16 October 2013

Federal Circuit says no to “Prevail” trademark

The US Court of Appeals for the Federal Circuit has denied a US company’s bid to trademark “Prevail” for medical devices used to treat obesity.

Vibrynt applied for the trademark in 2009 to cover implants that are inserted into patients’ stomachs to encourage weight loss.

The US Patent and Trademark Office rejected the application, saying it was too similar to an existing registration for “Peek Prevail”, which covers surgical implants.

On appeal, the Trademark Trial and Appeal Board (TTAB) upheld the ruling in July this year because the marks and the goods covered by them are too similar.

The Federal Circuit affirmed that ruling in a one-word order on October 15, with judges Prost, Plager and Taranto hearing the case.

While the court offered no reasoning, the TTAB ruling had set out a number factors weighing against the “Peek” application.

Vibrynt had claimed that “Peek Prevail”, which cited “surgical implants comprising artificial material”, was limited to orthopaedic products.

But the TTAB said a likelihood of confusion depends on the goods cited in an application, no matter what they are “in nature”.

“Because registrant’s identification does not limit the type of surgical implants, the identification must be broadly construed to include all types of such goods, including abdominal surgical implants comprising artificial material,” the TTAB said.

Vibrynt provided extensive evidence to show otherwise, including statements from several surgeons specialising in bariatric surgery, which involves reducing the size of patients’ stomachs by inserting medical implants.

But the TTAB said: “To reiterate, registrant’s goods are not limited to the orthopaedic field.”

The appeals judges said the implants in both applications would move through the same or similar trade channels and would be sold to the same types of buyer, namely surgeons and other medical professionals.

In conclusion, the TTAB said: “Purchasers familiar with registrant’s ‘surgical implants comprising artificial material’ sold under the mark PEEK PREVAIL would be likely to mistakenly believe, upon encountering applicant’s similar mark PREVAIL ... that the goods originated from or are associated with or sponsored by the same entity.”

Bob Kenney, partner at Birch, Stewart, Kolasch & Birch LLP, said “if the description of the registered goods is broad enough to cover the goods you’re applying for, you will have a problem overcoming the cited registration”.

Referring to Vibyrnt’s attempt to differentiate the products, Kenney added: “The only time the office will entertain outside evidence ... is if the description of the goods within the registration is ambiguous.”

Vibrynt does not sell its implants in the US market, but does have a presence in Australia, New Zealand and Europe.

Kenney said, however, that potentially the company could still enter the US market.

“I would assume the parties are past the point of striking up an agreement based on some narrowing of the goods ... but the question remains whether Vibrynt can use ‘Prevail’ in the marketplace without infringing.

“There are lots of factors determining whether consumers will be confused,” he said, and “plenty of case law” showing that some professionals would exercise a lot more care when faced with two similar marks.

“A surgeon may have the ability to quickly distinguish the uses and that the marks come from a different source.

“That is potentially a closer call,” he said.

Vibrynt did not respond to a request for comment.

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