Dage-MTI, Inc.v.Medical Technology & Innovations Inc.

Trademark Trial and Appeal Board

Aug 24, 1999

No. 91103606 (T.T.A.B. Aug. 24, 1999)

8/24/99
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
FSW/GFR
Opposition No. 103,606
Dage-MTI, Inc.
v.
Medical Technology &
Innovations Inc., by
change of name from
Medical Technology, Inc.1
Before Cissel, Quinn and Walters,
Administrative Trademark Judges
By the Board:
On May 2, 1997, opposer filed a motion for summary
judgment with supporting materials. Applicant filed a brief
in opposition to the motion with its own exhibits. Both
parties filed supplements to include originals of documents

1 It is noted that applicant has filed a revocation of power of
attorney and appointment of new agent with the Board. Appli-
cant’s communication does not indicate proof of service of a copy
of same on counsel for opposer as required by Trademark Rule
2.119. In order to expedite this matter, a copy of said
communication is forwarded herewith to counsel for opposer, but
strict compliance with Trademark Rule 2.119 is required in all
further papers filed with the Board.
Moreover, it appears that applicant has changed its name to
Medical Technology & Innovations Inc. Applicant is encouraged to
record evidence of its change of name with the Assignment Branch
of the Office. See 37 CFR §§3.71, and 3.73(b); and TBMP §512.01.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 103,606
2
relied upon in their respective papers. Opposer also filed
a reply brief, which we have exercised our discretion to
consider.
Applicant seeks to register the mark MTI PHOTOSCREENER
(with a disclaimer of "photoscreener") for a "camera for
detecting ocular abnormalities in a patient." The opposi-
tion is based on opposer’s prior use and registration of the
mark MTI for "monitors, television cameras" and the mark MTI
(STYLIZED) for "television cameras, television monitor
units, [and] synchronizing generators for close circuit
television applications."
In support of its motion for summary judgment, opposer
offers status and title copies of its registrations, a copy
of part of a 1991 article from Lasers & Optronics, a trade
journal, referring to opposer as the number one camera ven-
dor for biological research and as a vendor of cameras used
in ophthalmic research, and copies of pages from Webster’s
Third New International Dictionary, (1961) defining "ocular"
as "of, relating to, or connected with the eye" and defining
"ophthalmic" as "of, relating to, or near the eye: ocular."
Opposer argues that applicant’s mark is confusingly
similar to opposer’s registered marks because it is domi-
nated by "MTI," which is also the dominant portion of
opposer’s MTI (STYLIZED) mark and the entirety of opposer’s

