of a word, but that transformation generally takes place when
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Opposition No. 91224804
the addition forms a new, familiar word, as in JEDI and TAXI. Lever Bros. Co. v.
Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR! for
household cleaner not confusingly similar to ALL for household cleansing products).
But here there is no such transformation. Purchasers normally retain a general
rather than a specific impression of trademarks, Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016), so they would most likely focus on the
marks common root element, ROOT, disregarding the one-letter suffix.14
In terms of connotation, root is something resembling or suggesting the root of
a plant in position or function, the fundamental or essential part, or the source or
origin of a thing,15 and both parties use ROOT in this sense. Opposers Director of
Marketing Communications, Kristen Budreau, testified that it uses ROOT for a
medical monitor to which various medical sensors attach: an in-room hub.16 Its
annual report referred to The root of our inspiration the healing connection
14We do not accept Opposers suggestion that the I at the end of Applicants mark would be
associated with Internet. As Applicant points out, while the use of the letter I at the
beginning of a word has become common shorthand for Internet, the letter is not used for
this purpose when placed at the end of the word. There is no basis in the record for the
Opposer to contend otherwise. Nor do we credit Opposers suggestion that the I represents
the word index. As Applicant observes, the examples on which Opposer relies were
acronyms, such as PVI for Pleth Variability Index or ORI for Oxygen Reserve Index. As root
does not represent an acronym, Applicant notes, there is no basis for consumers to ascribe
the index meaning in this case. We agree. The letter I fails to distinguish the parties
marks, not because it is descriptive, but because it is subordinate to the dominant component
ROOT.
15Dictionary.com, Random House Dictionary (2017). The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests.
LP, 110 USPQ2d at 1229n.4, affd 118 USPQ2d 1632 (Fed. Cir. 2016); In re Hodgdon Powder
Co., 119 USPQ2d 1254, 1256n.5 (TTAB 2016).
16 Budreau dep. 19:7-24, 13 TTABVUE 22.
– 10 –
Opposition No. 91224804
between patients and their caring caregivers .17 Applicant, in its discovery
responses, admits that goods bearing its mark are used for health monitoring,18 and
states that Applicant conceived the name and mark to represent its focus on human
health. Applicant chose the ROOT component as a foundation for this purpose and
the I to represent human, thus conveying the notion of caring for the health of
ourselves, families and friends. Applicant also owns pending application Serial No.
86419252 for the mark which design implies the roots of a tree in support of the
central concept and the goal of developing products that improve health and life. 19
Hence, the dominant term ROOT in Applicants mark is intended to convey the same
or similar connotation as Opposers ROOT mark.
In sight, sound, and meaning, the dominant portion of Applicants mark is the
same as Opposers mark. While the similarity or dissimilarity of the marks is
determined based on the marks in their entireties there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016)
(citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Despite Applicants addition of a peripheral suffix, and despite its stylization and
17 Budreau dep. 26:9-11, 13 TTABVUE 29.
18Applicants Responses to Opposers Request for Admission Nos. 1-3, Opposers Notice of
Reliance, 9 TTABVUE 37-38.
19 Applicants Answer to Interrogatory No. 3, Opposers Notice of Reliance, 9 TTABVUE 16.
– 11 –
Opposition No. 91224804
design, the marks, taken in their entireties, are highly similar in overall commercial
impression.
For these reasons, the first DuPont factor weighs in favor of finding a likelihood
of confusion.
