GE Precision Healthcare LLC

THIS OPINION IS NOT A

PRECEDENT OF THE TTAB

Mailed: July 6, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board _____

In re GE Precision Healthcare LLC _____

Serial No. 98098739

_____

Marina Dostal, Counsel for GE Precision Healthcare LLC. Rasheedat Ogunfemi, Trademark Examining Attorney, Law Office 131, Nicholas A. Coleman, Managing Attorney.

_____

Before Lykos, Elgin, and Bradley, Administrative Trademark Judges. Opinion by Elgin, Administrative Trademark Judge:

Applicant GE Precision Healthcare LLC seeks registration on the Principal Register of the standard-character mark OMNI for "Medical apparatus and instruments for use in positron emission tomography/computed tomography (PET- CT) imaging" in International Class 10.¹

The Trademark Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant's mark, when used in

1

- 2 -

connection with the identified goods, so resembles the registered standard-character mark OMNITOM for "computed tomography (CT) imaging machines" in International Class 10²that it is likely to cause confusion, to cause mistake, or to deceive.

The Examining Attorney denied Applicant's request for reconsideration after the refusal was made final. The appeal is fully briefed.³We have reviewed and considered all of the arguments in the briefs and evidence of record. We have considered Applicant's arguments under the DuPont factor to which they are [most relevant (which in some cases differs from the factor under which they were argued). For the reasons set forth below, we affirm the refusal to register.

I. Likelihood of Confusion Analysis

Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d); see also In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023). Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours

- 3 -

& Co., 476 F.2d 1357, 1361 (CCPA 1973) ("DuPont"); see also In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003).

In any likelihood of confusion analysis, different DuPont factors may play a dominant role and some factors may not be relevant. Naterra Int'l, Inc. v. Bensalem,

92 F.4th 1113, 1116 (Fed. Cir. 2024) (citing Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022)). In addition, varying weight may be assigned to each factor depending on the evidence presented, and "any one of the factors may control a particular case." Id.; see also Charger Ventures, 64 F.4th at 1381. Although we consider each DuPont factor for which there is evidence and argument, In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019), two key considerations are the similarities between the marks and the similarities between the goods or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (citing Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)). In cases where we find some factor or factors relatively more important, we weigh or balance them more heavily in the final step of assessing the factors to determine whether confusion is likely.

We address the DuPont factors in the order set forth by Applicant in its brief, as that seems to emphasize the importance Applicant placed on each factor.

A. The Goods

The second DuPont factor "considers the similarity or dissimilarity and nature of the goods as described in the involved application and cited registration … and contemplates whether the consuming public may perceive the respective goods as

- 4 -

related enough to cause confusion about their source or origin." In re Samsung Display Co., No. 90502617, 2024 TTAB LEXIS 258, at *6 (cleaned up; citations omitted).

"We begin with the identifications of … [goods] in the registration and application under consideration" which may, in some cases, show on their face that they are literally or legally identical, or otherwise intrinsically related. In re OSF Healthcare Sys., No. 88706809, 2023 TTAB LEXIS 353, at *9-10 (cleaned up; citation omitted). Applicant's goods are "Medical apparatus and instruments for use in positron emission tomography/computed tomography (PET-CT) imaging" and the goods in the cited registration are "computed tomography (CT) imaging machines."

1. Understanding the Nature of the Goods at Issue

Because the goods at issue are technical or scientific in nature, we have considered extrinsic evidence to shed necessary light on the significance of the language in the identifications of goods. See, e.g., Edwards Lifesciences Corp. v. VigiLanz Corp., No. 91154210, 2010 TTAB LEXIS 84, at *39 ("Where, as here, applicant's description of goods provides basic information, and the goods are of a technical nature, it is entirely appropriate to consider extrinsic evidence to determine the specific meaning of the description of goods."); Pharmacia Inc. v. Asahi Med. Co., No. 91064311, 1984 TTAB LEXIS 175, at *6 (the Board must be concerned that the uses and meanings of technical or scientific terms in the description of goods have been made clear to properly assess the relationship between the goods). We have considered the evidence in that light and not as an improper attempt to restrict either party's goods as identified in their respective descriptions of goods.

- 5 -

We take judicial notice of the definitions of "tomography" and "computed tomography" in the cited registration:

Tomography: a method of producing a three-dimensional image of the internal structures of a solid object (such as the human body or the earth) by the observation and recording of the differences in the effects on the passage of waves of energy impinging on those structures.⁴

Computed Tomography [CT]: radiography in which a three-dimensional image of a body structure is constructed by computer from a series of plane cross-sectional images made along an axis.⁵

As explained on the website of the National Institute of Biomedical Imaging and Bioengineering (NIH), of which we take judicial notice:

The term "computed tomography," or CT, refers to a

computerized x-ray imaging procedure in which a narrow

beam of x-rays is aimed at a patient and quickly rotated around the body, producing signals that are processed by the machine's computer to generate cross-sectional images, or "slices." These slices are called tomographic images and can give a clinician more detailed information than

conventional x-rays. Once a number of successive slices are collected by the machine's computer, they can be digitally

"stacked" together to form a three-dimensional (3D) image of the patient that allows for easier identification of basic structures as well as possible tumors or abnormalities.⁶

- 6 -

As to Applicant's "positron-emission tomography," it is defined as:

Positron-Emission Tomography [PET]: tomography in which a cross-sectional image of regional metabolism is obtained by a usually color-coded representation of the distribution of gamma radiation given off in the collision of electrons in cells with positrons emitted by radionuclides incorporated into metabolic substances that have been administered (as by injection).⁷

The National Library of Medicine's website further explains that:

A positron emission tomography (PET) scan is a type of imaging test. It uses a radioactive substance called a tracer to look for disease in the body.

