The Laryngeal Mask Company Limitedv.Anibal De Oliveira Fortuna

Trademark Trial and Appeal Board

Mar 16, 2011

No. 91191601 (T.T.A.B. Mar. 16, 2011)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Butler Mailed: March 16, 2011 Opposition No. 91191601 THE LARYNGEAL MASK COMPANY LIMITED v. ANIBAL DE OLIVEIRA FORTUNA Before Walters, Grendel and Bergsman, Administrative Trademark Judges. By the Board: Applicant seeks to register the mark C-LMA for a "medical device used to ventilate patients, namely, a supraglotic (sic, "supraglottic") laryngeal mask combined with a cuffed esophageal tube."1 As grounds for the opposition, opposer alleges priority of use and likelihood of confusion. Opposer alleges use of the term LMA for laryngeal masks and claims ownership of several registered marks consisting, in whole or in part, of the term LMA. Those marks are listed in the notice of opposition as: LMA (Registration No. 2506914), LMA and design (Registration No. 1854088), LMA-UNIQUE (Registration No. 2133294), LMA-FASTRACH (Registration No. 2173557), LMA-CLASSIC (Registration No. 1 Application Serial No. 78448067, filed on July 8, 2004 and claiming a bona fide intent to use the mark in commerce. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Opposition No. 91191601 2 2220745), LMA-PROSEAL (Registration No. 2518267), and LMA-CTRACH (Registration No. 3234339).2 In his answer, applicant admitted some of the essential allegations in the notice of opposition. The admissions to the numbered paragraphs are summarized below. 2. That opposer, through related companies and predecessors in interest in title, is, and has been for many years, engaged in the development, manufacture and sale of laryngeal masks. 3. That opposer has used, and continues to use, the mark LMA and has used the mark continuously in commerce in connection with laryngeal masks since at least as early as December 11, 1992. 4. That opposer is the owner of the registrations listed at paragraph No. 4 of the notice of opposition "to the extent the records of" the USPTO "substantiate the facts claimed." 5. That the registrations are valid, subsisting, unrevoked and uncancelled. 6. That opposer has established goodwill in its marks, which have become well and favorably recognized by the relevant trade and public as identifying the laryngeal masks of opposer. Applicant further qualifies this admission by remarking that the term LMA is widely and commonly used in medicine to define any 2 Opposer did not submit either TARR or certified copies of the pleaded registrations with its notice of opposition. Trademark Rule 2.122(d)(1). Opposition No. 91191601 3 type of laryngeal mask and not necessarily the ones specifically made by opposer.3 13. That the parties' respective goods would likely be offered through the same or overlapping channels of trade. Applicant further qualifies this admission by remarking that there are functional and design characteristics that would differentiate the parties' goods and that the consumers for the products are sophisticated and educated with the knowledge to "choose among the different airway devices …." 14. That parties' respective goods would likely be offered and targeted to the same consumers. 18. That applicant distributed laryngeal masks manufactured by opposer, or by opposer's related companies and predecessors in title, in Brazil prior to filing his application. Applicant otherwise denies the essential allegations of the notice of opposition. The discovery period closed on August 11, 2010. This case now comes up on the following: 1) opposer's motion for summary judgment, filed October 29, 2010; 2) applicant's motion, filed December 10, 2010, to withdraw and amend effective admissions with respect to opposer's third requests for admission, to which opposer filed a response; and 3) opposer's motion, filed December 21, 2010, to strike applicant's response to opposer's motion for 3 Thus, it is clear that applicant's admission is made to the extent opposer's marks include stylized lettering, designs, and other words. Applicant further Opposition No. 91191601 4 summary judgment on the basis that the response, filed late on December 16, 2010, is untimely. Applicant's motion to withdraw and amend effective admissions Opposer's motion for summary judgment relies, in part, on applicant's responses to opposer's first requests for admission and applicant's effective admissions with respect to opposer's second and third requests for admission. Applicant’s responses to the opposer’s second and third requests for admission are deemed effective admissions because applicant did not serve timely responses. Applicant has moved to withdraw and amend the effective admissions with respect to opposer's third requests for admission only. In support of his motion, applicant states that his responses were served only three days late. Applicant states that he