TTAB relies on extrinsic evidence to distinguish goods and trade channels

United States of America

In Edwards Lifesciences Corporation v VigiLanz Corporation (Opposition 91154210), April 14 2010), the Trademark Trial and Appeal Board (TTAB) has relied heavily on subtle differences in the parties’ respective goods and the distinct trade channels thereof in order to hold that confusion was unlikely between VIGILANCE for use with heart monitors and VIGILANZ for computer monitoring systems that alert healthcare providers to adverse drug events. The case was decided after a full trial on the merits, and the decision includes a lengthy analysis of all of the relevant factors, as well as a detailed dissent.

In assessing the likelihood of confusion factors from In re du Pont de Nemours & Co (476 F2d 1357), the TTAB first determined that the opponent’s VIGILANCE mark had achieved niche fame within the critical care settings in which its heart monitors are used (eg, operating rooms and emergency rooms). In so finding, the TTAB relied heavily on evidence of impressive sales figures indicating that the opponent had captured 75% of the heart monitor market.

The TTAB also found in the opponent's favour with regard to the similarity of the marks. Although the TTAB admitted testimony from the opponent's expert linguist, it did not find the testimony persuasive and instead applied its own subjective assessment that the marks were similar. The TTAB relied on the fact that both marks begin with the term 'vigi', meant to connote watchfulness. Additionally, the marks share the same first seven letters. The difference between the 'ance' and 'anz' lettering at the end of the marks was insufficient to distinguish the marks.

The critical factors in finding no likelihood of confusion were the nature of the products and the trade channels thereof. The TTAB found that the similarities between the products were “superficial” and that the opponent had not met its burden of showing a sufficient relationship between the respective goods so as to cause a likelihood of confusion. Instead, the TTAB was persuaded by extrinsic evidence from the applicant regarding the meaning of its description of goods. Such evidence showed that the applicant’s monitoring systems were directed to pharmacists, while the opponent’s heart rate monitors were directed to doctors and other healthcare providers in critical care settings. The applicant also dispelled any overlap in the hospital administrators who may purchase both products with evidence concerning the high cost of the respective products and the long, deliberate purchasing process.

The opponent attempted to rely on the oft-stated principle that the respective goods must be interpreted by reference to the identification of goods and their usual trade channels without extrinsic evidence to expand or limit beyond the plain meaning of the identification. Applying this principle to the respective identifications, the opponent’s position was that both products perform monitoring functions of patients and provide results to “healthcare providers”, the broadly worded category of users listed in the applicant’s identification. The TTAB agreed as to the relevant legal principle, but distinguished the applicant’s evidence as explaining the true nature of its goods, rather than expanding the identification. According to the TTAB, it is “entirely appropriate to consider extrinsic evidence to determine the specific meaning of the description of goods”, particularly where the goods are of a “technical nature”. Relying on the applicant’s evidence that the products serve distinct functions and are used by different personnel in the hospital (even if the same patient may be simultaneously monitored by the parties’ respective products), the TTAB found in the applicant’s favour on these factors. This finding ultimately tipped the balance in the applicant’s favour on the likelihood of confusion analysis.

In his dissent, Judge Ritchie agreed that the opponent’s mark was strong and that the respective marks were similar, but took issue with the majority’s holding as to the similarity of the goods. Judge Ritchie framed the issue within the context of the principle that the onus was on the applicant to avoid a similar mark. Viewed from this perspective, Judge Ritchie opined that the applicant had not met this obligation. Moreover, the dissenting opinion argued that the majority erred by giving credence to the applicant’s reliance on extrinsic evidence of market conditions where the applicant was seeking an unrestricted registration for its goods. The dissent further argued that the applicant’s evidence was used to support a “far-fetched” limitation on the wording “healthcare providers” in the identification to mean only pharmacists. The dissent would instead take judicial notice that “healthcare providers” include physicians and nurses, and that the respective products thus comprise similar - if not complementary - goods being offered to the same consumers.

Under the majority’s decision, opposition litigants can now find support for the use of extrinsic evidence to explain the meaning of the parties’ goods beyond the strict wording of the identification.

Karin Segall, Foley & Lardner LLP, New York

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