The opinion
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THIS DISPOSITION UNITED STATES DEPARTMENT OF COMMERCE
IS NOT CITABLE AS PRECEDENT Patent and Trademark Office
Trademark Trial and Appeal Board
OF THE T.T.A.B. 2900 Crystal Drive
Arlington, Virginia 22202-3513
HRW
j Opposition No. 88,432
MAILED Trimedyne, Inc.
IDEC 4 © 1997 v.
PAT. & TM OFFICE Myriadlase, Inc.
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
By the Board:
Myriadlase, Inc. filed an intent-to-use application for
registration of the mark SIDEFIRE for a “surgical laser
delivery system consisting essentially of optical fibers,
connectors, operating tips, and parts and fittings therefor,
sold as a unit for use with medical lasers.” Trimedyne,
Inc. filed its opposition to the application, alleging that
since prior to December 6, 1991 (the filing date of the
application), it has been engaged in the development,
promotion and sale of fiber optic surgical laser probes for
use in medical procedures under the mark SIDEFIRE; that
applicant’s goods are virtually the same as those with which
opposer uses its mark; and that if applicant applies the
1 ser. No. 74/227,840.
: ‘=< Opposition No. P.
mark SIDEFIRE to its goods, there would be a likelihood of
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confusion.
In its answer, applicant denied the salient allegations
of the notice of opposition.
Opposer has filed a motion for summary judgment,
stating that the only issue in this proceeding is priority
of use and contending that no genuine issues remain as to
the fact that opposer used its mark SIDEFIRE more than six
months prior to applicant’s constructive use date for the
mark SIDEFIRE for the same goods. Opposer claims a use date
of at least as early as May 17, 1991, compared to
applicant’s filing date of December 6, 1991. Thus, opposer
maintains that it is entitled to judgment in its favor, as a
matter of law.
Opposer has submitted the affidavit of Marvin P. Loeb,
Chairman and Chief Executive Officer of opposer, in support
of its claim of priority, wherein the following activities
of opposer in connection with the SIDEFIRE mark prior to
December 6, 1991 are described:
(1) On or about April 1, 1991, Loeb conceived of the mark
SIDEFIRE for use in connection with opposer’s new fiber-
optic laser probes that direct the laser beam at a 90
degree angle to the side;
(2) On or about May 17, 1991, opposer shipped a laser
device under the mark SIDEFIRE to the Harbor-UCLA
Medical Center for use in cadaver tissue or animal
testing (a copy of the invoice for the SIDEFIRE device
listing a price of $10.00 is attached)’;
? While affiant describes this transaction as a sale, it will
later become apparent that opposer is not entitled to rely upon
the shipment as such.
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Opposition No. ,
(3) On May 22, 1991, Loeb wrote to Mr. Uchida of Nihon
Kohden of Tokyo, Japan “promoting” the SIDEFIRE laser
needle (a copy of this letter is attached wherein Loeb
states that he is enclosing a prototype of the SIDEFIRE
needle and asking Uchida to let him know what the
neurologists at Nihon Kohden thought of it);
(4) On or about July 29, 1991, Loeb sent a letter to Mr.
Sasso of Biomet, Inc.(a manufacturer and distributor of
medical products) for the purposes, inter alia, of
“promoting” the SIDEFIRE devices and of forwarding
copies of an updated distribution and supply agreement.
(A copy of the letter has been submitted). This was
followed by a second letter on September 4, 1991 in
which it is mentioned that patent applications were
being prepared for the SIDEFIRE needle;
(5) On August 8-9, 1991, a conference was held between
employees of James Capel Incorporated, investment
bankers, and employees of opposer, as part of the
production of a private placement memoranda for raising
additional capital, at which the SIDEFIRE products were
discussed. (A copy of the agenda is provided wherein
“Sidefire” products are listed);
(6) In October 1991, an offering of stock was made and a
confidential private placement memorandum dated October
1991 was distributed to at least 200 potential investors
in which references are made to the SIDEFIRE products.
(A copy of the 33 page memorandum has been submitted
with references to SIDEFIRE products on pages 2 and 5,
the latter being under a heading of “Near Term R&D
Projects” and in listings on pages 19 and 20 of
opposer’s disposable products and devices);
(7) On or about November 19, 1991, opposer filed a 510(k)
application with the FDA covering the “sidefiring” laser
devices, which was approved on or about January 23,
1992;
(8) On or about November 29, 1991 opposer filed a 10-K form
with the Securities and Exchange Commission, which
became publicly available as of November 29, 1991, in
which reference is made to the SIDEFIRE lateral or
“sidefiring” fiber-optic devices. ( A copy of the 10-K
form has been submitted, wherein a reference is found on
page 6 to the fact that opposer was “also developing
proprietary lateral or side firing optical fibers
(Sidefire™Fibers)”).
The remainder of the evidence introduced by the Loeb
affidavit is directed to use of the SIDEFIRE mark in
connection with the laser delivery devices since December 6,
“
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Opposition No @...
1991, including inclusion in a price list effective January
1, 1992 and issuance of a press release on or about February
13, 1992 with respect to FDA approval of the SIDEFIRE laser
devices.