B. Similarity of the Goods
Under the second DuPont factor, we consider the similarity or dissimilarity of
Applicants and Opposers goods. DuPont, 177 USPQ at 567. We base our evaluation
on the goods as they are identified in the application and registration. Stone Lion,
110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston Comp. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).20
Opposers identification of goods reads medical devices, namely patient monitors
and patient sensors for monitoring and measuring blood properties, respiration,
exhaled gases or brain function. Opposer contends that the following International
20 Opposer also claims common law rights in the ROOT mark. Notice of Opposition ¶ 5, 1
TTABVUE 7, Opposers brief p. 25, 14 TTABVUE 32. But its pleadings, briefing and record
evidence do not clarify how these claimed common law rights differ from its rights under its
cited registration?either as to goods covered or duration of use. Opposer alludes generally to
a variety of health measurement devices it has offered under other marks, such as RADICAL-
7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7, Opposers brief pp. 8-11, 14 TTABVUE
15-18. And it claims a zone of natural expansion for its ROOT mark into the product lines
it offers under these other marks. Opposers brief p. 29, 14 TTABVUE 36. As our ensuing
analysis demonstrates, this evidence may be relevant to show how various sensors can be
connected to the ROOT monitor and used in a complementary manner, but it does not
demonstrate common law rights in the ROOT mark that differ in any meaningful way from
the rights asserted under Opposers registration. And since the goods identified in Opposers
registration are similar or related to Applicants identified goods, as we ultimately find, we
do not need to reach or rely upon Opposers asserted zone of natural expansion argument.
See generally Orange Bang, Inc. v Ole Mexican Foods, Inc., 116 USPQ2d 1102 (TTAB 2015)
(no need to apply natural zone of expansion analysis).
– 12 –
Opposition No. 91224804
Class 10 goods in the subject application are identical to the goods identified in its
cited registration:
Pulse and heartbeat measuring devices;
Heartbeat measuring apparatus;
Electrocardiographic (ECG) recorders; and
Blood pressure measuring apparatus.21
In response to this list, Applicant does not dispute this point as the identification
is currently drafted.22 More generally, Applicant admits that certain of the goods
identified in the involved application are used for health monitoring,23 such as
monitoring for heart arrhythmia and blood pressure.24
Applicant argues, however, that these four identified goods refer to its wearable
consumer product, unlike the pleaded registration, which is restricted to patient
monitors and patient sensors and therefore restricted to medical professional and
not consumer use.25 But the application identifies inter alia devices for medical use
including medical examination apparatus, namely wireless monitors intended for
use by healthcare professionals . And Applicant does not limit its Class 10 goods to
consumer use. The Board does not read limitations into an unrestricted application.
See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) cited
21 Opposers brief p. 26, 14 TTABVUE 33.
22 Applicants brief p. 11, 15 TTABVUE 13.
23Applicants Responses to Opposers Request for Admission Nos. 1-3, Opposers Notice of
Reliance, 9 TTABVUE 37-38.
24 Applicants Answer to Interrogatory No. 14, 9 TTABVUE 20.
25 Id. (emphasis in original).
– 13 –
Opposition No. 91224804
in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *3; In
re Mr. Recipe, 118 USPQ2d at 1091.
Since Applicant has conceded that its measuring devices are identical to those in
the cited registration, the similarity of marks needed to support a determination that
confusion is likely declines as to those goods. See Bridgestone Ams. Tire Operations
LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).
Furthermore, a likelihood of confusion may be found with respect to a particular class
based on any item within the identification of goods or services for that class. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); Bd. of Regents v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190 (TTAB 2014).
Although Applicants Class 9 goods are not identical to Opposers goods, they are
still sufficiently related to engender a likelihood of confusion. It is not necessary that
these goods be identical or even competitive to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are related in some manner, or that
the circumstances surrounding their marketing are such, that they would be
encountered by the same persons in situations that would give rise, because of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods. In re Thor Tech Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009).
Here, Opposers ROOT monitor provides a hub for monitoring and transmitting
medical data from a patient to doctors, nurses and other medical personnel .26 It
26 Budreau dep. 19:8-20:7, 13 TTABVUE 22-23.
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Opposition No. 91224804
monitors multiple data sources, measuring blood pressure, blood oxygen level,
respiration, pulse rate, exhaled gases and brain functions, and other parameters.27 It
then displays this data:
28
Opposers website (introduced in Applicants Notice of Reliance) describes the ROOT
monitor:
27 Id.
28(showing RADICAL 7 handheld monitor docked at ROOT monitor), Opposers brief p. 12,
13, 14 TTABVUE 19, 20; Budreau dep. 27:10-12, Ex. 5, 13 TTABVUE 30, 140.
