TST Biomedical Electronics Co., Ltd.

This Opinion is Not a
Precedent of the TTAB
Mailed: December 3, 2025
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re TST Biomedical Electronics Co., ltd.
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Serial No. 98033208
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John J. O’Malley and Carey Kulp of Volpe Koenig,
for TST Biomedical Electronics Co., Ltd.
Matthew Digan, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____
Before Heasley, Dunn, and Cohen,
Administrative Trademark Judges.
Opinion by Dunn, Administrative Trademark Judge:
TST Biomedical Electronics Co., Ltd. (Applicant) seeks registration on the
Principal Register of the mark IPRO-LAB (in standard characters) for the goods listed
below:
Diagnostic preparations for medical purposes; chemical preparations for
medical purposes, namely, for in vitro diagnostic use; diagnostic biomarker
reagents for medical purposes; immunoassay reagents for medical use; Medical
diagnostic reagents for pregnancy purposes; Medical diagnostic reagents for
hepatitis; chemical reagents for medical purposes; diagnostic reagents for

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medical purposes; reagent paper for medical purposes, in International Class
5.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the mark PRO-LAB (in
standard characters) for the goods listed below on the Supplemental Register as to be
likely to cause confusion, to cause mistake, or to deceive.
Reagent paper for medical purposes; Reagents and media for medical and
veterinary diagnostic purposes; Reagents for medical use; Clinical medical
reagents; Diagnostic kits comprised of medical diagnostic reagents and assays
for testing of bodily fluids for use in disease detection, namely, COVID-19;
Drug testing kits comprised of medical diagnostic reagents and assays for
testing body fluids; Drug testing kits comprised of medical diagnostic reagents
and assays that test for the presence of drugs; Medical diagnostic reagents;
Medical diagnostic reagents and assays for testing body fluids for
microorganisms; Medical diagnostic reagents and assays for testing of body
fluids; Nucleic acid sequences and chemical reagents for medical and
veterinary purposes, in International Class 5.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
1 Application Serial No. 98033208 filed June 8, 2023 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the
mark in commerce.
The application originally included goods and services in International Classes 10, 42, and
44. Pursuant to Applicant’s request to divide, a child application (App. Serial No. 98975954)
was created with those classes so the subject application retains the only class to which the
refusal pertains. May 29, 2025 Office Action TSDR 1-2.
2 Registration No. 6822794 issued August 16, 2022. The registration also includes goods in
International Class 1 and 9, but these goods were not cited as a basis for the refusal.

Serial No. 98033208
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I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that “[c]onsists
of or comprises a mark which so resembles a mark registered in the Patent and
Trademark Office … as to be likely, when used on or in connection with the goods of
the applicant, to cause confusion, or to cause mistake, or to deceive ….”15 U.S.C.
§ 1052(d). Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on likelihood of confusion. In re E.I. Du Pont de
Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (DuPont). 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). Varying weights may be assigned to each DuPont
factor depending on the evidence presented. See Citigroup Inc. v. Cap. City Bank Grp.,
Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and of the goods or services (DuPont factors one and two). See In re
i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017). These two factors, together
with the third, fourth, and fifth DuPont factors, are addressed in this decision.
A. Similarity or Dissimilarity and Nature of the Goods, Channels of
Trade and Classes of Purchasers, and Conditions of Sale
We address the factors assessing the similarity or dissimilarity of the parties’
goods, trade channels and purchasers, and conditions of purchase. DuPont, 476 F.2d
at 1361. With each factor, our determination must be based not on evidence of current
use by Applicant, but on the identification of goods in the subject application, which

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would define the scope of any registration that would ultimately issue. Stone Lion
Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1323-24 (Fed. Cir. 2014).
We turn first to the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration.” Detroit
Athletic Co., 903 F.3d at 1307 (quoting DuPont, 476 F.2d at 1361). It is sufficient for
finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods within a particular class in the
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336
(CCPA 1981).
Here, the goods of the subject application and the cited registration involve
multiple overlapping goods. More specifically, the application and registration use
the identical wording “reagent paper for medical purposes.” In addition, we find that
the registration’s broad wording “reagents for medical use,” “clinical medical
reagents,” and “medical diagnostic reagents,” encompass all goods of the type
described, including the application’s more narrow “diagnostic biomarker reagents
for medical purposes,” “immunoassay reagents for medical use,” “medical diagnostic
reagents for pregnancy purposes,” “medical diagnostic reagents for hepatitis,”
“chemical reagents for medical purposes,” and “diagnostic reagents for medical
purposes,” making the goods legally identical. See In re Solid State Design Inc., No.
87269041, 2018 TTAB LEXIS 1, *16 (“The identification leaves the goods broadly
described as ‘[d]ownloadable mobile applications for mobile phones and mobile
electronic devices,’ and we must deem those goods to include all ‘goods of the nature

