GE Precision Healthcare LLC

1 printed pages contain little extracted OCR body text; searchable legal-body completeness has not been established for those pages.

OCR transcription for search; preserved printed pages are authoritative

THIS OPINION IS NOTA
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 Serial No. 98098739 was filed on July 24, 2023 under Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a), based on Applicant’s claimed first use of the mark and first use of the mark in
commerce at least as early as December 28, 2022.

Serial No. 98098739
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connection with the identified goods, so resembles the registered standard-character
mark OMNITOM for “computed tomography (CT) imaging machines” in
International Class 102 that 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.3 We 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
2 Registration No. 5499125 issued on the Principal Register on June 19, 2018; Combined
Declaration of Use and Incontestability under Trademark Act Sections 8 and 15, 15 U.S.C.
§§ 1058 and 1065, accepted and acknowledged.
3 Applicant’s brief and reply brief are at 6 TTABVUE and 9 TTABVUE. The Examining
Attorney’s brief is at 8 TTABVUE. Citations to the prosecution record refer to the USPTO
Trademark Status and Document Retrieval system (TSDR) in the downloadable .pdf format by
page number. References to the briefs on appeal refer to the Board’s TTABVUE docket system.
In re Integra Biosciences Corp., No. 87484450, 2022 TTAB LEXIS 17, at *6.

Serial No. 98098739
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& 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

Serial No. 98098739
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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.

Serial No. 98098739
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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
4 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com/dictionary/tomography, accessed
July 6, 2026). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format. In re Cordua Rests. LP, No. 85214191, 2014 TTAB
LEXIS 94, at *6 n.4; see also B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727,
728 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”).
5 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com/dictionary/computed%20
tomography, accessed July 6, 2026).
6 “Computed Tomography (CT)” (nibib.nih.gov/science-education/science-topics/computed-
tomography-ct#pid-1016, accessed July 6, 2026). The Board may take judicial notice of
information and definitions on government websites. See, e.g., In re Int’l Fruit Genetics, LLC,
No. 88711192, 2022 TTAB LEXIS 403, at *3-5; In re Nieves & Nieves LLC, No. 85179263,
2015 TTAB LEXIS 12, at *8.

Serial No. 98098739
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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 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com/dictionary/positron-emission%20
tomography, accessed July 6, 2026).
8 “PET scan” (medlineplus.gov/ency/article/003827.htm, accessed July 6, 2026).

Serial No. 98098739
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activity.9 CT 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.”11 Applicant 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.”12 Applicant’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
9 See June 4, 2025 Request for Reconsideration at TSDR 26 (explaining that PET scans detect
glucose utilization which shows the intensity of cellular and tissue activity, which is greatly
increased in rapidly dividing cancer cells).
10 See id.
11 Id.
12 6 TTABVUE 10.
13 June 4, 2025 Request for Reconsideration at TSDR 26.
14 July 24, 2023 Specimen of Use.

Serial No. 98098739
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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,’”15 and thus these goods are “potentially legally identical.”16 In
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.”17 Finally, the Examining
Attorney argues that third-party websites of record from Philips, Siemens, Canon,
15 8 TTABVUE 7.
16 Id. at 6.
17 Id. at 7.

Serial No. 98098739
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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
18 Id. at 7-8 (discussing similarity of goods).
19 6 TTABVUE 9.

Serial No. 98098739
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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).20 That 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.21 We 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
20 See, e.g., December 5, 2024 Final Office Action at TSDR 23 (CT for cardiology), 26 (CT for
cardiology and oncology), 37-41 (PET-CT for oncology and cardiology), 59-62 (CT for
cardiology), 62 (CT); see also June 4, 2025 Request for Reconsideration at TSDR 29 (video
title: “How Radiopharmaceuticals Help Diagnose Cancer and Cardiovascular Disease”).
21 See Section I(D), infra.

