Remington Products Companyv.Anibal de Oliveira Fortuna

Trademark Trial and Appeal Board

Dec 11, 2012

No. 91200803 (T.T.A.B. Dec. 11, 2012)

MBA/CME
Mailed: December 11, 2012

Opposition No. 91200803
Remington Products Company
v.
Anibal de Oliveira Fortuna
Before Bergsman, Shaw and Adlin, Administrative Trademark Judges
By the Board:
On August 23, 2012, the Board issued an order granting
partial summary judgment to opposer on the ground that
AIRGEL, the mark in applicant’s involved application Serial
No. 77837542, is merely descriptive of the goods covered by
the involved application, namely, “Special air pressure
cuffs with thermally conformable gel padded external walls,
for medical use” (the “Prior Order”). Opposer, however,
failed to submit any evidence establishing its standing to
bring the opposition, and so it was allowed time do so.
Now before the Board is opposer’s supplemental summary
judgment brief, and the accompanying Declaration of C.
Kevin McComas (“McComas Dec.”), opposer’s CFO, filed
September 11, 2012, which addresses the issue of standing.
On October 10, 2012, applicant filed a combined response to
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91200803
2

opposer’s supplemental filing and request for
reconsideration of the Prior Order.
Turning first to applicant’s request for
reconsideration, under Trademark Rule 2.127(b), a request
for reconsideration of a Board decision must be filed
within one month from the date of the decision.
Applicant’s request for reconsideration is therefore
untimely and will not be further considered.1
Turning next to the issue of standing, Mr. McComas
testifies that he has personal knowledge of opposer’s
business and attests that: (1) Sroufe Healthcare Products
(“Sroufe”) was a wholly owned subsidiary of opposer, but
has since been merged into opposer; (2) Sroufe offered for
sale and opposer continues to offer for sale “a line of
healthcare products combining therapeutic gel and pneumatic
(air) therapy … comprised of gel and air chambers;” (3)
opposer sells ankle braces and supports “comprising gel air
chambers”; and (4) the catalog pages attached to the
declaration show products sold by Sroufe and presently sold
by opposer. McComas Dec. ¶¶ 3, 4, 6, 7 and Ex. C. The
Sroufe catalog pages promote products incorporating

1 Even if we were to consider the request for
reconsideration, applicant fails to establish that the Board
erred in reaching its decision based on the facts before it and
the applicable law. See Trademark Rule 2.127(b) and TBMP § 518
(3d ed. rev. 2012). Instead, applicant essentially reargues the
points asserted in his opposition to opposer’s original brief for
summary judgment. A request for reconsideration should not be
“devoted simply to reargument of the points presented in a brief
on the original motion.” TBMP § 518.

Opposition No. 91200803
3

“PneuGel technology for the combination of therapeutic gel
and pneumatic (air) therapy in the healthcare industry” and
specifically highlight opposer’s shoulder wrap that has an
“air/gel bladder.” Id. Ex. C. Opposer argues that this
evidence establishes its standing because opposer’s goods
“fall within the description of goods recited in the
[involved] application” and opposer is “engaged in the sale
of ‘related products’ that is, therapeutic products (i.e.
medical use products) comprising air gel chambers.”
Applicant argues, however, that opposer’s goods are
“completely distinct” from the goods covered by the
involved application. Specifically, applicant asserts that
his product is a “special cuff to be used in [a]pplicant’s
patented ventilation device” to “maintain patient airways
during anesthesia and surgery,” whereas opposer markets
orthopedic products. Accordingly, applicant argues that
opposer would not be damaged by the registration of
applicant’s involved mark.