– 15 –
Opposition No. 91224804
29
Opposers ROOT monitor connects with many third-party medical devices, from
which it collects, monitors, displays and transmits data, creating a comprehensive
electronic medical record.30
Applicants identified goods in Class 9 are, in pertinent part:
Computer software for using in database management of data mining for
healthy care, home care, foodstuff, travel, life style or medical information;
Computer software and hardware for using cloud computing in network
management for healthy care, home care, foodstuff, travel, life style or
medical information;
Wearable digital electronic devices comprised primarily of software and
display screens for analytic reports of algorithms results and cloud
computing for viewing, sending and receiving texts, emails, data and
29 www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 7.
Opposers brief pp. 13, 20, 14 TTABVUE 20, 27; Budreau dep. 28:8-20, 13 TTABVUE 31;
30
www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 8.
– 16 –
Opposition No. 91224804
information from smart phones, tablet computers and portable
computer
.
Applicant maintains that these goods are health monitoring devices for general use
by consumers, unlike Opposers goods, which are expensive sensors used by health
care professionals to monitor patients.31 But once again, the identification in the
application is not so limited. In re Mr. Recipe, 118 USPQ2d at 1091. We must consider
the application and registration to include all goods of the type identified. See, e.g.,
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d
1167, 1173 (Fed. Cir. 2013).
Moreover, as Applicants discovery responses reveal, its goods complement
Opposers ROOT monitors:
Interrogatory No. 17
Describe how the goods or services in use, or intended to be in
use, with Applicant’s Mark interface with professionals in the
healthcare or medical industries.
Response to Interrogatory No. 17
Applicants devices can be recommended by doctors or other health
professionals. All of the vital data of the patients or other users are
uploaded to a cloud-based data center via smart phone or Wi Fi.
Doctors and their patients can login to Applicants platform to access
reports and historical data trends.32
Interrogatory No. 37
In response to Opposers interrogatory No. 12, Applicant states that its initial
focus is on health wearables. Describe in detail what are health wearables.
Response to Interrogatory No. 37
31 Applicants brief pp. 12-14, 15 TTABVUE 14-16.
32 Opposers Notice of Reliance, 9 TTABVUE 20-21.
– 17 –
Opposition No. 91224804
Health wearables are smart devices worn on the body that measure core health
data such as blood pressure, vision quality, and body temperature.33
Request for Admission No. 1
Admit that Applicants Mark is used in connection with an interactive
healthcare platform.
Response to Request No. 1
Admitted.34
Request for Admission No. 2:
Admit that goods bearing Applicant’s Mark are used for health monitoring.
Response to Request No. 2
Admitted.35
Request for A dmission No. 3
Admit that goods bearing Applicants Mark are used for continuous
hea1th monitoring.
Response to Request No. 3.
Admitted.36
Request for Admission No. 8
Admit that goods bearing Applicants Mark allow persons to monitor health
information.
Response to Request No. 8
Admitted.37
Request for Admission No. 9
33 Opposers Notice of Reliance, 9 TTABVUE 33.
34 Opposers Notice of Reliance, 9 TTABVUE 37.
35 Opposers Notice of Reliance, 9 TTABVUE 38.
36 Opposers Notice of Reliance, 9 TTABVUE 38.
37 Opposers Notice of Reliance, 9 TTABVUE 39.
– 18 –
Opposition No. 91224804
Admit that goods bearing Applicants Mark allow Health Professionals to
monitor health information.
Response to Request No. 9
Admitted.38
Request for Admission No. 11
Admit that goods bearing Applicants Mark provide a platform for Health
Professionals to monitor patients biometric data.
Response to Request No. 11
Admitted.39
Request for Admission No. 23
Admit that goods bearing Applicants Mark transmit hea[l]th data
electronically.
Response to Request No. 23
Admitted.40
Request for Admission No. 32
Admit that goods bearing Applicants Mark are intended for use by Health
Professionals for surveillance of physiological data.
Response to Request No. 32
Admitted.41
Request for Admission No. 33
Admit that Healthcare Professionals may use Applicants goods to monitor
patient biometric data.
