Buyer Sophistication Couldn’t Overcome Related Goods to Reverse Likelihood of Confusion

Overview

The Trademark Trial and Appeal Board affirmed a Section 2(d) refusal against GE Precision Healthcare LLC’s application to register the standard-character mark OMNI for medical imaging apparatus. The central conflict involved a prior registration for OMNITOM, used for computed tomography (CT) imaging machines.

Despite the Applicant’s efforts to differentiate the goods based on technical function and the extreme care exercised by medical buyers, the Board found that the similarities between the marks and the intrinsic relationship between the goods outweighed all other factors.

Background

The Applicant filed an application to register the mark OMNI in standard characters for medical apparatus and instruments for use in positron emission tomography/computed tomography (PET-CT) imaging in International Class 10. The Examining Attorney refused registration based on a likelihood of confusion with the registered registered OMNITOM, which covers computed tomography (CT) imaging machines.

Following the final refusal, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #2: Similarity of the Goods

The Board began by examining the nature of PET-CT machines versus standalone CT machines. Because the goods are technical and scientific, the Board consulted extrinsic evidence, including dictionary definitions and government websites, to understand the significance of the language in the identifications. Regarding the Applicant’s goods, the Board noted that positron-emission tomography (PET) involves injecting radioactive tracers to show regional metabolism, which differs from the structural imaging provided by MRI or CT scans.

The Examining Attorney asserted that the goods were legally identical, arguing that the wording "medical apparatus and instruments" in the cited registration’s broad identification necessarily encompassed medical imaging machines. The Board rejected this argument, noting that while PET-CT machines incorporate CT technology, the identifications did not perfectly overlap.

The Board acknowledged the Applicant’s arguments that combined PET-CT machines are primary imaging tools for cancer staging because they overlay the metabolic highlights of PET onto the structural details of CT scans. However, the Board found the goods to be "intrinsically related" because both are medical imaging devices used for highly similar diagnostic purposes, such as detecting cancer or cardiac disease.

Evidence supporting relatedness included third-party websites showing that PET-CT and CT machines are often sold by the same manufacturers under the same house marks. The Board dismissed the Applicant’s arguments regarding the physical size and weight of the machines as irrelevant to whether the goods are related for trademark purposes.

Finally, the Board disregarded the Applicant’s attempt to read limitations into the identifications, such as describing the Registrant’s goods as "portable head scanners." The Board reiterated that it must analyze the goods as they are identified in the registration and application, without importing real-world limitations not present in the text.

DuPont #3: Channels of Trade

The Board analyzed whether the goods moved through similar trade channels. Because neither the application nor the registration contained trade channel limitations, the Board presumed the goods moved through all normal channels of trade to all normal classes of purchasers. The Examining Attorney provided evidence from third-party websites showing both types of machines marketed to hospitals and clinics. The Applicant argued that the goods were sold through complex business negotiations rather than ordinary retail channels.

The Board found the evidence on this factor insufficient. It noted that the mere fact that both types of machines might be purchased by the same institution does not automatically establish an overlap in customers or decision-makers. Specifically, the record lacked evidence showing that the same hospital personnel who purchase PET-CT machines also select CT scanners.

Consequently, because the record lacked specific evidence regarding the personnel involved in the purchasing process or the exact nature of the trade channels beyond manufacturer websites, the Board deemed the third DuPont factor neutral.

DuPont #4: Sophistication of Consumers and Purchasing Conditions

This factor focused on the degree of care exercised by purchasers. The Applicant argued that the heightened care and sophistication of healthcare consumers undercut a finding of likelihood of confusion. The Board agreed, observing that sophisticated medical equipment like PET-CT and CT scanners are very expensive and involve lengthy transactions. The record included evidence that equipment like MRI and radiation therapy machines are often so large they are installed during the construction phase of a new hospital wing, demonstrating that purchasing requires much planning.

The Board found that these goods are not impulse purchases. Instead, they are relatively expensive items purchased with a high degree of care by specialized personnel. This factor weighed against a finding of a likelihood of confusion.

