Johnson & Johnson v. Stryker Corporation

UNITED STATES PATENT AND TRADEMARK OFFICE

This Decision is a Trademark Trial and Appeal Board

Precedent of the TTAB P.O. Box 1451

Alexandria, VA 22313-1451

BUO

Mailed: December 5, 2013

Opposition No. 91209134

Johnson & Johnson

v.

Stryker Corporation

Before Taylor, Mermelstein and Bergsman, Administrative

Trademark Judges.

By the Board:

Stryker Corporation (“applicant”) filed an application

to register the mark MICROFX, for use in connection with

“surgical instruments.”1 Johnson & Johnson (“opposer”) has

opposed applicant’s registration based upon an alleged

likelihood of confusion between applicant’s applied-for

mark and opposer’s registered mark MICROFIX for use with

“suture anchors.”2

Now before the Board is applicant’s motion, filed June

13, 2013, to amend its identification of goods. By the

1

Application Serial No. 85571434, filed March 16, 2012, on an

intent-to-use filing basis under Trademark Act Section 1(b), 15

U.S.C. § 1051(b).

2

Registration No. 3052207, issued January 31, 2006, from an

application filed February 17, 2004.

Opposition No. 91209134

proposed amendment, applicant seeks to change the

identification of goods to:

Surgical instruments, namely osteochondral drills,

drill guides, and curettes used to create

microfracture holes.

(for ease of reference, additions are underlined).

Applicant’s motion was filed without the consent of

opposer, and opposer objected to the proposed amendment.3

Opposer asserts that “the facts here ‘do not allow the

Board either to exercise its discretion to enter the

amendment now or to defer determination of the proposed

amendment until final decision.’” Opp. Br., p.1 (quoting

Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436

(TTAB 2007)). Opposer states that “[i]n the absence of an

unconditional election by Applicant to accept judgment with

respect to the broader range of goods, Opposer is entitled

to proceed with trial as to the goods as published.” Id.,

p.2 (emphasis in original). Applicant’s position is not

completely clear. While it says that it “has consented to

entry of judgment as to its broader recitation” Reply Br.,

p.3, it also states that if the Board does not grant its

motion, applicant should be allowed “the opportunity to try

3

Applicant has obtained consent to the amendment from Microflex

Corporation, which also opposed the application as published

(Opposition No. 91209129). That opposition is suspended pending

resolution of the motion to amend in this case, and applicant has

represented that Microflex will withdraw its opposition if the

amendment is entered. Motion Br., p.2.

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Opposition No. 91209134

its case as to both recitations,” with determination of the

proposed amendment deferred until final decision, citing

Trademark Rule 2.133 and TBMP § 514.03 (3d ed. rev.2 2013).

Id., p.4 (emphasis in original).

Before we address that potential ambiguity, we first

note that, inasmuch as the proposed amendment has been

brought prior to trial, the proposed amendment has been

timely filed, giving opposer fair notice and an opportunity

to contest the motion, as opposer has done. See Drive

Trademark Holdings, 83 USPQ2d at 1435. We also note that

the amendment is limiting in nature as required by

Trademark Rule 2.71(a).

Although the Board generally will defer determination

of an unconsented motion to amend the identification of

goods in a subject application until final decision, or

until the case is decided upon motion for summary judgment,

see Drive Trademark Holdings, 83 USPQ2d at 1435, the

circumstances presented here, as we explain below, allow

the Board to accept applicant’s proposed amendment

immediately, notwithstanding opposer’s objection. See

Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ

955, 963 (TTAB 1986).