• A PET scan shows how organs and tissues are working.

• This is different than MRI and CT scans. These tests show the structure of, and blood flow to and from organs.

• Machines that combine the PET and CT images, called a PET/CT, are commonly used.⁸ …

Most PET scans are now performed along with a CT scan. This combination scan is called a PET/CT. This helps find the exact location of the tumor or other abnormality. Thus, PET scans are produced through injection of a radioactive tracer element (such as radiolabeled glucose molecules) which detects increased cellular and tissue

- 7 -

activity.⁹CT scans provide images of the anatomical structure and PET scans provide information on metabolic function at the cellular level.¹⁰ The evidence shows that combined PET-CT machines are "[a] combination instrument that produces both PET and CT scans of the same body regions in one examination (PET/CT scanner) [which] has become the primary imaging tool for the staging of most cancers worldwide."¹¹Applicant explains that "radiopharmaceuticals are excellent for detecting cancer because the PET highlights areas of increased metabolism (cancer cells) and the CT scanning overlay structural detail so it is clear where the metabolic activity is occurring in the body."¹²Applicant's evidence includes a figure demonstrating how "Fused CT-PET scans more clearly show tumors…."¹³ Even with this understanding of the nature of CT and PET-CT scans, Applicant's identification, "Medical apparatus and instruments for use in positron emission tomography/computed tomography (PET-CT) imaging," is somewhat unclear. Applicant's specimen of use, however, shows that the identified "[m]edical apparatus and instruments" are the combined PET-CT machines described above:¹⁴

- 8 -

With this backdrop in mind, we now proceed to analyze the similarity of CT and PET-CT machines under the second DuPont factor.

2. Similarity of the Goods

The Examining Attorney argues that the cited registration's broad identification

"could encompass 'computed tomography (CT) imaging machines,' because the wording 'medical apparatus and instruments' would necessarily include medical 'imaging machines,'"¹⁵and thus these goods are "potentially legally identical."¹⁶In addition, the Examining Attorney made of record evidence to show that "PET/CT platforms incorporate machines for '[f]ast, low-dose CT,'" thus "demonstrat[ing] that PET-CT imaging utilizes a computed tomography machine."¹⁷Finally, the Examining Attorney argues that third-party websites of record from Philips, Siemens, Canon,

- 9 -

and United Imaging "show the parties' goods are similar and/or complimentary [sic] in terms of purpose, use, and function…."¹⁸

Applicant counters that its combined PET-CT imaging devices are fundamentally different from Registrant's standalone CT imaging devices, primarily because "a standard CT scanner never uses radiopharmaceuticals. In other words, unless a CT imaging device is combined with a nuclear medicine technique (such as a PET-CT or SPECT CT scanner), radiopharmaceuticals will never be administered for a standalone CT scanner. Therefore, these devices are used for different medical applications and to view different parts of the body."¹⁹

We reject the Examining Attorney's argument that the goods are legally identical by virtue of the identifications themselves. Although combined PET-CT machines unquestionably incorporate CT technology, this does not mean that Applicant's identification is broader and overlaps in part with Registrant's identification (as would, for example, clothing and t-shirts). However, it is well-settled that the goods do not have to be identical or even competitive to find a likelihood of confusion. On-line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1086 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir 2000)). The goods of the applicant and the registrant need only be related in some manner and/or the circumstances surrounding their marketing are such that they could give rise to the mistaken belief

- 10 -

that they emanate from the same source. Coach Servs. v. Triumph Learning LLC,

668 F.3d 1356, 1369 (Fed. Cir. 2012). On the basis of the identifications and our understanding of the operation and purposes of these machines as discussed above, we find that CT and PET-CT machines are intrinsically related. CT and PET-CT machines are both medical imaging devices, used for similar purposes (i.e., detecting potentially cancerous tumors or cardiac disease).²⁰That is, CT and PET scans serve highly similar diagnostic purposes; and working together in a single machine such as Applicant's combined device provides better diagnostic information than either does alone. In addition, we note that Applicant argues under the sixth DuPont factor that third-party registrations for various medical imaging devices - such as CT, X-ray, and ultrasound machines - are related, resulting in conceptual weakness of the term OMNI for Registrant's goods.²¹We must employ the same scope of relatedness in our analysis under the second and sixth DuPont factors. Apex Bank v. CC Serve Corp.,

156 F.4th 1230, 1236 (Fed. Cir. 2025) ("When the Board has already made a factual finding that the services are highly similar - in fact, partially legally identical - in its analysis of the second DuPont factor … the Board should retain the same scope in its consideration of similarity under the other factors."). Various medical imaging

- 11 -

devices, therefore, are related, regardless of the precise method of imaging. This includes CT and PET-CT machines.