In the corroborating affidavit of George Kopchok, the
Director of the Laser Research Laboratory of Research &
Education Institute at Harbor-UCLA Medical Center, he
states that he has been testing new surgical laser probes
for Trimedyne for six years and on May 17, 1991 Trimedyne
shipped a new laser probe to him for testing which was
identified on the invoice as the SIDEFIRE probe.
In the corroborating declaration of Hope Sherwood,
Marketing Director of opposer, she states that the purpose
of the communication by Loeb to Nihon Kohden was to
investigate the possibility of Nihon Kohden acting as a
foreign distributor for opposer’s SIDEFIRE products; that at
the time Loeb’s letters were written to Biomet, Inc., the
two companies were considering entering into a partnership
involving the distribution and supply of Biomet and
Trimedyne products; and that on or about February 21, 1992
she authored a memorandum to opposer’s marketing
representatives indicating that the SIDEFIRE surgical laser
probes had recently received FDA approval. The remainder of
the declaration is directed to subsequent promotion and
sales of the SIDEFIRE devices.
Opposition No @..
Thus, opposer argues that Harbor-UCLA Medical Center,
Nihon Kohden, and Biomet, Inc. all represent appropriate
segments of the public, the first being a consumer of the
SIDEFIRE devices and the latter two being distributors of
medical products. Opposer further argues that the
communications with potential investors, the SEC and the FDA
constitute additional evidence of the open use of the
SIDEFIRE mark prior to applicant’s filing date.
Applicant, in response, has filed its opposition to
opposer’s motion and its cross-motion for summary judgment.
Applicant states that while there is no genuine issue of
material fact in this opposition, it is applicant that has
priority based on the filing date of its intent-to-use
application.
Applicant argues that the “pre-sales activities” of
opposer fail to constitute sufficient evidence to establish
a right of priority, in that none of opposer’s usages of the
mark SIDEFIRE prior to applicant’s filing date involves
public use of the mark sufficient to create an association
of the mark with the goods of opposer in the minds of the
consuming public. Instead, contends applicant, the
documents presented show private communications with
business associates and/or potential distributors, a private
meeting with investment bankers, a private document
distributed to potential investors, and a 10-K form which,
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Opposition No @..
although publicly available, has not been demonstrated to
have been viewed by members of the consuming public.
Insofar as the invoice of the prototype sent to Kopchok is
concerned, applicant argues that this was not a sale, but
rather a shipment for testing of the device by a business
associate.* The true consumers of opposer’s goods,
according to applicant, are doctors and hospitals, and
applicant has submitted the declaration of H. A. Lawhon,
President of applicant, to this effect.
Applicant also contests the sufficiency of the Loeb
affidavit, and has concurrently filed a motion to strike
portions thereof, on the basis that certain statements have
been made “upon information and belief”, rather than
personal knowledge, and thus are inadmissible under FRCP
5Sé(e). In response, opposer has submitted a supplemental
declaration of Loeb, wherein all statements are made on
personal knowledge and additional statements are made to the
effect that:
(1) Opposer “sold” the SIDEFIRE laser to Harbor-UCLA
Medical Center, a customer of opposer, on May 17, 1991,
for $10.00, in the hope that additional products would
be purchased in the future;
3 In response to applicant’s motion for discovery under FRCP
56(f), opposer offered to stipulate that the May 17, 1997
transaction was not a sale, in return for applicant's withdrawal
of its motion for a continuance. While applicant did not accept
this offer, the Board stated in its order granting limited
discovery that opposer had acknowledged that this transaction
was not a sale and thus the deposition of Kopchok was
unnecessary.
‘ Opposition No @.. @
(2) As of May 22, 1991, Nihon Kohden was a potential
distributor of opposer’s SIDEFIRE products, and
distributors are customers of opposer;
(3) As of July 29, 1991, Biomet, Inc. was also a
potential distributor; and
(4) The products sent to Harbor-UCLA Medical Center and
Nihom Kohden both had labels identifying them as
SIDEFIRE devices.
In view of this supplemental declaration, we agree with
opposer that the objections voiced by applicant have become
moot, and thus the motion to strike is denied.
Opposer has also filed a response in opposition to
applicant’s cross-motion and in support of its motion.
Opposer points out that under Section 7(c) (1) of the
Trademark Act (15 USC 1057(c) (1)) the filing of an intent-
to-use application does not establish priority over a person
who previously “has used the mark”. Opposer notes that
under this provision only “use” is required, not “use in
commerce” or use sufficient to create an association in the
mind of the consuming public between the mark and the goods.
Thus, it is opposer’s position that only a low threshold of
use 1s required of the prior user and opposer cites as
support therefor the interpretation given to Section 7(c) (1)
by the District Court in Redisar Ltd. v. Virgin Enterprises
Ltd., 33 USPQ2d 2020 (S.D.N.Y. 1995). In that case the
District Court held that the plaintiff’s filing of an
intent-to-use application for the mark VIRGIN for cola did
not preclude defendant, as a prior user of the mark,
ae
Opposition we.
although only on goods other than cola, from obtaining a
preliminary injunction against plaintiff.