Opposition No. 103,606
3
MTI word mark; that both parties sell goods used in the
field of ophthalmics (noting the identification of goods in
applicant’s involved application and the reference to
opposer in Lasers & Optronics); that opposer’s priority has
been established by its existing registrations; and that for
the above reasons, there is no genuine issue as to priority
or likelihood of confusion and summary judgment should be
granted.
In support of its response, applicant has submitted an
affidavit from applicant’s chief executive officer asserting
that applicant’s cameras "are sold almost exclusively for
use by pediatricians and optometrists;" that applicant’s
affiant is familiar with the market for cameras used to
examine patients for ocular abnormalities and is unaware of
television cameras being used for such purpose; that he is
also unaware of any instances of actual confusion and was
not aware of opposer’s existence until the commencement of
this proceeding. Applicant has also submitted a computer-
ized printout retrieved from the FEDTM database of the Lexis
legal database system of third-party registrations of marks
that include the letters "MTI."
Applicant argues that the identification of goods in
applicant’s pending application shows that its goods are a
specific type of camera used by health professionals to
diagnose patients; that television cameras are not used for
Opposition No. 103,606
4
this purpose; that the trade channels for cameras that
detect ocular abnormalities and television cameras do not
overlap; that the relevant purchasers are careful, sophisti-
cated purchasers unlikely to be confused; that the trade
journal article discussing opposer’s sale of cameras refers
to opposer only as "Dage" and not "Dage-MTI" or "MTI;" that
the article also does not specify that opposer’s cameras are
actually sold under the MTI mark or that they are "televi-
sion cameras" and therefore covered by the registrations,
and opposer has not, by affidavit, indicated that the arti-
cle accurately describes opposer’s goods; that opposer’s
marks are entitled to only a narrow scope of protection
because of the existence of numerous third-party "MTI" marks
that have been registered; that the marks can be distin-
guished on the basis of the additional wording
"photoscreener" in applicant’s mark, which explains the
apparent lack of actual confusion despite concurrent use for
the past three years; and that for the above reasons, there
is a genuine dispute as to whether a likelihood of confusion
exists, and summary judgment should be denied.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. Fed. R. Civ. P. 56(c). Opposer, as the
party moving for summary judgment on its claims, has the
Opposition No. 103,606
5
initial burden of demonstrating the absence of any genuine
issue of material fact. See Celotex Corp. v. Catrett, 477
U.S. 317 (1986); Sweats Fashions Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
If opposer meets that initial burden, applicant must
then present sufficient evidence to show an evidentiary con-
flict as to one or more material facts in issue. See Opry-
land USA Inc. v. Great American Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992). The evidence must be
viewed in a light most favorable to applicant as the non-
movant, and all justifiable inferences are to be drawn in
applicant’s favor. Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opry-
land USA, supra.
In considering whether to grant or deny a motion for
summary judgment, the Board may not resolve issues of mate-
rial fact, but can only ascertain whether genuine disputes
exist regarding such issues. Opryland USA, supra, and
Lloyd’s Food Products, supra.
The crux of the dispute in this case is whether there
are any genuine issues of material fact as to whether appli-
cant’s mark, MTI PHOTOSCREENER (with "photoscreener" dis-
claimed), as used on or in connection with a "camera for
detecting ocular abnormalities in a patient" is likely to
cause confusion with the registered marks of opposer, MTI
Opposition No. 103,606
6
for "monitors, television cameras," and MTI (STYLIZED) for
"television cameras, television monitor units, synchronizing
generators for close circuit television applications."
In the present case, there is no genuine issue of mate-
rial fact as to opposer’s ownership of its pleaded subsist-
ing registrations, opposer having submitted current status
and title copies of the registrations with its motion for
summary judgment. Thus, the issue of priority does not
arise with respect to the goods recited in the registra-
tions. The record also establishes opposer’s standing as a
matter of law. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108(CCPA 1974); Carl
Karcher Enterprises Inc. v. Stars Restaurants Corp. 35
USPQ2d 1125 (TTAB 1995); National Football League v. Jasper
Alliance Corp., 16 USPQ2d 1212 (TTAB 1990).
To determine whether there is a likelihood of confu-
sion, the marks are compared for similarities in appearance,
sound, connotation and commercial impression; the goods or
services are compared to determine if they are related or if
the activities surrounding their marketing are such that
confusion as to origin is likely; and other factors, such as
purchaser sophistication and trade channels of distribution,
may also be examined. See In re E. I. DuPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); In re August
Storck KG, 218 USPQ 823 (TTAB 1983); In re International
Opposition No. 103,606
7
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978);
Guardian Products Co., v. Scott Paper Co., 200 USPQ 738
(TTAB 1978).
Applicant has disclaimed the word "photoscreener," as
descriptive of cameras used to screen patients through pho-
tographic images. While a disclaimer does not remove the
disclaimed matter from the mark, disclaimed matter typically
will not be regarded as the dominant, or most significant,
feature of a mark. The mark must still be regarded as a
whole, including the disclaimed matter, in evaluating simi-
larity to other marks, but the disclaimed portion may be
considered less significant. See In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); the Trademark
Manual of Examining Procedure (TMEP) §1213.11 and authori-
ties cited in that section.
The commercial impression of applicant's mark, as it is
actually used, appears to be dominated by "MTI." The speci-
mens of record in the application file show the "MTI"
portion displayed in large letters, and separated from the
wording "photoscreener" by three horizontal lines. The
wording "photoscreener" is displayed in lettering about one-
half the size of the lettering style used for the letters
"MTI." This actual use, coupled with the descriptiveness of
"photoscreener," leaves no doubt that the dominant portion
Opposition No. 103,606
8
of applicant’s mark is "MTI." This portion is identical to
opposer’s mark.
Applicant has proffered a printout of third-party
registrations of marks that include the letters "MTI" from
the FEDTM database of the Lexis legal database system, and
argues that these establish that opposer’s marks are enti-
tled to only a narrow scope of protection. For purposes of
summary judgment only, a copy of a trademark search report,
made of record as an exhibit to an affidavit, submitted in
opposition to a summary judgment motion, may be sufficient
to raise a genuine issue of material fact as to the nature
and extent of third-party use of a particular designation.
See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993); TBMP §528.05(d).
Here, none of the twenty-three registrations listed in
the trademark search report cover cameras or monitors of any
type. Only three appear to relate to any goods or services
that may have a medical application; the rest cover
unrelated products or services. Thus, these registrations
are insufficient to raise a genuine issue as to the scope of
protection of opposer's "MTI" marks.
Applicant argues that there has been no actual confu-
sion. However, the relevant test is likelihood of confu-
sion, not actual confusion. It is unnecessary to show
actual confusion in establishing likelihood of confusion.
Opposition No. 103,606
9
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546,
1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and TMEP
§1207.01(c)(iii).
For the above reasons, there is no genuine dispute as
to the similarity of the marks.
Turning to the goods, as opposer's registrations have
broadly identified the goods, applicant may not avoid a
finding of likelihood of confusion merely by more narrowly
identifying its related goods. See e.g., Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A.
1973); and TMEP §1207.01(a)(iii).
Opposer's registration for the MTI word mark does not
limit its monitors or television cameras as to the nature,
type, channels of trade or classes of purchasers. Moreover,
opposer has introduced evidence showing that it is perceived
as a vendor of cameras for biological research, including
cameras for ophthalmic research. In view of the broad and
unrestricted identifications in opposer's registrations, we
must assume that opposer's goods can be used for purposes
similar to those for applicant's goods and may be available
to the same classes of consumers and in all possible chan-
nels of trade. The Lasers & Optronics article further sup-
ports opposer's claim that the goods are related.
Opposition No. 103,606
10
Applicant argues that the purchasers of the parties’
respective goods are sophisticated, but the fact that pur-
chasers are sophisticated or knowledgeable in a particular
field does not necessarily mean that they are sophisticated
or knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB
1983).
For the above reasons, opposer has established priority
and shown that a likelihood of confusion exists. Applicant
has not shown the existence of a genuine dispute on the
issues of priority or likelihood of confusion. Accordingly,
opposer’s motion for summary judgment is granted; the oppo-
sition is sustained, and registration to applicant is
refused.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board