We also agree that the evidence relied upon by the Examining Attorney demonstrates that the PET-CT and CT machines are related. The evidence shows that companies such as Philips,²²Siemens Healthineers USA,²³Toshiba America Medical Systems, Inc.,²⁴and United Imaging²⁵sell CT machines and PET-CT machines under the same house mark, as well as secondary marks or sub-brands. This supports a finding that the goods are related. See e.g., In re Davey Prods. Pty, No. 77029776, 2009 TTAB LEXIS 524, at *15 (two third-party webpages showing that the involved goods were offered under the same house marks supported a finding of relatedness); Wet Seal, Inc. v. FD Mgmt., Inc., No. 91157022, 2007 TTAB LEXIS 21, at *35-36 (evidence of three companies, CALVIN KLEIN, CHANEL and BCBG, selling both clothing and fragrances under their house marks supported a finding that clothing and fragrances are related). The evidence of record confirms that, as shown below, house marks (indicated in red) typically appear on the machines, including Applicant's and Registrant's scanners:²⁶

- 12 -

- 13 -

Applicant argues that PET-CT machines and CT machines are not related because they are placed in different departments or facilities.²⁷Applicant cites to a guide published by Stanford University entitled "General Workplace Safety Guidance:

Radiation Exposure Protection," but this guide does not concern different protocols or locations for CT and PET-CT machines.²⁸Nor does a journal article dated June 2009 relied upon by Applicant entitled "Patient and Resource Scheduling of Multi-Step Medical Procedures in Nuclear Medicine" discussing algorithms derived and validated via simulation models to efficiently schedule nuclear medicine patients.²⁹ There is no evidence showing that PET-CT machines emit radiation any more than a CT machine. The radiation exposure from PET scans appears to come from the

- 14 -

injected radiopharmaceuticals, and one article made of record by Applicant indicates that: "The total radiation dose conferred to patients by the majority of radiopharmaceuticals used in diagnostic nuclear medicine studies is no more than what is conferred during routine chest x-rays or CT exams."³⁰ Applicant also argues that the machines "can weigh over 500 pounds or even several tons, as is the case with Applicant's Goods. As a result, there are specific procedures in place for transporting this heavy medical equipment."³¹Further, Applicant argues that there are "specific guidelines for transporting radioactive material to minimize the potential for exposure," concluding that "it is unlikely for Applicant's Goods to be easily moved within a hospital (and, indeed, Applicant's Goods cannot be moved without following specific guidelines)."³² We acknowledge and discuss further below that undoubtedly Applicant's and Registrant's goods may be large and difficult to move. But this does not render the goods, both of which are medical imaging machines, unrelated under the second DuPont factor. As discussed above, both machines may be used for the same purposes, such as cardiac imaging, indicating that cardiologists may order tests on either type of machine. Despite its arguments, Applicant does not point to any evidence of record indicating where such machines are typically located within medical facilities, or showing that different individuals or departments typically purchase these machines.

- 15 -

There also is no evidence that Applicant's machines are harder to install or move than Registrant's machines, nor any evidence that radiation exposure (from injected radiopharmaceuticals used in connection with PET scans, not radioactive materials embedded in the machines themselves) makes this more or less complex. Attorney argument is not evidence. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir.

2018).

Applicant also argues that the Board should consider actual differences between the goods: "Applicant's Goods are standing Positron Emission Tomography- Computed Tomography (PET-CT) devices for full-body scanning, which are entirely different than Registrant's portable CT scanners used for point-of-care medical imaging."³³Applicant's arguments based on its and Registrant's actual products (calling them "neurological transportable head scanners")³⁴is not persuasive because we analyze the DuPont factors based on the identifications present in the application and registration. We cannot read limitations, such as portability or size, into identifications of goods based on either argument or evidence of actual use. See, e.g., In re Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *37-38 (Board may not import restrictions into identification based on real-world conditions); In re Bercut- Vandervoort & Co., No. 73448806, 1986 TTAB LEXIS 124, at *5-6 (applicant may not restrict the scope of the goods identified in the application or cited registration by argument or extrinsic evidence showing narrower use). Moreover, the evidence of

- 16 -

record shows that CT machines, like PET-CT machines, may be large and installed (e.g. non-portable) in medical facilities, such as the two Siemens machines depicted below:³⁵

CT Machine PET-CT Machine

Applicant also argues that goods in the healthcare field, even those in the medical imaging sub-category, are not automatically considered related.³⁶Applicant relies on In re Digirad Corp., No. 74569856, 1998 TTAB LEXIS 2 (holding that x-ray and nuclear imaging devices were not related, even though both were imaging devices used for medical diagnostic purposes). The record in Digirad, unlike the evidence of record here, did not include evidence that the diagnostic technologies were commonly used together - let alone in the exact machine identified in Applicant's application. Thus, this case is closer to a case relied upon by the Examining Attorney, In re Toshiba Med. Sys. Corp., No. 79046106, 2009 TTAB LEXIS 447. There, the Board

- 17 -

found that magnetic resonance imaging (MRI) technology and ultrasound technology are "medical diagnostic apparatus with imaging functions" that "can be used as part of a common diagnostic approach" and serve complementary purposes, and were therefore related. Id. at *2-3, 17.³⁷The decision in Toshiba also found that

"applicant's and registrant's goods are medical diagnostic equipment that can originate from the same source … that can be purchased by the same facilities, and that are used on the same patients to treat the same disease by the same physician,"

supporting a finding that the goods are related. Id. at *17-18. CT and PET-CT machines also may originate from the same source and serve a common diagnostic (imaging) purpose.

