FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd.

UNITED STATES PATENT AND TRADEMARK OFFICE

THIS OPINION IS A Trademark Trial and Appeal Board

P.O. Box 1451

PRECEDENT OF THE Alexandria, VA 22313-1451

TTAB

EJW

Mailed: June 25, 2014

Opposition No. 91201727

FUJIFILM SonoSite, Inc.

v.

Sonoscape Co., Ltd.

ELIZABETH J. WINTER, INTERLOCUTORY ATTORNEY:

Sonoscape Co., Ltd. (hereafter “applicant”) seeks registration of the mark

SONOSCAPE in standard characters for the following goods:

“Acoustic diagnostic apparatus for medical purposes, namely, ultrasonic

medical imaging apparatus, diagnostic veterinary imaging apparatus, and

parts therefor; Ultrasonic therapy apparatus and machine; Ultrasonic

transducers for medical diagnostics and treatment; Electronic medical

apparatus for blood analysis; Medical monitors, namely, patient monitors

for monitoring patient physiological data, namely, for monitoring blood

properties and respiratory events; Medical radiology diagnostic apparatus

and accessories, namely, X-ray, CT scanners, MRI, and nuclear imaging

diagnostic apparatus; Dental apparatus, namely, intra-oral light systems,

prophy angles, dental picks, dental mirrors, and oral irrigators.”1

FUJIFILM SonoSite, Inc. (hereafter “opposer”) opposes registration of the

applied-for mark on the ground of likelihood of confusion and alleges, inter alia,

ownership of ten trademark registrations of marks commencing with the

1 Application Serial No. 85073448, filed June 29, 2010, seeking registration under

Section 1(a) of the Trademark Act, and claiming first use anywhere as of January 1,

2004, and first use in commerce as of May 7, 2005.

Opposition No. 91201727

element “SONO,” including U.S. Reg. No. 2414562 for the mark SONOSITE in

typed drawing format for “medical diagnostic apparatus; namely, medical

ultrasound device; medical diagnostic ultrasound apparatus.”2

This case now comes up for consideration of applicant’s fully briefed

motion filed the day prior to the opening of applicant’s testimony period, to

strike portions of opposer’s notice of reliance served on the closing date of

opposer’s testimony period, and to reset applicant’s testimony period.3

Specifically, applicant requests that the Board strike Exhibits E, F, and G of

opposer’s notice of reliance on the following grounds.

Exhibit E: Unpleaded Registration

Exhibit E consists of a copy of opposer’s recently issued registration

certificate for U.S. Reg. No. 4049786, as well as copies of TSDR, TESS, and

assignment branch printouts showing current status and title data regarding

this registration. Applicant argues that the exhibit should be struck because the

application underlying said recently issued registration was not pleaded.

Consequently, applicant contends it did not have proper notice that opposer

would be relying upon ownership of the potential registration.

2 U.S. Reg. No. 2414562 issued on December 19, 2000; Section 8 affidavit accepted and

Section 15 affidavit accepted. Prior to November 2, 2003, ‘standard character’ drawings

were known as ‘typed’ drawings. A typed mark is the legal equivalent of a standard

character mark. Trademark Manual of Examining Procedure (“TMEP”) § 807.03(i)

(April 2014). See In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1771 n.2

(TTAB 2014).

3 Because this proceeding was suspended pending the Board’s consideration of this

motion, and because the motion was filed prior to the opening of applicant’s testimony

period, the entire period will be reset.

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Opposition No. 91201727

In its response, opposer argues that it complied with the procedure set

forth in TBMP § 704.03(b)(1)(A) (2014) for properly introducing its registration

by submitting copies of USPTO records. However, the insufficiency of which

applicant complains is that opposer did not plead ownership of the application

that matured into the registration at issue, not that opposer did not comply with

any of the available procedures for introducing pleaded registrations.