Response to Request No. 33
38 Opposers Notice of Reliance, 9 TTABVUE 39.
39 Opposers Notice of Reliance, 9 TTABVUE 39.
40 Opposers Notice of Reliance, 9 TTABVUE 41.
41 Opposers Notice of Reliance, 9 TTABVUE 43.
– 19 –
Opposition No. 91224804
Admitted.42
Applicants discovery responses do not differentiate between its Class 9 and Class
10 goods, and its identifications of goods in both classes, quoted above, are broadly
worded enough to encompass health care monitoring devices. Indeed, Applicants own
promotional materials confirm that health care professionals as well as patients use
Applicants branded goods:
43
As the foregoing evidence demonstrates, Applicants goods are similar and highly
related to Opposers ROOT-branded goods. Health care professionals recommend
Applicants wearable devices to patients, and the devices monitor and transmit the
patients health data electronically to a platform where the data may be reviewed by
the patients and/or the health care professionals. Applicants wearable devices thus
42 Opposers Notice of Reliance, 9 TTABVUE 43.
43 Opposers Notice of Reliance, Requests for Admission Exhibit 1, 9 TTABVUE 54
(highlighting added); see also Applicants Responses to Requests for Admission 36-39,
confirming quotes from the exhibit, 9 TTABVUE 44-45.
– 20 –
Opposition No. 91224804
resemble third-party medical devices that connect to Opposers ROOT monitors. If
goods are complementary in nature, or used together, this relatedness can support a
finding of likelihood of confusion. In re Cook Medical Technologies, LLC, 105
USPQ2d 1377, 1380 (TTAB 2012) (citing In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)). In short, the parties ROOT and
branded goods would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the sources
of the goods. See Thor Tech Inc., 90 USPQ2d at 1635.
For these reasons, the second DuPont factor also weighs in favor of finding a
likelihood of confusion.
C. Similarity of Channels of Trade
The third DuPont factor concerns the similarity or dissimilarity of the parties
established, likely-to-continue trade channels. DuPont, 177 USPQ at 567.
Applicant stresses that Opposers products are marketed to medical professionals.
For example, Opposers promotional materials regarding its ROOT monitor, as used
in connection with its SEDLINE brand sensor monitoring electroencephalogram
(EEG) brain function signals, cautions that Federal (USA) law restricts this device
to sale by or on the order of a physician.44 In addition, Applicant contends,
Registrants goods are very expensive and marketed to sophisticated medic[al]
44 Budreau dep. ex. 10, 13 TTABVUE 261-261.
– 21 –
Opposition No. 91224804
professionals. In stark contrast, Applicants goods are relatively inexpensive and
marketed to general consumers.45
As Opposer points out, however, Applicant concedes that many of the goods
identified in this application are essentially identical to the goods in Opposers
pleaded registration.46 It is well established that absent restrictions in the
application and registration, [identical] goods and services are presumed to travel
in the same channels of trade to the same class of purchasers. In re Viterra, 101
USPQ2d at 1908.Here, Applicant has conceded that four of its identified goods, used
the monitor heart rate and blood pressure, are essentially identical to Opposers.47
Because the goods are in-part identical, the identical goods are presumed to travel
in the same channels of trade to the same classes of purchasers. Bond v. Taylor, 119
USPQ2d at 1053.
The parties remaining identified goods contain no limitations, see SquirtCo, 216
USPQ at 940, so we must presume that they would be sold in all usual channels of
trade to all normal potential purchasers. See In re Viterra, 671 F.3d at 1362, quoted
in In re I.AM.Symbolic, LLC, No. 2016-1507, __F.3d __, 2017 WL 3393456 at *8. As
discussed above, it is apparent from the record evidence that the parties goods are
complementary. As Applicant stated in its answer to Interrogatory no. 17:
Applicants devices can be recommended by doctors or other health
professionals. All of the vital data of the patients or other users are
uploaded to a cloud-based data center via smart phone or Wi Fi.