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and type described therein,’[] which encompass Applicant’s more specifically
identified type of ‘[c]omputer application software for mobile phones.’”) (internal
citation omitted).
The focus in an ex parte appeal on assessing the goods as listed in the application
and registration differs from the focus in a district court infringement case on
assessing the goods in actual use by the parties. See Astra Pharm. Prods. v. Beckman
Instruments, Inc., 718 F2d 1201, 1205 (1st Cir. 1983) (“The Beckman analyzer is a
massive instrument, weighing from 350 lbs. to 550 lbs., depending upon the model. It
is used only in the chemistry laboratories of hospitals or research institutions, and is
not employed to analyze or measure any of Astra’s drugs. … Astra’s products, on the
other hand, consist mainly of local anesthetics, cardiovascular medicines, and
prefilled syringes.”). Because the assessment is different, we disagree with
Applicant’s argument3 that the Astra court’s finding, that the parties’ respective
goods as actually used by the parties were insufficiently related to create a likelihood
of confusion, should be followed here. See In re FCA US LLC, 2018 TTAB LEXIS 116,
*12 n.18 (“In innumerable cases, the Board hears arguments about how the parties’
actual goods, services, customers, trade channels, and conditions of sale are narrower
or different from the goods and services identified in the applications and
registrations. But as stated in equally innumerable decisions of our primary
reviewing court, we may consider any such restrictions only if they are included in
the identification of goods or services.”), aff’d 778 Fed. Appx. 962 (Fed. Cir. 2019).
3 7 TTABVUE 6-7.

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The third and fourth DuPont factors assess “the similarity or dissimilarity of
established, likely-to-continue trade channels” and “the conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
The relevant purchaser for Applicant’s and Registrant’s goods is an individual, group,
or business interested in medical testing and/or diagnosis. Where, as here, the goods
are identical in-part, we presume the channels of trade and classes of purchasers are
the same for such goods. Stone Lion, 746 F3d at 1323.
As to the conditions of purchase, “[p]urchaser sophistication may tend to minimize
likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend
to have the opposite effect.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005). In view of the inherent nature
of the respective goods for testing and diagnosis for medical purposes, we find
Applicant’s and Registrant’s potential or actual consumers will exercise a higher
degree of purchasing care than for general consumer products. Purchasers of medical
equipment or diagnostic services are more likely to distinguish between marks and
goods than is the general consuming public. See, e.g., In re N.A.D., 754 F.2d 996, 999-
1000 (Fed. Cir. 1985) (“The record shows the machines to be elaborate, sizeable,
complex pieces of technical apparatus of the kind which would be purchased only in
consultation with an anesthesiologist or someone with equivalent technical
knowledge. In other words, only very sophisticated purchasers are here involved who
would buy with great care and unquestionably know the source of the goods.”).

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On the other hand, there is no evidence of record regarding the pricing or
complexity of Applicant’s or Registrant’s goods, and there are no restrictions in the
respective identifications to medical professionals, scientific researchers or laboratory
personnel. That is, over-the-counter medical testing reagents (such as for COVID or
illegal substances) are available to the general consumer and encompassed by
Applicant’s description of “diagnostic reagents for medical purposes.” While we can
agree with Applicant’s general statement that the medical industry is “heavily
regulated, highly technical, and commercially competitive field,”4 Applicant’s goods
are not restricted to this field. When the goods or services could appeal to
sophisticated and unsophisticated purchasers, “Board precedent requires the decision
to be based ‘on the least sophisticated potential purchasers.’” Stone Lion Cap.
Partners, 746 F.3d at 1325.
B. Strength or Weakness of the Mark of the Cited Registration
Because the strength or weakness of the cited mark PRO-LAB (in standard
characters) informs our comparison of the marks, we address Applicant’s argument
that the cited mark is weak and entitled to a narrow scope of enforcement.5 “Two of
the DuPont factors (the fifth and sixth) consider strength.” Spireon, Inc. v. Flex Ltd.,
71 F.4th 1355, 1362 (Fed. Cir. 2023). The fifth DuPont factor concerns “[t]he fame of
the prior mark (sales, advertising, length of use),” whereas the sixth DuPont factor
allows Applicant to contract that scope of protection by adducing evidence of "[t]he
4 4 TTABVUE 10.
5 4 TTABVUE 13-14.