The purpose of summary judgment is one of judicial
economy, to avoid a trial where no genuine issue of material
fact remains and additional evidence from that presented in
connection with the motion would not be reasonably expected
to change the result. See Pure Gold Inc. v. Syntex
(U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
In the present case, the parties have agreed that no genuine
issues of fact remain with respect to priority and that,
this being the controlling issue, the case is ripe for
decision.
In Shalom Children’s Wear Inc. v. In-Wear A/S, 26
USPQ2d 1516 (TTAB 1993), the Board considered the means for
establishing priority in order to predate the constructive
use date to which the filer of an intent-to-use application
is entitled under Section 7(c). The Board stated:
The 1988 amendments to the Trademark Act introduced
the concept of intent to use as the basis for an
application which would create constructive use as of
its filing date, contingent on registration of the
mark. These changes were not intended to alter the
other ways in which priority can be established. The
1987 United States Trademark Association Trademark
Review Commission Report and Recommendations, 77 TMR
375 at 398 (1989), the document that set the parameters
for many of the changes wrought by the Trademark Law
Revision Act, made it very clear that “The filing of an
intent-to-use or use-based application would not
constitute nationwide constructive use against anyone
who used a mark before the filing date... Questions of
priority and territorial rights involving prior users
should be decided under current law.” [Supra at 1519].
po. Me aces
Opposition No. P.
Thus, the opposer in the Shalom case was found to be
entitled to establish priority over applicant’s constructive
use date with use analogous to trademark use, which has long
been held sufficient use to establish priority, even though
it is not sufficient to provide a basis for an application
to register. The Board did not contemplate the adoption of
a lesser level of use for purposes of Section 7(c) (1), but
rather followed the intentions expressed in the legislative
history of the Trademark Law Revision Act that priority be
determined under the standards already in existence.
We find no reason to change this position and thus
reject any claim by opposer that a lower threshold of use
might be appropriate. Opposer’s pre-sales activities will
be measured under the present standards for use analogous to
trademark use. Furthermore, any contention by opposer that
opposer’s shipment of a prototype to Harbor-UCLA Medical
Center qualified as a sale, as opposed to a pre-sale
activity, must be rejected. Kopchok stated in his affidavit
that the device was submitted to him for testing, as he had
previously done for Trimedyne.* While the Medical Center
* Although opposer no longer argues that the shipment to Kopchok
should qualify as “use” on the basis of experimental testing, we
would note that this single shipment of one prototype would
clearly not fall within the catagory of “ongoing shipments of a
new drug [or device] to clinical investigators by a company
awaiting FDA approval”, as was set forth as an example of non-
typical, but acceptable “use in commerce” in the legislative
history of the Trademark Law Revision Act. See Senate Judiciary
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dpposition _@..
may well have been a potential customer, this transaction
prior to FDA approval for the token fee of $10 cannot be
termed a sale, as opposer itself offered to stipulate.
In its recent decision in T.A.B. Systems v. PacTel
Teletrac, 37 USPQ2d 1879 (Fed. Cir. 1996), our principal
reviewing court fully analyzed the types and extent of
activities necessary to demonstrate use of a term in the
Manner analogous to trademark use sufficient to establish
prior proprietary rights in the designation.” The Court
made it clear that the activities claimed to constitute
analogous use must have a substantial impact on the
purchasing public. The use must be open and public and must
be sufficient to result in actual perception by prospective
purchasers of the present or future availability of the
goods or services under the mark. Moreover, the use must be
directed to a “substantial portion” of the potential
consumers of the goods or services. Supra at 1882-3.
Applying these criteria to the present case, we find
that opposer has failed to demonstrate sufficient use of the
term SIDEFIRE in connection with its surgical laser probes
to establish use analogous to trademark use and, thus, to
preclude applicant’s reliance upon its constructive use date
Committee Report on S. 1883; Senate Report No. 100-515 (Sept.
15, 1988).
> While both parties have discussed standards set forth in prior
cases, we need not consider the same, in view of the more recent
developments in the law.
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Opposition No @..
under Section 7(c). The promotion of the SIDEFIRE to two
potential distributors, even if these two are viewed as
potential customers, can hardly be considered
use sufficient to make a substantial impact on the
purchasing public. The remainder of opposer’s pre-sale
activities prior to December 6, 1991 were directed to
potential investors in the company, not potential purchasers
of the SIDEFIRE devices.
Accordingly, opposer’s motion for summary judgment
based on use of the mark SIDEFIRE on surgical laser probes
prior to applicant’s filing date of an intent-to-use
application for the same mark for the same goods is denied.
Applicant’s cross-motion for summary judgment is granted.
The opposition is dismissed with prejudice. ®
(Kleen |
R. F. Cissel
LD Moke
G. D. Hohein
(.¢Uahtii-
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
° When applicant’s intent-to-use application is returned to
Examining Attorney after the filing of a statement of use, the
apparent applicability of a refusal under Section 2(e)(1), in
view of the frequent description by opposer of its device as a
“sidefiring” laser needle, should be considered.
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