As set out in the Prior Order, summary judgment is
only appropriate where there are no genuine disputes as to
any material facts, thus allowing the case to be resolved
as a matter of law. Fed. R. Civ. P. 56(a). The party
seeking summary judgment bears the burden of demonstrating
the absence of any genuine dispute of material fact, and
that it is entitled to a judgment under the applicable law.
Opposition No. 91200803
4

See Celotex Corp. v. Catrett, 477 U.S.317, 323 (1986);
Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833
F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual
dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of
the non-moving party. See Opryland USA Inc. v. Great Am.
Music Show Inc., 970 F.2d 847, 23 USPQ2d1471, 1472 (Fed.
Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961
F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Prods., 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
“Standing is a threshold inquiry made by the Board in
every inter partes case.” See Enbridge Inc. v. Excelerate
Energy LP, 92 USPQ2d 1537, 1543 (TTAB 2009). The purpose
of the standing requirement is to prevent mere
intermeddlers from initiating proceedings. See Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
Opposition No. 91200803
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185, 189 (C.C.P.A. 1982). The Federal Circuit has
established a liberal threshold for determining standing,
namely, whether an opposer’s belief in damage has a
reasonable basis in fact and reflects a real interest in
the case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025-28 (Fed. Cir. 1999); see also Jewelers Vigilance
Committee Inc. v. Ullenberg Corp., 853 F.2d 888, 2 USPQ2d
2021, 2024 (Fed. Cir. 1987).
Standing is established under Section 2(e)(1) of the
Lanham Act where the opposer and applicant are competitors.
See Plyboo Am. Inc. v. Smith & Fong Co., 51 USPQ2d 1633,
1634 n. 5 (TTAB 1999). Moreover, damage “will be presumed
or inferred when the mark sought to be registered is
descriptive of the goods and the opposer … is one who has
sufficient interest in using the descriptive term in its
business.” DeWalt, Inc. v. Magna Power Tool Corp., 129
USPQ 275, 280 (CCPA 1961); see also Otto Roth & Co., Inc.
v. Universal Corp., 209 USPQ 40, 44 (CCPA 1981) (“It is
clear that use of a term in a descriptive sense is
sufficient to impart standing to oppose federal
registration of a descriptive ‘word, name, symbol, or
device’ as a trademark.”); see also Kellogg Co. v. General
Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (acknowledging
that a commercial interest in an allegedly descriptive term
Opposition No. 91200803
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is sufficient to establish standing); 3 J. THOMAS MCCARTHY,
McCarthy on Trademarks and Unfair Competition, §20:11 (4th
ed. 2012) (“Standing to oppose is presumed when the mark
sought to be registered is allegedly descriptive of the
goods and the opposer is one who has a sufficient interest
in using the descriptive term in his business.”).
Although applicant seems to suggest that the parties
are not direct competitors per se, their goods overlap as
opposer’s “medical use products … comprising air gel
chambers” fall within the broad scope of goods identified
by the involved application, namely, “Special air pressure
cuffs with thermally conformable gel padded external walls,
for medical use.” See DeWalt, 129 USPQ at 279 (finding
opposer’s multiple-purpose power tool and applicant’s
woodworking saws “identical so far as trademark law is
concerned”); see also Federal Glass, 162 USPQ at 281-282
(concluding that the parties were competitors where
applicant’s application covered percolators and opposer
sold a wide variety of glassware, tableware and cookware,
excluding coffee makers or percolators). The fact that
opposer’s products are orthopedic in nature and applicant
alleges an intent to use AIRGEL to identify a feature of a
ventilation device is immaterial to our analysis as the
involved application does not limit applicant’s product to
Opposition No. 91200803
7

a “ventilation device,” and instead identifies cuffs “for
medical use.” Opposer’s goods are also for “medical use,”
and opposer has established its interest in using “air/gel”
in its business, for goods which are at least related to
applicant’s. See Stuart Spector Designs, Ltd. v. Fender
Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB
2009); DeWalt, 129 USPQ at 279. Indeed, Opposer’s use of
“air/gel,” and similar variations thereof, to describe its
medical products demonstrates its business interest in
using the descriptive term AIRGEL.
For these reasons, opposer has established that there
is no genuine dispute as to any material fact related to
its standing, and that it is entitled to summary judgment
on the issue of standing as a matter of law. Accordingly,
opposer’s motion for summary judgment is GRANTED and the
opposition is sustained.
***