DuPont #6: Weakness of the Cited Mark

The Applicant raised the sixth DuPont factor to argue that the term OMNI is conceptually weak in the medical imaging field. The Board took judicial notice that OMNI means "all" or "universally," suggesting it is suggestive of a machine's ability to image the entire body. The Applicant submitted USPTO records for ten registrations incorporating the term OMNI for various medical goods.

The Board performed a granular review of these registrations and discounted the probative value of several. It noted that one registration had been cancelled, two covered unrelated goods like infant incubators and patient monitors, and three were Section 66(a) registrations not based on use in commerce, which the Board found had less probative value regarding the meaning of the term to U.S. consumers. However, the remaining registrations covering ultrasound and x-ray devices were considered relevant because those devices are related to CT machines.

Ultimately, the Board found that while the evidence demonstrated some conceptual weakness of OMNI in the medical imaging field, there was no evidence of commercial weakness. The Applicant provided no evidence of actual marketplace use of these third-party marks. Because the record lacked evidence showing that consumers had become accustomed to seeing OMNI used by multiple sources, the Board concluded that the cited mark OMNITOM was entitled to only a slightly narrower scope of protection.

DuPont #1: Similarity of the Marks

The Board compared OMNI and OMNITOM in their entireties as to appearance, sound, connotation, and commercial impression. The Board observed that OMNITOM incorporates the entirety of the Applicant’s mark, OMNI, at the beginning of the mark. Noting that consumers are generally pre-conditioned to focus on the first part of a trademark, the Board found that the shared first four letters created strong visual and aural similarities.

The Applicant argued that adding the suffix "TOM" altered the syllables and pronunciation while alluding to computed tomography. The Board was unconvinced, stating that because TOM is likely descriptive or allusive of tomography (a technology used in both parties' goods), it carries less source-identifying significance. The Board also noted that non-dictionary words like OMNITOM have no single "correct" pronunciation, and consumers could pronounce it in ways that sound similar to OMNI.

Finally, the Board dismissed the Applicant’s argument that its mark is always used alongside the GE house mark. The Board reiterated that it must evaluate the marks as they appear in the drawings, which in this case were standard-character marks without house marks attached. Ultimately, the Board found the marks similar in sight, sound, meaning, and commercial impression.

DuPont #8: Lack of Actual Confusion

In its reply brief, the Applicant argued that the absence of actual confusion over a period of concurrent use suggested that confusion was unlikely. The Board found this argument misplaced and of little evidentiary value in an ex parte proceeding. Because the owner of the cited registration was not a party to the case, the Board could not know whether they possessed evidence of confusion.

Furthermore, the Board noted it had insufficient evidence regarding marketplace conditions or the length of concurrent use to give this factor any weight. The eighth DuPont factor was therefore deemed neutral.

Board’s Decision

The Trademark Trial and Appeal Board affirmed the refusal to register OMNI.

The most interesting part of the DuPont factor breakdown was the Board finding the third factor neutral for lack of evidence. In many cases, third-party website evidence is used to establish an Examining Attorney's prima facie case. Often, particularly in TTAB refusal reversals, such evidence is not specific or detailed enough to show goods are related in the second DuPont factor, yet it suffices to demonstrate that the goods move within the same channels to the same class of customers.

Here, the opposite occurred. third-party websites were sufficient to show that the goods often emanated from the same source, but failed to demonstrate that they moved in the same channels of trade serving the same customers. The Board focused heavily on the "normal" trade channels rather than on the overlap between them.

This decision brings to mind the SPINFLOW case, where the Board acknowledged a potential overlap because both products could be sold to the same industrial institutions. Nevertheless, as here, the Board found the third DuPont factor neutral because a likelihood of confusion must exist in the mind of an actual purchaser, rather than merely within a purchasing institution. The record contained no evidence suggesting that the specific individuals responsible for procuring technical industrial equipment like heat exchangers would also be responsible for selecting and purchasing vacuum cleaners.