In determining whether to accept a proposed amendment

to an identification that, while contested, is otherwise

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Opposition No. 91209134

acceptable, the Board looks to see whether the following

circumstances are present:

1) the proposed amendment must serve to limit the

broader identification of goods or services;

2) applicant must consent to the entry of judgment

on the grounds for opposition with respect to the

broader identification of goods or services

present at publication;

3) if the applicant wishes to avoid the possibility

of a res judicata effect by the entry of judgment

on the original identification, the applicant

must make a prima facie showing that the proposed

amendment serves to change the nature and

character of the goods or services or restrict

their channels of trade and customers so as to

introduce a substantially different issue for

trial; and

4) where required to support the basis of the

subject application, any specimens of record must

support the goods or services as amended;4 and

applicant must then introduce evidence during its

testimony period to prove use of its mark with

the remaining goods or services prior to the

relevant date as determined by the application’s

filing basis. See Drive Trademark Holdings, 83

USPQ2d at 1435; Giant Food, 229 USPQ at 964;

Int’l Harvester Co. v. Int’l Tel. & Tel. Corp.,

208 USPQ 940, 941 (TTAB 1980).

4

This concerns whether the mark is based on use in commerce, in

which case the relevant date is the filing date of the

application, or in the case of an intent-to-use application which

has been converted to a use-based application through an

amendment to allege use, the relevant date is the filing date of

the amendment to allege use. Because the subject application was

filed on an intent-to-use filing basis under Section 1(b) of the

Trademark Act, and no allegation of use has been filed, this

circumstance is not relevant to this case.

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Opposition No. 91209134

Because the first and third circumstances can be

presented more succinctly, the Board will address those

first.

The first circumstance is present because the proposed

amendment permissibly narrows the identification as it was

articulated at publication.

Skipping to the third circumstance, we find that too

is present because applicant’s proposed amendment narrows

the category of users by specifying the use of its goods in

osteochondral treatments. This has the effect of

restricting the channels of trade and prospective customers

of the goods so as to introduce a substantially different

issue for trial. See Int’l Harvester, 208 USPQ at 941

(applicant’s proposed amendment found to permissibly

restrict the scope of the goods to the extent that it

narrowed the category of users and, therefore, the function

for which the goods may normally be used). We disagree

with opposer’s assertion that “[t]he proposed amended

identification of goods is within the scope of the initial

identification of goods; thus, their general character has

not changed.” Opp. Br., p.2. The standard is not that the

goods themselves be changed so as to be outside the scope

of the goods identified at publication. Indeed, an

application may only be amended “to clarify or limit, but

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Opposition No. 91209134

not to broaden, the identification of goods and/or

services.” See In re Swen Sonic Corp., 21 USPQ2d 1794,

1795 (TTAB 1991). TMEP § 1402.06 (8th ed. rev.3 2013). We

cannot accept opposer’s interpretation of this factor, as

it would require that every unconsented amendment violate

the first circumstance in an attempt to satisfy the third.

We therefore find the third circumstance to be present.

Whether the second circumstance is present is the

principal question before the Board, as the gravamen of

opposer’s contention is that applicant has only

conditionally stated its willingness to accept judgment as

to the broader range of goods. Applicant’s statements

about its willingness to accept judgment are far from

clear. In its motion, applicant stated that “Applicant …

notes that it is willing to consent to entry of judgment on

the basis of its broader recitation, provided that

registration is granted as to the proposed narrower

recitation.” Motion, p.5 (emphasis added). Footnote four

of the motion further states that:

Applicant reserves the right to accept

registration based on the initial recitation,

however, depending on the Board's ruling. TBMP

§ 514.03 (stating, “[i]f . . . the Board

ultimately finds that the defendant is entitled

to registration even without the proposed

restriction, defendant will be allowed time to

indicate whether it still wishes to have the

restriction entered”).

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Opposition No. 91209134

Id. n.4.

However, applicant’s reply brief makes a seemingly

inconsistent statement with regard to entry of judgment as

to the broader scope of the goods, stating:

[f]or the avoidance of doubt, Applicant states

that it will consent to entry of judgment on the

basis of its broader recitation. But, if this

motion is not granted immediately, Applicant

respectfully requests the opportunity to try its

case as to both recitations in the manner

permitted by 37 C.F.R. § 2.133 and TBMP § 514.03.