We also are not convinced by Applicant's argument, relying on the non- precedential decision In re TriVascular, Inc., No. 77941535, 2012 TTAB LEXIS 456, that "when medical devices cannot be used interchangeably, they are not considered similar for the purposes of assessing the likelihood of confusion."³⁸Trivascular concerned prosthetic implants (artificial bones and joints) and vascular prostheses (artificial blood vessels), but not the devices at issue here; thus, it is not persuasive in this case, which concerns machinery that is used for the same purpose: medical

- 18 -

imaging. See Tapio, 2020 TTAB LEXIS 483, at *26 (finding non-precedential decisions decided on different records unpersuasive). We find the second DuPont factor favors a finding of likelihood of confusion.

B. Channels of Trade

The third DuPont factor concerns the "similarity or dissimilarity of established, likely-to-continue trade channels." Samsung Display, 2024 TTAB LEXIS 258, at *17 (quoting DuPont, 476 F.2d at 1361). Neither the registration nor the application contains any limitations on the channels of trade, or classes of purchasers. As such, Applicant's and Registrant's goods presumptively move in all normal trade channels and to consumers that purchase such goods. See Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373 (Fed. Cir. 2013). We therefore look to the record to ascertain whether it sheds any light on the normal trade channels for Applicant's and Registrant's medical imaging equipment.

The Examining Attorney argues that the third-party websites from Philips, Siemens, Canon, and United Imaging show that the relevant "goods are sold or provided through the same trade channels and used by the same classes of customers in the same field."³⁹Entities that produce Applicant's and Registrant's goods likely market them to the same types of entities (e.g., hospitals and clinics), but the mere purchase of the goods by the same institution does not, by itself, establish similarity of trade channels or overlap of customers. "The likelihood of confusion must be shown to exist not in a purchasing institution, but in 'a customer or purchaser.'" Electronic

- 19 -

Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 717 (Fed. Cir. 1992) (quoting Astra Pharm. Prods. v. Beckman Instruments, 718 F.2d 1201, 1206 (1st Cir. 1983)). In this case, "there is no evidence that the same people at the ... institutions [who] make the decision to purchase [PET-CT machines] also choose to purchase [CT machines]." Calypso Tech., Inc. v. Calypso Cap. Mgmt., LP, No. 91184576, 2011 TTAB LEXIS 259, at *29.

On the other hand, Applicant responds that both its and Registrant's goods are purchased through "complex business negotiations," initiated by the customer, "not available through ordinary retail channels."⁴⁰The only evidence as to how entities who sell the relevant machines find and sell to their target audiences are their websites, through which potential customers can request more information or obtain a quote. Representative examples are below (emphasis added in red):⁴¹

- 20 -

- 21 -

There is no evidence, however, that individual manufacturer websites are the only (or even the primary) way that these products are sold to medical facilities. We must consider all "normal" channels of trade, and we have little evidence as to what those might be.

Applicant also argues that "[g]oods marketed to and used by different personnel, even within a common field, reduces confusion…."⁴²In support, Applicant made of record evidence - template job listings - showing that "radiochemical technicians"

"work with radioactive materials in laboratory or industrial settings, supporting research, production, or safety processes. They handle tasks such as preparing radioactive samples, conducting experiments, maintaining equipment, and ensuring compliance with safety protocols."⁴³As an initial matter, there is no evidence that technicians play any part in purchasing decisions. Moreover, the proffered evidence

- 22 -

lacks relevance; the job listing templates do not pertain to nuclear medicine (PET-CT scan) technicians. Nor is there evidence of record to explain how the skills or certifications of PET-CT technicians differ from CT technicians. On the other hand, although it appears from the evidence that certain physicians (such as radiologists) may use or prescribe scans obtained from both types of medical equipment,⁴⁴we do not know to what extent physicians have input into the purchasing process. Given the lack of evidence on the normal trade channels for Applicant's and Registrant's goods, we find that the third DuPont factor is neutral.

C. Sophistication of Consumers and Purchasing Conditions

We turn next to the fourth DuPont factor, the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration. DuPont, 476 F.2d at 1361. Purchaser sophistication or degree of care when encountering marks may tend to minimize likelihood of confusion. In re N.A.D., Inc.,

754 F.2d 996, 999-1000 (Fed. Cir. 1985) (because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between NARCO and NARKOMED). Conversely, impulse purchases of inexpensive items where purchasers pay little attention to the source of the products may tend to have the opposite effect. Palm Bay

- 23 -

Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005).