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number and nature of similar marks in use on similar goods.” DuPont, 476 F.2d at
1361.
Here, as in most ex parte cases, the record includes no evidence of any fame of the
registered mark. See In re i.am.symbolic, LLC, 2015 TTAB LEXIS 369, at *22, aff'd,
866 F.3d 1315 (Fed. Cir. 2017) (“Because of the nature of the evidence required to
establish the fame of a registered mark, the Board normally does not expect the
Examining Attorney to submit evidence as to the fame of the cited mark in an ex
parte proceeding.”). Moreover, Applicant submitted no evidence of third-party use
under DuPont factor six. Applicant’s argument that the cited mark is weak is based
on the cited registration issuing on the Supplemental Register, which indicates that
at the time of registration, the mark was not inherently distinctive. See Quaker State
Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 1299 (CCPA 1972).
However, the law is clear that a mark registered on the Supplemental Register
may be cited as a bar to registration under Trademark Act Section 2(d). In re
Morinaga Nyugyo Kabushiki Kaisha, 2016 TTAB LEXIS 448, at *16. “[T]he owner of
a Supplemental Register registration can rely on the Office to cite its registered mark
against any other applied-for mark that the Office deems confusingly similar.” TPI
Holdings, Inc. v. TrailerTrader.com, LLC, 2018 TTAB LEXIS 121, at 15 n. 30. “It is
not material whether or not registration on the Supplemental Register implies that
there is a degree of descriptiveness to that mark, as appellant argues. Such
registration may be cited under section 2(d) in a determination of likelihood of

Serial No. 98033208
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confusion, an inquiry separate from that of descriptiveness.” In re Research &
Trading Corp., 793 F.2d 1276, 1278 (Fed. Cir. 1986).
The mark PRO-LAB combines the common terms PRO, a recognized abbreviation
of “professional” and LAB, a recognized abbreviation of “laboratory.”6 Where a mark
comprises a dictionary term, the definition generally supplies its connotation. Stratus
Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020)
(“The Board relied on dictionary definitions of the terms ‘stratus’ and ‘strata’ to
evaluate similarities in the connotation of each mark.”). As applied to the medical
diagnosis and testing goods of Registrant, the relevant public would perceive the term
as merely descriptive. The presence of the hyphen in the mark PRO-LAB does not
alter our finding. See Peterson v. Awshucks SC, LLC, No. 92066957, 2020 TTAB
LEXIS 520, at *18 (“Punctuation, such as quotation marks, hyphens, periods,
commas, and exclamation marks, generally does not significantly alter the
commercial impression of the mark.”); In re Mecca Grade Growers, LLC, No.
86358219, 2018 TTAB LEXIS 64, at *17 (“The inclusion of a hyphen in Applicant’s
mark [MECHANICALLY FLOOR-MALTED] has no effect on the mere
descriptiveness of the mark as a whole.”).
Because the registered mark PRO-LAB is merely descriptive and issued on the
Supplemental Register, the scope of protection is circumscribed.
6 Merriam-Webster.com Dictionary, https://www.merriam-webster.com/dictionary/pro and
https://www.merriam-webster.com/dictionary/lab, both accessed Dec. 1, 2025. The Board may
take judicial notice of dictionary definitions, including online dictionaries that exist in printed
format or have regular fixed editions. In re Cordua Rests. LP, No. 85214191, 2014 TTAB
LEXIS 94, *6 n.4, aff’d, 823 F.3d 594 (Fed. Cir. 2016).

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C. Similarity or Dissimilarity of the Marks
We now turn to the first DuPont factor, which assesses the similarity or
dissimilarity of Applicant’s and Registrant’s marks. DuPont, 476 F.2d at 1361. We
analyze the marks in their entireties, considering their appearance, sound, meaning
and commercial impression. Id. See also Detroit Athletic, 903 F.3d at 1303. The test
is not whether the marks can be distinguished in a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods offered under the respective
marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 1053 (Fed. Cir. 2012). “The proper perspective on which the
analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, Ser. No.
85916778, 2018 TTAB LEXIS 281, at *11 (TTAB 2018).
While there is no explicit rule that we must find marks similar where an
applicant’s mark incorporates the entirety of the registrant’s mark, the fact that it
does typically increases the similarity between the two. See, e.g.,China Healthways
Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 1341 (Fed. Cir. 2007) (applicant’s mark
CHI PLUS is similar to opposer’s mark CHI both for electric massagers). When
considering the marks, we keep in mind that, where, as here, “the goods at issue are
identical, the degree of similarity necessary to support a conclusion of likely confusion
declines.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting
In re Viterra, 671 F.3d 1358, 1363 (Fed. Cir. 2012)).