45 Applicants brief p. 6, 15 TTABVUE 8.
46 Opposers reply brief p. 2, 16 TTABVUE 6.
47 Applicants brief p. 11, 15 TTABVUE 13.
– 22 –
Opposition No. 91224804
Doctors and their patients can login to Applicants platform to access
reports and historical data trends.48
The goods are so complementary that health care providers could recommend
Applicants goods, and patients or other adult users could purchase them in the
expectation that they would be compatible with Opposers monitors. See In re Davia,
110 USPQ2d at 1816 (complementary goods likely to travel in same channels of trade
to same class of customers). This confluence of trade channels and purchasers weighs
in favor of finding a likelihood of confusion under the third DuPont factor.
D. Purchaser Sophistication and Degree of Care
The fourth DuPont factor concerns the conditions under which and buyers to
whom sales are made, i.e., impulse versus careful, sophisticated purchasing.
DuPont, 177 USPQ at 567.
Applicant, true to its prior position, maintains that Opposers patient monitors
and patient sensors would be sold to medical professionals, not to general consumers.
Importantly, Opposers registered goods are very expensive and typically sell for
upward of $2,000. In stark contrast, the evidence of record shows that Applicants
goods, namely its wearable devices, are sold to general consumers in the $30-$100
range.49
Applicants argument calls to mind Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399 (TTAB 2010). In that case, opposers heart monitors cost $14,000
48 Opposers Notice of Reliance, 9 TTABVUE 20-21.
49 Applicants brief pp. 14-15, 15 TTABVUE 15-16.
– 23 –
Opposition No. 91224804
apiece, and the applicants computer monitoring system for possible adverse drug
events cost $47,000 per license, and both were purchased by experienced hospital
personnel after significant study and negotiations. So this DuPont factor weighed
against a likelihood of confusion. Id. at 1413.
In this case, however, there is no record evidence of the cost of Opposers ROOT
monitoring goods. The $30 to $100 range to which Applicant alludes in its brief refers
to the price of its CliMate Environment Tracker,50 not its monitors for pulse rate,
blood pressure, and the like. So the asserted price differential is unproven. Moreover,
as Opposer points out, its ROOT monitor is compatible with third-party
measurement devices, so relevant consumers are accustomed to seeing Opposers
marks used with other authorized medical device companys products.51 Applicants
wearable devices are not only compatible with but complementary to Opposers
ROOT monitors. In these circumstances, even sophisticated hospital purchasers
exercising care in their purchases may be confused by highly similar marks. See, e.g.,
In re Toshiba Medical Sys. Corp., 91 USPQ2d 1266, 1273-74 (TTAB 2009) (even
sophisticated hospital purchasers could be confused by marks TITAN and VANTAGE
TITAN on ultrasound and MRI diagnostic apparatus, respectively); In re Cook
Medical Tech., 105 USPQ2d at 1383 (where applicants medical guiding sheaths were
compatible with opposers catheters, [w]e find that the similarities between the
marks and the goods sold thereunder outweigh any sophisticated purchasing
50 12 TTABVUE 10-12; see Applicants Answer to Interrogatory no. 34, 9 TTABVUE 31.
51Opposers brief p. 32, 14 TTABVUE 39; see Budreau dep. 28:8-20, 13 TTABVUE 31;
www.masimo.com, Applicants First Notice of Reliance exhibit 1, 10 TTABVUE 8.
– 24 –
Opposition No. 91224804
decision, especially in the absence of evidence relating to the degree of care in making
the decision.).
Indeed, given the similarity between Opposers and Applicants marks, careful
purchasers who do notice the difference in the marks will not necessarily conclude
that there are different sources for the goods, but will see the marks as variations of
each other, pointing to a single source. In re Hitachi High-Technologies Corp., 109
USPQ2d 1769, 1774 (TTAB 2014). And if health care professionals are susceptible to
confusion, their patients, who could purchase Applicants ostensibly low-cost devices
directly,52 would be even more susceptible to confusion. See Stone Lion, 110 USPQ2d
at 1163 (consider least sophisticated potential purchasers.).