Serial No. 98098739
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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,22 Siemens Healthineers USA,23 Toshiba America
Medical Systems, Inc.,24 and United Imaging25 sell 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
22 December 5, 2024 Final Office Action at TSDR 7-19.
23 Id. at TSDR 20-46.
24 The evidence at December 5, 2024 Final Office Action at TSDR 47-56 was submitted to
show that Canon Medical Systems produced both CT and PET/CT machines, but the evidence
regarding PET-CT machines relates to Toshiba America Medical Systems, Inc., not Canon.
Id. at TSDR 48-49. Nonetheless, these two pages are probative because it shows that Toshiba
manufactured both PET-CT machines and CT machines. Id.
25 Id. at TSDR 57-70.
26 Id. at TSDR 7, 35, 58; June 4, 2025 Request for Reconsideration at TSDR 63; October 21,
2024 Office Action Response at TSDR 72.

Serial No. 98098739
SIEMENS
PHIUPS
SIEMENS Healthineers
OmniTom Elite
Neurekogica
O
O
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Serial No. 98098739
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Applicant argues that PET-CT machines and CT machines are not related because
they are placed in different departments or facilities.27 Applicant 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.28 Nor 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
27 6 TTABVUE 10-11.
28 See June 4, 2025 Request for Reconsideration at TSDR 42-43.
29 Id. at TSDR 44-56. We mention that Applicant cites generally to this entire twelve-page
highly complex scientific paper rather than specific text it wants us to consider. See
6 TTABVUE 11. However, the abstract makes clear that the purpose of the article was to
derive and validate algorithms to manage patient scheduling in nuclear medicine clinics.
Moreover, this paper states: “While this paper focuses on nuclear medicine, we believe that
results can be applied to many other similar health care settings that may not be as complex
as nuclear medicine. For example, our results can be applied to diagnostic imaging areas
such as magnetic resonance imaging (MRI) and computed axial tomography (CT Scan).” June
4, 2025 Request for Reconsideration at TSDR 46.

Serial No. 98098739
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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.”31 Further,
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.
30 June 4, 2025 Request for Reconsideration at TSDR 26.
31 6 TTABVUE 11 (citing June 4, 2025 Request for Reconsideration at TSDR 57-58).
32 Id. (citing June 4, 2025 Request for Reconsideration at TSDR 59-61).

Serial No. 98098739
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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.”33 Applicant’s arguments based on its and Registrant’s actual products
(calling them “neurological transportable head scanners”)34 is 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
33 Id. at 7-8.
34 Id. at 7.

Serial No. 98098739
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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.36 Applicant 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
35 See, e.g., December 5, 2024 Final Office Action at TSDR 28, 35.
36 6 TTABVUE 9.

Serial No. 98098739
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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, 17.37 The 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.”38 Trivascular
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
37 The Toshiba decision distinguished Digirad, finding that case “does not establish a per se
rule that non-identical, expensive medical products are unrelated. In the present case, the
record supports a conclusion that the goods are related.” Toshiba, 2009 TTAB LEXIS 447, at
*24-25.
38 See 6 TTABVUE 12-13. Although a non-precedential case may be cited and considered for
whatever persuasive value it may have, it is not binding on the Board and we generally do
not discuss such cases in decisions. See In re Tapio GmbH, No. 87941532, 2020 TTAB LEXIS
483, at *26 n.30 (“Generally, the practice of citing non-precedential opinions is not
encouraged”) (citation omitted). We do so here, in our discretion.

Serial No. 98098739
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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.”39 Entities 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
39 8 TTABVUE 8.

Serial No. 98098739
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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.”40 The 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
40 6 TTABVUE 16-17 (discussing October 21, 2024 Response to Office Action at TSDR 20-21,
73, 75, 77); 9 TTABVUE 5-6. It is unclear whether Applicant presented this argument under
the third and/or fourth DuPont factors; we consider it here under both.
41 October 21, 2024 Office Action Response at TSDR 72, 76; December 5, 2024 Final Office
Action at TSDR 7, 43.

Serial No. 98098739

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Serial No. 98098739
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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….”42 In 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.”43 As an initial matter, there is no evidence that
technicians play any part in purchasing decisions. Moreover, the proffered evidence
42 6 TTABVUE 16.
43 June 4, 2025 Request for Reconsideration at TSDR 36.