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Applicant seeks to register the mark IPRO-LAB, and Registrant’s mark is PRO-
LAB. The marks only differ in the addition of the prefatory letter I in Applicant’s
mark. Further, PRO-LAB is the entirety of the mark shown in the cited registration
and is subsumed in its entirety by Applicant’s IPRO-LAB mark. Based on the
identical six letter hyphenated literal element PRO-LAB, the marks are visually and
aurally similar, and have a similar connotation.
With respect to the impact of the prefatory letter I, the Examining Attorney
submitted a Wikipedia page on “Internet-related prefixes” which states in part:7
Internet-related prefixes such as e-, i-, cyber-, info-, techno- and net- are added
to a wide range of existing words to describe new, Internet- or computer-related
flavors of existing concepts, often electronic products and services that already
have a non-electronic counterpart.
***
i-, standing for internet, was used as early as 1994 by iVillage, an internet
community site by and for women. More recent examples include the BBC's
iPlayer, and Google's former iGoogle service.
In addition, the record includes the transcript of an October 25, 2011 NPR story,
excerpted below:8
Steve, Myself and i: The Big Story of a Little Prefix by Geoff Nunberg
In the meantime, the Internet had come of age, chewing up a succession of
prefixes along the way. First there was cyber-, which conjured up the opening
sequence of Star Trek …
Then came the Internet boom and the prefix e-. …
After a while, that prefix was getting old, too, as the boundaries between online
and offline got blurry: Where do the real banks and newspapers leave off and
their e-clones begin? And then there was i-. The prefix had actually been
around for several years before Apple adopted it for those gumdrop-colored
iMacs that Jobs introduced in 1999. According to Apple's ad agency, i- was
7 January 11, 2025 Office Action TSDR 8-9.
8 Id. at 13-16.

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meant to stand for “internet” with overtones of “individual” and probably the
first-person pronoun as well. …
It isn't just about computer science anymore, either. That isn’t where you go to
find out how technology changes people's lives, and where it fails them, or how
to make it less intrusive and more humane. Those are the questions people are
taking up at the Schools of Information that have sprung up at research
universities like UCLA, Toronto and Washington - iSchools, for short. It's a
different i-, but it too stands in for a connection between technology and the
social world.
Based on this evidence, the Examining Attorney contends that the prefatory letter
I in Applicant’s mark will connote the descriptive term “Internet” and convey that the
PRO-LAB goods are accessible through the Internet.9 Applicant does not dispute this
connotation, but argues, without citing to any evidence, that the letter I may also
connote association with innovation, individuality, and digital tools, and this is
enough to distinguish the marks.10 Aside from attorney argument, which is “‘no
substitute for evidence,’” Cai, 901 F.3d at 1371 (quotation omitted), there is nothing
to suggest that the letter I would have a different connotation or that IPRO-LAB will
have a different meaning or connotation from PRO-LAB as applied to the identified
goods in the application and the cited registration.
We find the prefatory letter I will be perceived as describing that the PRO-LAB
testing and diagnostic goods now are aided by Internet tools. See Heritage All. v. Am.
Pol’y Roundtable, 133 F.4th 1063, 1068 (Fed. Cir. 2025) (“As to the components [of
the mark IVOTERGUIDE and IVOTERGUIDE.COM]: The Board had, and cited,
substantial-evidence support for its determination that the prefix ‘I’ generally refers
9 6 TABVUE 7-8.
10 4 TTABVUE 12-13.

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to something Internet-based.”); RxD Media, LLC v. IP Application Dev. LLC, 2018
TTAB LEXIS 37, at * 41 (“The ‘I’ prefix means Internet-enabled or accessible and the
word ‘Pad’ refers to a notepad for writing notes.”); In re Zanova, Inc., 2001 TTAB
LEXIS 340, at *16-17 (“When we consider the possible significance of ‘I’ in ITOOL to
prospective purchasers of applicant's goods or services, we find that they will readily
accept ‘I’ as meaning ‘Internet,’ and the NEXIS references applicant has
distinguished do not suggest otherwise.”).
D. Balancing the Factors
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. As discussed, no evidence was submitted with respect to DuPont
factor six, and it is neutral. While DuPont factors four and five weigh against a
finding of likelihood of confusion, we find they are greatly outweighed by DuPont
factors one, two and three, which weigh heavily in favor of a finding of likelihood of
confusion. In other words, notwithstanding the conceptual weakness of the common
term PRO-LAB as applied to medical testing and diagnostic goods, and the somewhat
higher degree of care exercised by customers in purchasing such goods, because
Applicant’s mark IPRO-LAB and the registered mark PRO-LAB are applied to
identical goods which are presumed to travel in identical channels of trade to
identical consumers, the addition of the prefatory letter I in Applicant’s mark does
not distinguish the marks, but connotes goods aided by Internet tools.

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When we balance the DuPont factors, we conclude that Applicant’s IPRO-LAB
mark is likely to create confusion with the registered mark PRO-LAB. 15 U.S.C.
§ 1052(d).
II. Decision
The refusal to register Applicant’s mark is affirmed.