For these reasons, the fourth DuPont factor is neutral.
E. Actual Confusion
The seventh and eighth DuPont factors address whether there has been an
opportunity for confusion to occur, and if so, whether there is evidence of actual
confusion. DuPont, 177 USPQ at 567.
Applicant argues that Opposer has presented no evidence of actual confusion.53
Proof of actual confusion is not necessary to show a likelihood of confusion. E.g., In re
I.AM.Symbolic, LLC, 2016-1507, __F.3d __, 2017 WL 3393456 at *3 (Fed. Cir. 2017);
Herbko Intl Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. (2002); Giant Food, Inc. v. Nations Foodservice, Inc., 710 F.2d 1565, 218 USPQ
52See Opposers First Notice of Reliance, Applicants Answer to Interrogatory no. 10, 9
TTABVUE 18.
53 Applicants brief p. 15, 15 TTABVUE 17.
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390, 396 (Fed. Cir. 1983). Moreover, the absence of evidence of actual confusion,
under the seventh du Pont factor, by itself is entitled to little weight in our likelihood
of confusion analysis unless there also is evidence, under the eighth du Pont factor,
that there has been a significant opportunity for actual confusion to have occurred.
In re Assn of the U.S. Army, 85 USPQ2d 1264, 1273 (TTAB 2007) (citing Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992)).
In this case, as Opposer observes, there has been no significant opportunity for
actual confusion to occur. The subject application was filed based on Applicants
claimed intent to use the mark in commerce, and that remains its filing basis. 15
U.S.C. § 1051(b).54 The record does not reflect the extent or duration of use of
Applicants mark sufficiently to enable us to gauge the opportunity for actual
confusion to have occurred in the marketplace. See Primrose Ret. Cmtys., LLC v.
Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039-40 (TTAB 2016).
Accordingly, the seventh and eighth DuPont factors are neutral.
F. Strength of Opposers Mark
As our primary reviewing court, the Court of Appeals for the Federal Circuit, has
stated, marks exist along a spectrum from very strong to very weak. Joseph Phelps
Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734
(Fed. Cir. 2017) (citing Palm Bay Imps., 73 USPQ2d at 1694). The strength of a mark
rests on the extent to which a significant portion of the relevant consuming public
54 Opposers reply brief pp. 5-6, 16 TTABVUE 9-10.
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recognizes the mark as a source indicator. Id. In determining the strength of a mark,
we consider both its inherent strength, based on the nature of the mark itself and its
commercial strength, based on the marketplace recognition value of the mark. See In
re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)
(A marks strength is measured both by its conceptual strength (distinctiveness) and
its marketplace strength.); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011).
Opposer claims that its ROOT mark is conceptually strong because it is arbitrary
for monitors.55 See Nautilus Grp., Inc. v. ICON Health & Fitness Inc., 372 F.3d 1330,
71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (An arbitrary mark is a known word used in
an unexpected or uncommon way.). Applicant counters that the term is suggestive:
Like the root of a plant or a tree serving to attach the plant to the ground, the ROOT
monitor serves as a hub and docking station for the Opposers other products as well
as complementary third party products. That is the evidence of record shows that
the products are rooted or attached to Opposers ROOT monitors. It is therefore not
arbitrary but highly suggestive in relation to the goods.56
As we have found, Opposers ROOT mark connotes the roots of a tree?a
connotation that suggests, metaphorically, the function of its ROOT monitors, to
which various health monitoring devices may be attached. This connotation is
suggestive, in the sense of requiring imagination, thought or perception to reach a