Applicant argues that "the heightened care and sophistication exercised by consumers making healthcare-related purchasing decisions undercuts a finding of consumer confusion."⁴⁵Also, we again have considered Applicant's argument (discussed above) that these purchases are made after lengthy transactions.⁴⁶ Applicant points out that the parties' goods can never be purchased by ordinary consumers and Applicant's goods have "various restrictions regarding how the product must be used and stored…."⁴⁷

It is very likely that sophisticated medical equipment such as CT and PET-CT machines are very expensive purchases given extreme care by personnel with specialized expertise. For example, one article in the record confirms that

"[e]quipment utilized for diagnosis procedures are usually very expensive…."⁴⁸ Another website indicates that purchases of similar equipment requires a great deal of planning: "The massive scale of most medical equipment means that it often takes up entire rooms. Equipment like MRIs and radiation therapy machines are often

- 24 -

installed during the construction phase of a new hospital wing, with walls, doorways, floors and halls all built around them."⁴⁹

Thus, we find that the goods, "by their intrinsic nature, are not impulse purchases but are relatively expensive and would ordinarily be purchased with a relatively high degree of care." In re Jimenez, No. 97551823, 2025 TTAB LEXIS 441, at *19 (citing Charger Ventures, 64 F.4th at 1378-79; In re Info. Builders Inc., No. 87753964, 2020 TTAB LEXIS 20, at *14; Edwards Lifesciences, 2010 TTAB LEXIS 84, at *51). We find that the fourth DuPont factor weighs against a finding of likelihood of confusion.

D. Weakness of the Cited Mark

Before comparing the marks, we begin with an analysis of the sixth DuPont factor, which "allows Applicant to contract th[e] scope of protection by adducing evidence of '[t]he number and nature of similar marks in use on similar goods.'" Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 251, at *24 (quoting DuPont, 476 F.2d at 1361). A determination of the strength or weakness of the cited mark helps inform us as to its scope of protection. See In re Morinaga Nyugyo K.K., No. 86338392, 2016 TTAB LEXIS 448, at *17-18 ("[T]he strength of the cited mark is—as always—relevant to assessing the likelihood of confusion under the du Pont framework.").

When evaluating the strength or weakness of a mark, we look at the mark's inherent conceptual strength based on the nature of the term itself and its commercial strength in the marketplace. See Spireon, Inc. v. Flex LTD, 71 F.4th 1355,

- 25 -

1362 (Fed. Cir. 2023) ("There are two prongs of analysis for a mark's strength under the sixth factor: conceptual strength and commercial strength."); In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010) (measuring both conceptual and marketplace strength); Made in Nature, 2022 TTAB LEXIS 228, at *24. Conceptual strength is a measure of the cited mark's distinctiveness. A mark may be placed "in categories of generally increasing distinctiveness: … (1) generic;

(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). The last three categories are considered inherently distinctive.

"Where, as here, [a] mark is registered without a Section 2(f) claim of acquired distinctiveness, the mark is presumed to be inherently distinctive," that is, at least suggestive. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed. Cir. 2021); see also Heil Co. v. Tripleye GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *48-49 (where a mark "is registered on the Principal Register, with no claim of acquired distinctiveness under Section 2(f), we presume it is inherently distinctive, i.e., that it is at worst suggestive of the goods") (citing Trademark Act Section 7(b), 15 U.S.C. § 1057(b)). This means that the cited mark OMNITOM is presumptively entitled to at least "the normal scope of protection to which inherently distinctive marks are entitled." Sage Therapeutics, Inc. v. Sageforth Psych. Servs., LLC, No. 91270181, 2024 TTAB LEXIS 139, at *27 (quoting Bell's Brewery, Inc. v. Innovation Brewing, No. 91215896, 2017 TTAB LEXIS 452, at *20).

- 26 -

Nonetheless, we may consider whether the cited mark, or a component thereof, lacks distinctiveness or is weak. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 947 (Fed. Circ. 2000) (a "descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion.") (quoting In re Nat'l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). Here, Applicant asserts that the term OMNI in the cited mark is weak, such that the applied-for mark may co-exist on the register.⁵⁰

We take judicial notice that OMNI means "all: universally."⁵¹Purchasers who take the time to consider the term in each mark could take this as suggestive of the use of Registrant's CT machines to image the entire human body.

Applicant also argues:

[T]he USPTO has permitted multiple parties, including

Registrant, to register marks for or featuring the term

"OMNI," or phonetic equivalents and similar variations thereof, for highly related goods …. the Board should recognize that OMNI is clearly commonly used in the medical industry such that the parties' marks should not be considered confusingly similar. Consumers are accustomed to looking at other elements of the marks to distinguish the source of the goods and services.⁵² Applicant acknowledges that "third-party registrations, standing alone, are not conclusive evidence of actual marketplace use or consumer familiarity,"⁵³but asserts

- 27 -

that "[w]here, as here, 'OMNI' appears repeatedly in marks for sophisticated medical imaging equipment offered by different entities, the evidence supports a finding that 'OMNI' is conceptually weak in that context."⁵⁴

"Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak." Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015) (citation omitted). Even if "there is no evidence of actual use" of

"third-party registrations," such registrations "may be given some weight to show the meaning of a mark in the same way that dictionaries are used." Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA 1976), cited in Juice Generation, 794 F.3d at 1339.