• Board’s Decision regarding Exhibit E

Applicant’s argument is well-taken to the extent that a plaintiff cannot

use an unpleaded registration as a basis for the opposition (such as for purposes

of removing priority as an issue in the case, or for proving standing). See UMG

Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009);

Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 n.4 (TTAB

2008); and Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77

USPQ2d 1917, 1920 (TTAB 2006). Compare Trademark Rule 2.122(d)(1) (when a

pleaded registration will be received in evidence) with Trademark Rule

2.122(d)(2) (when an unpleaded registration owned by either party is made of

record). While an unpleaded registration cannot be used as a basis for the

opposition, it, like third-party registrations, may be considered for “whatever

probative value” it may lend to opposer’s showing under the du Pont factors in

its case in chief. Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1035

(TTAB 2010) (“Safer”). See also TBMP § 704.03(b)(1)(A) (2014) (distinguishing

between a federal registration owned by the plaintiff in an opposition or

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Opposition No. 91201727

cancellation proceeding and one pleaded by the plaintiff in its complaint). In

view thereof, and because the determination whether a registration has

probative value is made at final hearing, the Board will not strike Exhibit E at

this time. See M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1073 (TTAB

1990) (since a ruling on the admissibility of exhibits under the Federal Rules of

Evidence is deferred until trial, ruling on the question of whether documents are

admissible in the first instance also is deferred until final hearing). Accordingly,

applicant’s motion to strike Exhibit E is deferred.

Exhibits F and G: Internet Printouts relevant to Three du Pont Factors

Applicant contends that opposer has failed to adequately designate the

relevancy of Exhibits F and G. Specifically, applicant contends that, because

opposer states that the exhibits are relevant with respect to three likelihood of

confusion factors (the similarity of the parties’ marks, the similarity and

relatedness of the goods at issue, and the similarity of the parties’ trade and

marketing channels), under Safer, opposer must delineate which exhibit pages,

by number, are relevant to each particular du Pont factor.

Opposer contends that Safer does not require that individual pages be

designated with respect to the applicable du Pont factor(s), only that the general

relevance of the exhibits themselves be identified. Further, because the exhibits

in their entireties relate to the three du Pont factors, opposer essentially argues

that there is no need to separately identify different portions of the exhibits as

probative evidence on particular du Pont factors.

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Opposition No. 91201727

In reply, applicant argues that opposer’s contention that all 673 pages

(comprising both exhibits) apply to all three du Pont factors is the type of

evidentiary abuse that the Board intended to avoid in Safer, and that opposer

has failed to identify which of the documents or web pages support each factor in

accordance with Safer. Applicant also contends that, insofar as opposer has

failed to tie the exhibits to the respective du Pont factors in response to

applicant’s motion, it would be pointless for the Board to allow time for opposer

to amend its notice of reliance; rather, applicant argues that opposer’s exhibits F

and G should be stricken from the record.

• Board’s Decision regarding Exhibits F and G

Pursuant to Safer, a document obtained from the Internet may be

admitted into evidence pursuant to a notice of reliance in the same manner as a

printed publication in general circulation, in accordance with Trademark Rule

2.122(e), so long as the date the Internet documents were accessed as well as

their source (the Internet address or URL) is provided and the party filing the

notice of reliance indicates the general relevance of the documents. Alcatraz

Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB

2013), aff’d ___ Fed. App’x. ____ (Fed. Cir. 2014), citing Safer, Inc. v. OMS

Investments, Inc., 94 USPQ2d 1031, 1059 (TTAB 2010). See also TBMP

§ 704.08(b) (2014). To meet the requirement that the notice of reliance indicate

the general relevance of material being offered, the offering party should

associate the materials with a specific factor relevant to likelihood of confusion

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Opposition No. 91201727

or a specific fact relevant to determining a particular issue. Safer, 94 USPQ2d at

1039-40. If the offering party introduces the same document to support more

than one element of a claim or defense, or more than one relevant fact, the

propounding party should also indicate the specific element or fact supported by

the various documents in a group of documents. Id. at 1040. “For example, if

printed materials or Internet web pages introduced through a notice of reliance

are submitted to show the similarity of the products, the similarity of the

channels of trade, and the strength of the mark, the propounding party

should identify which of the documents support each element or fact (e.g.,

plaintiff's exhibits 1-10 demonstrate the similarity of the products, plaintiff's

exhibits 3-5 and 11-15 demonstrate the similarity of the channels of trade, and

plaintiff's exhibits 7-8, 16 and 16-30 demonstrate the strength of plaintiff’s

mark).” Id. at 1040 (emphasis added). “Under [this] practice, [a party’s] notice of

reliance would not be acceptable [if the party] submitted the documents to prove

three likelihood of confusion elements, but did not associate each document or

group of documents with a specific likelihood of confusion factor.” Id.

