In In Re Cynosure Inc., the Trademark Trial and Appeal Board (TTAB) applied the test determining the likelihood of confusion while affirming the Examining Attorney’s refusal of Cynosure Inc.’s mark, CYNERGY (76653359). The latter would be used in conjunction with medical lasers for the purpose of cosmetic and medical treatment of the face, available for direct sale to licensed medical practitioners. The applicant’s mark was refused under 15 U.S.C. § 1052(d) on the grounds that it would likely be confused with the registered mark SYNERGIE PEEL with regards to medical devices used to practice microdermabrasion.

The TTAB relied on a two-prong test identified in In re E.I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), which consists of the following factors: the similarity of the marks and the similarity of the goods in the application and the cited registration. These factors are to be considered cumulatively (Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), while keeping in mind the recollection of the average purchaser who keeps a general impression of the marks, in order to determine whether the marks resemble each other so as to be likely to cause confusion (Sealed Air Corp v. Scott Paper Co.190 USPQ 106, 108 (TTAB 1975).)

With regards to the first facet of the test, elements of appearance, sound, connotation and commercial impression of the marks were considered Palm Bay Imports Inc. v. Veuve Clic quoting Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) Of particular significance is the TTAB’s rejection of the applicant’s family of marks argument wherein the applicant relied on the consumer’s knowledge of its pre-existing marks to emphasize the distinctiveness of the connotation and the sound of CYNERGY. In doing so, the TTAB underlined that the likelihood-of-confusion analysis applies only to the mark in question and not to previous marks used or registered by the applicant.

Also worth noting, would be the TTAB’s reply to the applicant’s argument that the registered mark SYNERGIE PEEL was not considered in its entirety, when being compared with CYNERGY. The TTAB noted that the term PEEL was only descriptive while SYNERGIE was the dominant element and phonetically equivalent to CYNERGY. It particularly emphasized the significance of the fact that both marks began with words that were phonetically equivalent, since the average purchase is more likely to retain the first part of a mark (Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)).

While assessing the second factor of the test, i.e. the similarity of goods, the TTAB specified that the goods need not be identical but only related in such a way so as to have the consumers believe from the marketing of the goods that the latter originated from same source (In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)). Key elements that were given consideration were the over-lapping purposes for which the goods were used (to remove dead skin cells), common venues of use (spas and clinics) and common purchasers of the goods, regardless of the fact that the purchasers may have undergone sophisticated training as there existed still potential for confusion (Wm. K. Stamets Company v. The Metal Products Company, 176 USPQ 92 (TTAB 1972)). Having cumulatively considered all of the above factors, the TTAB concluded that the refusal of the CYNERGY’s registration by the Examining Attorney was justified under15 U.S.C. § 1052(d).