Applicant submitted USPTO records of ten registrations for marks incorporating the term OMNI, summarized below:⁵⁵

1. OMNI (Reg. No. 6793768) for "medical apparatus, namely, cervical seals; gynecologic video imaging apparatus and display system comprised of a

- 28 -

hysteroscope and associated medical image processor for image storage and processing, camera head, cables, and display" in Class 10;

2. OMNI SPIN ("spin" disclaimed) (Reg. No. 7141425) for "Electromedical apparatus and equipment and installations consisting thereof for angiography and cardiology, namely, medical imaging apparatus and replacement parts therefor" in Class 10;

3. BREATH BIOPSY OMNI ("breath biopsy" disclaimed) (Reg. No. 7497789) for various computer software for medical purposes in Class 9; various medical apparatus and instruments, including "medical imaging apparatus" in Class 10; various medical services in Class 44;

4. MINIOMNI (Reg. No. 4107331; renewed) for various medical apparatus including ultrasound diagnostic and imaging apparatus for medical use in Class 10;

5. OMNI ORTHODONTICS ("orthodontics" disclaimed) (Reg. No. 4725268) for various dental apparatus, including X-ray appliances for dental and medical use, in Class 10;

6. UROSKOP OMNIA (Reg. No. 4010989; renewed) for "medical X-ray apparatus and devices, in particular for application in the field of urology"

in Class 10;

7. UROSKOP OMNIA MAX (Reg. No. 4710148; renewed) for "Medical X-ray apparatus and fluoroscopy apparatus equipment, in particular for use in the field of urology" in Class 10;

8. OMNIBED (Reg. No. 2640183; renewed) for "Infant medical equipment, namely, infant incubators and infant warmers" in Class 10;

9. OMNI (Reg. No. 5279736; Section 8 and 15 filings accepted) for "Patient medical monitors for monitoring human and veterinary patient physiological data, namely, oximetry, SPO2, gas analysis, anesthetic agents, vital signs, pulse rate, temperature, respiration rate, respiratory events, blood pressure, blood properties, ECG, CO2, and cardiac output, all of the foregoing not in the field of remote patient monitoring of patient vitals and other patient information" in Class 10; and

10. OMNIWIRE (Reg. No. 5974467) for "Devices used for radiological guidance and visualization during diagnostic, interventional and surgical procedures, namely, medical guidewires, in the nature of pressure guidewires" in Class 10.

- 29 -

None of these registrations disclaim OMNI (or similar terms, such as OMNIA, meaning "all").⁵⁶

For a number of reasons, we discount the probative value of many of the third- party registrations Applicant provided. We take judicial notice that one of these registrations (OMNI ORTHODONTICS (No. 5 above)) has been cancelled for failure to file an acceptable Section 8 declaration of use. See Harry Winston, 2014 TTAB LEXIS 284, at *11 n.19. Cancelled registrations are evidence of nothing but the fact that they once issued. Sunnen Prods. Co. v. Sunex Int'l Inc., No. 91069733, 1987 TTAB LEXIS 92, at *7.

Two of the registrations, OMNI BED (No. 8) and OMNI (No. 9) cover unrelated goods, and thus offer little insight into the weakness of the term OMNI for CT machines. See Apex Bank, 156 F.4th at 1236 ("We have held that the sixth DuPont factor does not require identical goods—only similar ones."); Omaha Steaks Int'l v. Greater Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (it is error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus

"on goods shown to be similar"); i.am.symbolic, 866 F.3d at 1328-29 (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained that they were related to the goods in the cited registration).

- 30 -

The remaining seven registrations cover other types of medical imaging devices such as ultrasound and x-ray apparatus. The evidence shows that these other types of imaging devices and Registrant's CT machines are marketed under the same house mark, demonstrating the relatedness of the goods. For example, evidence in the record confirms that "Toshiba Medical Systems Corporation is a leading worldwide provider of medical diagnostic imaging systems and comprehensive medical solutions, such as CT, X-ray and vascular, ultrasound, nuclear medicine and MRI systems, as well as information systems for medical institutions."⁵⁷Canon Medical System's line of products includes Computed Tomography, Molecular Imaging, Magnetic Resonance (MRI), Ultrasound, and X-Ray machines.⁵⁸ Even these registrations have some diminished probative value. Three (OMNI SPIN (No. 2), BREATH BIOPSY OMNI (No. 3), and OMNIWIRE (No. 10)) were registered under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). The records do not show that declarations of use under Trademark Act Section 71,

15 U.S.C. § 1141j, have been filed. Because these registrations are not based on use, they have less probative value as to the meaning of a term to U.S. consumers. Cf. Info. Builders, 2020 TTAB LEXIS 20, at *19 n.19 (giving no consideration to a registration not based on use "because it does not demonstrate exposure of the mark prior to registration through use in commerce and, therefore, has no probative value"). We note also that three (OMNI SPIN (No. 2), UROSKOP OMNIA (No. 6), and

- 31 -

UROSKOP OMNIA MAX (No. 7)) are owned by a single company: Siemens Healthineers AG.