55 Opposers brief p. 21, 14 TTABVUE 28.
56 Applicants brief p. 8, 15 TTABVUE 10.
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Opposition No. 91224804
conclusion as to the nature of the goods. DuoProSS Meditech Corp. v. Inviro Medical
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016). While Opposers mark is
suggestive, it is still inherently distinctive. See generally Two Pesos Inc. v. Taco
Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and
fanciful marks are deemed inherently distinctive). And if the mark is inherently
distinctive, it is presumed that consumers will view it as a source identifier. In re
Chippendales USA, Inc., 96 USPQ2d at 1685. Furthermore, even if the
suggestiveness of Opposers mark marginally erodes its conceptual strength, it does
not reduce the relative likelihood of confusion between the parties marks, because
both parties use the term ROOT in the same or similar suggestive sense.57
The commercial strength of Opposers mark may be measured indirectly by the
volume of sales and advertising expenditures in connection with the products sold
under the mark, and other factors such as length of use of the mark, widespread
critical assessments; notice by independent sources of the products identified by the
mark; and the general reputation of the products. In re Mr. Recipe, 118 USPQ2d at
1086 (citing Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305-06, 1309 (Fed. Cir. 2002)). As the party asserting that its mark is famous,
Opposer has the burden of proving it. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers
Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Opposer
57 See text above accompanying footnotes 19-23.
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claims that its mark achieved fame in the medical device industry when the ROOT
monitor was awarded the 2015 GOLD Medical Design Excellence Award, the highest
level of recognition presented in the Medical Design Excellence Award competition,
and is the highest achievement awarded in the medical device industry.58 Opposer
further contends that it is a recognized leader in the U.S. pulse oximeter market,
which includes Opposers ROOT monitors. Opposers annual revenue for 2015 was
approximately $650 million. Accordingly, Opposers monitors are well-known in the
medical industry.59
Applicant responds that Opposer has failed to carry its burden of proving
commercial strength; it has failed to present sales or advertising figures for its ROOT
monitor products; it only presented irrelevant evidence as to the company as a whole;
and the only consumer recognition it points to is a fairly obscure industry product
design award; Opposer presented no evidence of recognition among general
consumers.60
We consider a marks commercial strength with the class of consumers and
potential consumers of a product. Palm Bay Imps., 73 USPQ2d at 1694-95. In this
case, that would be health care professionals and patients and other members of the
public who use the monitoring devices. Opposers medical design excellence award
would tend to catch the attention of health care professionals, and Opposer has used
58Opposers brief p. 21, 14 TTABVUE 28, citing Budreau Dep. 20:2122:3, Ex. 2, 13
TTABVUE 2325, 102130.
59 Opposers brief p. 21, 14 TTABVUE 28, citing Budreau Dep.13:913, 13 TTABVUE 16.
60 Applicants brief p. 8, 15 TTABVUE 10.
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the award to promote its ROOT monitor among them.61 Opposers remaining
evidence, though, fails to focus on its ROOT mark. Its Director of Marketing
Communications testified that Masimo is a widely known, high profile company in
the patient monitoring field; that its customers know it as a company that produces
a premium product; that it has a very good reputation; that it is growing yearly in
sales and revenue, with $630 million in revenue in 2015 and a 40 percent share of the
U.S. pulse oximetry market; and that it is expanding, not just in hospital space but
in consumer space.62 That evidence may show Opposers general popularity, but
Opposer has offered a variety of health measurement devices under other marks,
such as RADICAL-7, RADIUS-7, RAD-8, MIGHTYSAT, and PRONTO-7.63 Its
evidence does not demonstrate the commercial strength of its ROOT mark in
particular. Thus, Opposer has not proven that its ROOT mark is commercially
strong.
The fifth DuPont factor is neutral.
IV. Conclusion
We have considered of all of the evidence of record and all of the parties
arguments, including evidence and arguments not specifically discussed in this
opinion, as it pertains to the relevant DuPont likelihood of confusion factors. The
61 Budreau Dep. 20:2122:3, Ex. 2, 13 TTABVUE 2325, 102130.
62 Budreau Dep.13:913, 13 TTABVUE 16.
63 Opposers brief pp. 8-11, 14 TTABVUE 15-18.
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Opposition No. 91224804
marks are similar, the goods are in-part identical and in-part complementary and
related and move in the same channels of trade. These factors outweigh any
purchaser sophistication and care. The evidence as a whole leads us to conclude that
there is a likelihood of confusion under Section 2(d).
Decision: The opposition is sustained and registration is refused to Application
Serial No. 86395592 for the mark .
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