App. Reply Br., p.4 (emphasis added). Applicant then

says this:

… should the Board instead permit Applicant's

proposed amendment at this time and [thereby]

allow resolution of the other opposition

proceeding …, Applicant consents to entry of

judgment as to its broader recitation

immediately.

Id. (emphasis added).

As we read it, applicant’s statement in its initial

motion papers appears to condition its acceptance of

judgment on the Board’s grant of registration,5 and in

footnote four of its motion faintly invokes the Board’s

authority under Section 18 of the Trademark Act, 15 U.S.C.

§ 1068, to determine whether a registration may be granted

5

We assume applicant meant that the condition was the Board’s

grant of judgment in applicant’s favor. The Board does not

grant/issue registrations, and even if applicant prevails in this

proceeding, it must still complete the application process by

filing an acceptable statement of use.

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Opposition No. 91209134

as to a broader identification or in the alternative an

identification with a proposed restriction. In contrast,

applicant’s reply brief conditions its acceptance of

judgment as to the broader scope of goods on the Board’s

acceptance of its proposed amended identification.

However, inasmuch as we cannot both accept applicant’s

reservation to be heard at trial on both its broader

identification and its proposed narrowed version, and

accept its immediate concession to judgment on the broader

identification, we must reconcile the inconsistency.

Given applicant’s statement in its reply brief that

its intention was to obviate any doubt, as well as the

clear expression of applicant’s desire to facilitate

resolution of the other opposition to the involved

application, we believe that the statements made in the

reply brief express applicant’s position that if the

specified condition precedent - that its amendment be

immediately accepted – occurs, then applicant will

immediately accept judgment against it on the broader range

of goods. Thus, we believe that, in the unique

circumstances present here, the second Drive Trademark

Holding condition is satisfied.

Accordingly, we grant applicant’s motion to amend the

identification of goods in its application and accept

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Opposition No. 91209134

applicant’s consent to judgment with respect to the broader

identification of goods. Consequently, we enter judgment

in favor of opposer with respect to the mark as applied to

all goods encompassed by the broader description “surgical

instruments,” except for the goods identified by the

amended identification. Applicant’s proposed

identification, “Surgical instruments, namely osteochondral

drills, drill guides, and curettes used to create

microfracture holes,” is accepted and is now the operative

identification of goods in the involved Application Serial

No. 85571434,6 and this case will proceed to trial on that

identification.7

The proceeding is resumed, and discovery, disclosure

and trial dates are reset as follows:

Expert Disclosures Due 3/4/2014

Discovery Closes 4/3/2014

6

Applicant’s proposed amendment will be entered and the USPTO’s

records will be updated in due course.

7

To be clear, applicant will only be heard on its amended

identification of goods going forward. The Board will not

entertain a reservation to be heard on the broader scope of goods

at trial or motion for summary judgment where applicant has

explicitly consented to entry of judgment as to those goods. Cf.

Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825 (TTAB

2013) (applicant’s motion to amend was deferred until trial and

construed as an amendment to its answer to assert an affirmative

defense under Section 18, restricting its identification in order

to obviate likelihood of confusion, where applicant (i) did not

explicitly consent to judgment, (ii) requested that the Board

alternatively consider its request to restrict its goods, and

(iii) the issue was implicitly tried by the parties in their

briefing).

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Opposition No. 91209134

Plaintiff's Pretrial Disclosures 5/18/2014

Plaintiff's 30-day Trial Period Ends 7/2/2014

Defendant's Pretrial Disclosures 7/17/2014

Defendant's 30-day Trial Period Ends 8/31/2014

Plaintiff's Rebuttal Disclosures 9/15/2014

Plaintiff's 15-day Rebuttal Period Ends 10/15/2014

In each instance, a copy of the transcript of

testimony, together with copies of documentary exhibits,

must be served on the adverse party within thirty days

after completion of the taking of testimony. Trademark

Rule 2.l25.

Briefs shall be filed in accordance with Trademark

Rules 2.128(a) and (b). An oral hearing will be set only

upon request filed as provided by Trademark Rule 2.l29.

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