Nonetheless, we find that, together with the dictionary definition of "omni," these third-party registrations of record confirm that OMNI has some conceptual weakness in the field of medical imaging devices, including Registrant's CT machines. But we are not persuaded that the term OMNI is commercially weak. As the Examining Attorney argues,⁵⁹and Applicant acknowledges,⁶⁰the "probative value of third-party trademarks depends entirely upon their usage." Palm Bay, 396 F.3d at 1373 (citation omitted). To be clear, the record is devoid of any evidence showing third-party marketplace use of the term OMNI as a mark or as an element of a mark. Importantly, the third-party registration evidence has very minimal probative value as to commercial strength. Id. at 1373 ("[W]here the 'record includes no evidence about the extent of [third-party] uses … [t]he probative value of this evidence is thus minimal."); Morinaga, 2016 TTAB LEXIS 448, at *22-23 ("But Applicant's citation of third-party registrations as evidence of market weakness is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences."). Applicant's evidence does not show commercial weakness.

- 32 -

In summary, we find that the evidence demonstrates some conceptual weakness of the term OMNI in the cited mark OMNITOM with respect to the CT machines identified in the cited registration, but no commercial weakness. Accordingly, the term is entitled to a slightly narrower scope of protection under the sixth DuPont factor. See Juice Generation, 794 F.3d at 1336 ("The weaker an opposer's mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection").

E. The Marks

Keeping in mind our finding above that the term OMNI in the cited mark is entitled to a slightly narrower scope of protection, we next compare the marks. See Apex Bank, 156 F.4th at 1236 (finding of weakness under the sixth DuPont factor may affect the overall commercial impression of marks). Under the first DuPont factor, "we consider the 'similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'" In re Ye Mystic Krewe of Gasparilla, No. 90522364, 2025 TTAB LEXIS 412, at *9 (quoting DuPont,

476 F.2d at 1361). "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." In re Inn at St. John's LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13 (citation omitted), aff'd per curiam, 777 F. App'x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 732 (CCPA 1968) ("It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.") (citation omitted).

- 33 -

"[S]imilarity is not a binary factor but is a matter of degree." In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d 1340, 1344 (Fed. Cir. 2003)). The proper test regarding similarity "is not a side-by- side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." Cai, 901 F.3d at 1373 (quoting Coach Servs., 668 F.3d at 1368). "The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." In re St. Julian Wine Co., No. 87834973, 2020 TTAB LEXIS 196, at *13.

Again, Applicant's mark is OMNI and the cited mark is OMNITOM, both in standard characters. Applicant argues that "[w]hile both marks include the letters O- M-N-I, this does not mean that the commercial impressions of the marks are similar."⁶¹Applicant contends that the additional term "TOM" impacts the meaning of the cited mark "because it alludes to Registrant's computed tomography goods," in addition to changing the appearance and sound of the marks.⁶²Applicant points out that its mark "is two syllables and four letters and pronounced AHM-NI. In contrast, the Cited Mark is three syllables and seven letters and is pronounced AHM-NI-TONE [sic]. The differences in the commercial impressions and underlying meanings of the

- 34 -

parties' marks are sufficient to dispel consumer confusion."⁶³Applicant argues that

"the addition of distinct elements may be sufficient to avoid confusion where the marks, viewed as a whole, convey different commercial impressions or where the shared matter is diluted."⁶⁴Finally, Applicant argues that the "real-world use and applications of the parties' marks undercuts confusion" because Applicant's mark appears with its "house mark" (i.e., GE) and the cited mark appears in proximity to the NEUROLOGICA house mark.⁶⁵

Registrant's mark OMNITOM begins with and incorporates the entirety of Applicant's mark OMNI, creating strong visual and aural similarities between the marks. Because consumers are generally pre-conditioned to focus on the first word or prefix in any trademark, this similarity is particularly meaningful. See In re Detroit Athletic Co., 903 F.3d 1297, 1303 (Fed. Cir. 2018); Palm Bay, 396 F.3d at 1372-73. In such cases such as this - where one mark merely adds a term to that of another mark - similarity between the compared marks generally is found not to be obviated by that additional term, despite the obvious aural differences. See, e.g., Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1322 (affirming the Board's finding that applicant's mark STONE LION CAPITAL incorporated the entirety of the registered marks LION CAPITAL and LION, and that the noun LION was the dominant part of both parties' marks); Coca-Cola Bottling Co. v. Jos. E. Seagram &

- 35 -

Sons, Inc., 526 F.2d 556, 557-58 (CCPA 1975) (finding BENGAL and BENGAL LANCER and design to be confusingly similar).