Serial No. 98098739
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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,44 we 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
44 Id. at TSDR 30 (“Radiologists and nuclear medicine specialists interpret the obtained
images [from a PET scan] to diagnose, locate abnormal cells and extent of diseases,
facilitating accurate diagnosis.”); see also id. at TSDR 45 (“Nuclear medicine is a sub-specialty
of radiology that provides highly specialized services by means of new technology for
diagnosis and treatment of patients.”).

Serial No. 98098739
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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.”45 Also, 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
45 6 TTABVUE 14.
46 Id. at 16-17 (discussing October 21, 2024 Response to Office Action at TSDR 20-21, 73, 75,
77); 9 TTABVUE 5-6.
47 6 TTABVUE 15. The evidence of record contains information about the production,
handling, and use of radiopharmaceuticals used in connection with PET-CT machines,
including safety practices. See, e.g., June 4, 2025 Request for Reconsideration at TSDR 28-34.
48 June 4, 2025 Request for Reconsideration at TSDR 46.

Serial No. 98098739
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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,
49 Id. at TSDR 58.

Serial No. 98098739
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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).

Serial No. 98098739
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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.”51 Purchasers 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,”53 but asserts
50 6 TTABVUE 19-22; 9 TTABVUE 3-5.
51 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com/dictionary/omni, accessed July 6,
2026).
52 6 TTABVUE 19, 22.
53 9 TTABVUE 4.

Serial No. 98098739
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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
54 9 TTABVUE 4.
55 See June 4, 2025 Request for Reconsideration at TSDR 77-112; October 21, 2024 Office
Action at TSDR 25-59 (registrations printed October 17, 2024). We note that Applicant
attached updated records of third-party registrations (printed on December 17, 2025) to its
brief. 6 TTABVUE 24-59. The record in an appeal should be complete prior to the filing of the
appeal and evidence should not be filed with the Board after the filing of a notice of appeal.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see also TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 1207.01 (June 2026). Accordingly, the new
evidence submitted with Applicant’s Appeal Brief is untimely and has not been considered.
Nonetheless, after registrations have properly been made of record, the Board may take
judicial notice of changes in their status, and we have done so here. Harry Winston, Inc. v.
Bruce Winston Gem Corp., No. 91153147, 2014 TTAB LEXIS 284, at *11 n.19 (taking judicial
notice of status of registrations properly introduced into the record).

Serial No. 98098739
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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.

Serial No. 98098739
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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).
56 The third-party registrations for UROSKOP OMNIA and UROSKOP OMNIA MAX (Nos.
6 and 7 above) include the translation statement: “The English translation of ‘OMNIA’ in the
mark is “ALL.’”

Serial No. 98098739
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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.”57 Canon 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
57 December 5, 2024 Final Office Action at TSDR 49.
58 Id. at TSDR 56.

Serial No. 98098739
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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,59 and Applicant acknowledges,60 the “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.
59 8 TTABVUE 5-6.
60 9 TTABVUE 3-4.

Serial No. 98098739
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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).

Serial No. 98098739
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“[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.”61 Applicant 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.62 Applicant 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
61 6 TTABVUE 17 (original emphasis in underlined text).
62 Id. at 18 (original emphasis in bold and underlined text).

Serial No. 98098739
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parties’ marks are sufficient to dispel consumer confusion.”63 Applicant 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.”64 Finally, 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 &
63 Id. This appears to be a misspelling of “AHM-NI-TOME.”
64 9 TTABVUE 3.
65 6 TTABVUE 22-23.

Serial No. 98098739
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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.66 Although 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.67 The 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
66 Id. at 18.
67 See 8 TTABVUE 5.

Serial No. 98098739
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not convinced by Applicant’s argument regarding the alleged different pronunciation
of the marks.68 Inasmuch 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.69 Unlike
infringement cases, the Board considers only the drawings of the marks in the
68 6 TTABVUE 18.
69 See id. at 22-23.

Serial No. 98098739
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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
70 9 TTABVUE 6. We note that new arguments in a reply brief normally are not considered
because the Examining Attorney does not have an opportunity to respond. Nonetheless, in
the interest of completeness, we have exercised our discretion to consider it.

Serial No. 98098739
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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

Serial No. 98098739
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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).