Here, opposer has submitted two exhibits, rather than the thirty-five

exhibits discussed in Safer, specifically, Exhibit F consisting of 628 pages of

printouts from opposer’s own website, and Exhibit G comprising 45 pages of

printouts from applicant’s website. With respect to each exhibit, opposer states

that the evidence is relevant to “the similarity of the parties’ respective marks,

the similarity and relatedness of the goods at issue, and the similarity of the

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Opposition No. 91201727

parties’ trade and marketing channels” (11/12/2013 notice of rel., ¶¶ 4-5). That

is, as explained by opposer in its response to the instant motion, the entirety of

each exhibit is relevant to all three identified du Pont factors. Although opposer

has submitted two exhibits rather than multiple exhibits, the exhibits number in

excess of 670 pages and comprise over one hundred individual webpages. The

Board will not expend its resources guessing which pages the propounding party

is relying upon, particularly when an exhibit comprises such a large number of

pages. Opposer should have indicated which web page or group of web pages

within each exhibit support each specific du Pont factor. Safer, 94 USPQ2d at

1040.

Because opposer has not identified any particular web pages in Exhibits F

and G as being relevant to any particular du Pont factor, opposer has failed to

comply with Safer. Opposer’s failure to delineate the relevant du Pont factor for

specific web pages is particularly problematic with respect to Exhibit F because

of the sheer volume of pages included therein, and it illustrates a problem the

Board sought to avoid by articulating specific requirements in Safer. Although

opposer will have an opportunity to explain its exhibits in its trial brief,

applicant is entitled to know, prior to its testimony period, which web pages

assertedly support which likelihood of confusion factor. See TBMP § 704.02

(2014) (“a notice of reliance … serves … to notify opposing parties that the

offering party intends to rely on the materials submitted thereunder in support

of its case”).

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Opposition No. 91201727

Nonetheless, such a defect is one that can be cured by the offering party

as soon as it is raised by any adverse party, without reopening the testimony

period of the offering party. Safer, 94 USPQ2d at 1040. Therefore, inasmuch as

this error in filing is correctable, opposer is allowed until FIFTEEN (15) DAYS

from the mailing date of this order to submit to the Board a revised notice of

reliance relating to the exhibits submitted on November 12, 2013, that indicates

which web pages in Exhibits F and G relate to which du Pont factor. If opposer

fails to comply, the exhibits will not be considered. Opposer should not

resubmit its exhibits with the revised notice of reliance; provided, however,

that opposer is permitted to resubmit the following pages of Exhibit G, which are

illegible: pages 000004, 000029, 000039, 000054-57, and 000059-60.4

Accordingly, applicant’s motion to strike is granted, with leave to cure.

4The Board will not decide at this juncture whether or not opposer’s submission is

needlessly cumulative. The Board does not review evidence substantively until trial. See

M-Tek Inc. v. CVP Systems Inc., 17 USPQ2d at 1073.

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Opposition No. 91201727

Proceeding Resumed; Trial Dates Reset

This proceeding is resumed. Trial dates, commencing with applicant’s

testimony period, are reset as shown in the following schedule:

Defendant's 30-day Trial Period Ends 8/24/2014

Plaintiff's Rebuttal Disclosures Due 9/8/2014

Plaintiff's 15-day Rebuttal Period Ends 10/8/2014

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. See

Trademark Rule 2.125, 37 C.F.R. § 2.125.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b),

37 C.F.R. §§ 2.128(a) and (b).

An oral hearing will be set only upon request filed as provided by

Trademark Rule 2.129, 37 C.F.R. § 2.129.

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