This is especially true where the shared term appears first, and the additional term has less source-identifying significance. Detroit Athletic, 903 F.3d at 1303 ("The identity of the marks' initial two words is particularly significant because consumers typically notice those words first."); In re Chatam Int'l, 380 F.3d 1340, 1342-43 (Fed. Cir. 2004); In re Dixie Rests., 105 F.3d 1405, 1407 (Fed. Cir. 1997) (disclaimed or descriptive terms are generally considered less significant features of a mark). Here, although Applicant argues that "distinctive" terms may avoid confusion, Applicant also contends that the added suffix "TOM" in the cited mark OMNITOM alludes to Registrant's computed tomography goods.⁶⁶Although evidence on this point is lacking, we agree that this interpretation of TOM as descriptive of the computed tomography machines makes sense. Thus, TOM is less likely to be given significant weight in the context of the cited mark. In addition, as the Examining Attorney points out, to the extent TOM has significance in the context of Registrant's goods, Applicant's goods also involve computed tomography.⁶⁷The addition of TOM to OMNI, therefore, is unlikely to create a very different meanings or commercial impressions.

We find that consumers are likely to focus on the first part of Registrant's mark, OMNI, which is identical to the entirety of Applicant's mark. For this reason, we are

- 36 -

not convinced by Applicant's argument regarding the alleged different pronunciation of the marks.⁶⁸Inasmuch as the term OMNITOM is not a standard dictionary word, it can be pronounced in several ways: for example, AHM-NI-TOME (as Applicant suggests), AHM-NI-TUMM, or AHM-NI-TAHM. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331-32 (Fed. Cir. 2014) (there is no correct pronunciation of a trademark that is not a recognized word). In addition, determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables, or letters that are similar or different. Fuji Jyukogyo K.K. v. Toyota Jidosha K.K., No. 91063523, 1985 TTAB LEXIS 31, at *8 ("Purchasers do not count letters when reacting to trademarks in the marketplace."); Am. B.D. Co. v. N.P. Beverages, Inc., No. 91060900, 1981 TTAB LEXIS 117, at *2 ("Purchasers are not expected to, and do not, count the number of letters which marks have in common.") (citing cases); In re John Scarne Games, Inc., 1959 TTAB LEXIS 31, at *1 (no proceeding number in original) ("Purchasers of game boards do not engage in trademark syllable counting[;] they are governed by general impressions made by appearance or sound, or both.").

Finally, Applicant's argument that the marks are distinguishable because they are always used close to their respective house marks is unconvincing.⁶⁹Unlike infringement cases, the Board considers only the drawings of the marks in the

- 37 -

involved application and cited registration. United Foods, Inc. v. J.R. Simplot Co., No. 91072437, 1987 TTAB LEXIS 33, at *7.

We find that the marks OMNI and OMNITOM, considered in their entireties, are similar in sight, sound, meaning, and overall commercial impression. See Inn at St. John's, 2018 TTAB LEXIS 170, at *13 (similarity in any element under the first DuPont factor may be sufficient to find the marks confusingly similar). Accordingly, the first DuPont factor favors a finding of likelihood of confusion.

F. Lack of Actual Confusion

In its reply brief, Applicant raises a new argument relevant to the eighth DuPont factor, that "the Examining Attorney's analysis overlooks the absence of any evidence of actual confusion, despite the fact that the parties and multiple third-party medical imaging providers operate in the same sophisticated marketplace under conditions that would readily reveal confusion if it were likely to occur."⁷⁰ This argument is somewhat misplaced, because an appeal of a refusal to register a mark is an ex parte proceeding. That means the owner of the cited registration is not a party and we simply cannot know whether the Registrant has evidence of actual confusion. Majestic Distilling, 315 F.3d at 1317 ("uncorroborated statements of no known instances of actual confusion are of little evidentiary value" in an ex parte appeal). In addition, we have insufficient evidence of the kind of marketplace circumstances that can lead to actual confusion. Cf. Guild Mortg., 912 F.3d at

- 38 -

1380-81 (suggesting that evidence of concurrent use of the two marks for a particularly long period of time (40 years) in the same geographic market without any evidence of actual confusion may be probative under the eighth DuPont factor, even in an ex parte appeal).

For these reasons, we find the eighth DuPont factor neutral.

II. Balancing the Factors on Likelihood of Confusion

Finally, we must weigh and balance the findings we have made on the DuPont factors for which there has been evidence and argument in this appeal. Charger Ventures, 64 F.4th at 1381 ("[I]t is important ... that the Board ... weigh the DuPont factors used in its analysis and explain the results of that weighing."). In this case, both the first and second DuPont factors - which we consider most important - weigh in favor of likelihood of confusion given the similarity of the marks and similarity of the goods. i.am.symbolic, 866 F.3d at 1322. The sixth factor weighs slightly against likelihood of confusion. The fourth factor - sophistication of the consumers - also weighs in Applicant's favor. The third and eighth factors are neutral on this record.

Because the first and second DuPont factors weigh heavily in favor of a conclusion that confusion is likely, we conclude that the fourth and sixth DuPont factors do not outweigh them, and find confusion to be likely. As the Board found in Toshiba, "[i]t seems beyond dispute that ultrasound and MRI imaging equipment is expensive and that the purchasers of these products would be sophisticated," but, in finding

- 39 -

confusion likely, noted that "even sophisticated purchasers may be confused."

Toshiba, 2009 TTAB LEXIS 447, at *25.

Decision

The refusal to register application Serial No. 98098739 is affirmed under Trademark Act Section 2(d).