was confused about the due date for the responses and further explains that the due date was a Friday and he served the responses on the following Monday. Applicant argues that opposer is not prejudiced by the withdrawal and amendment and that the presentation of the merits of the action would be promoted by acceptance of the late-served responses. Applicant also expresses his belief that the matters addressed by the requests have been "equivalently formulated and answered" by applicant's responses to opposer's other written discovery requests. emphasizes this position when he affirmatively asserts that opposer uses LMA as a prefix in composite marks. Opposition No. 91191601 5 Applicant's motion is accompanied by a copy of his responses, evidencing a certificate of mailing of September 13, 2010. In response, opposer argues that applicant has not shown why his failure to act until December 10, 2010 was the result of excusable neglect. Opposer points out that applicant's failure to serve a timely response to opposer's third requests for admission was a subject matter of the Board's October 5, 2010 order wherein applicant was informed that, by operation of Fed. R. Civ. P. 36(a), the matters addressed by the requests were deemed admitted absent a motion from applicant, granted by the Board, to withdraw and amend the effective admissions. Opposer argues that it is prejudiced because applicant waited over two months after the Board's order, and over one month after opposer filed its summary judgment motion to move to withdraw and amend the effective admissions. Where a party seeks to avoid admissions for a failure to respond, either in a timely manner or at all, it may pursue two separate avenues for relief, either independently or in the alternative. The responding party may seek relief under Fed. R. Civ. P. 36(b) by moving to withdraw and amend its effective admission, or under Fed. R. Civ. P. 6(b)(1)(B), by showing why its failure to serve timely responses to the admission requests was a result of excusable neglect. See Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) and Hobie Designs, Inc. v. Fred Hayman Beverly Hills, Inc., 14 USPQ2d 2064 Opposition No. 91191601 6 at fn. 1 (TTAB 1990). Here, applicant has chosen to seek relief only under Fed. R. Civ. P. 36(b). Consequently, the Board will not consider whether applicant has shown excusable neglect, the standard argued by opposer. Any matter admitted under Fed. R. Civ. P. 36(b) is conclusively established unless the court on motion permits withdrawal or amendment of the admission. The Board may permit withdrawal or amendment of admissions where “the presentation of the merits of the action will be subserved thereby and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action or defense on the merits.” See also TBMP § 525 (2d ed. rev. 2004). The timing of a motion to amend or withdraw admissions plays a significant role in the Board’s determination of whether the propounding party will be prejudiced by withdrawal or amendment. Id. As contemplated under Rule 36(b), “‘prejudice’ is not simply that the party who initially obtained the admission will now have to convince the fact finder of its truth, but rather, relates to the special difficulties a party may face caused by the sudden need to obtain evidence upon withdrawal or amendment of admission.” Kerry Steel, Inc. v. Paragon Industries, Inc., 106 F.3d 147 (6th Cir. 1997). Here, the timing of applicant's motion to withdraw his admissions is very poor and potentially prejudicial to opposer. However, opposer had applicant's late-served admission responses long before it filed its motion for summary judgment and had an Opposition No. 91191601 7 opportunity to minimize its reliance on the admissions being deemed admitted because they were served late. Thus, the substantive prejudice to opposer is minimal. Although, the presentation of the merits of the case is not greatly affected by allowing the effective admissions to be withdrawn and amended, we find that allowing the withdrawal and amendment to applicant’s responses to opposer’s third set of requests for admission would subserve the presentation of the merits. Accordingly, applicant's motion to withdraw and amend his effective admissions to opposer's third requests for admission is granted.4 Applicant's responses, served late on September 13, 2010, are applicant's operative responses to the admission requests.5 Opposer's motion to strike applicant's response to opposer's motion for summary judgment In support of its motion, opposer argues that it served its summary judgment motion on October 29, 2010; that, because the parties agreed to service by email as allowed by Trademark Rule 2.119(b)(6), applicant's response was due by November 29, 2010; and that applicant filed his response seventeen days late, on December 16, 2010. Opposer complains that applicant's disregard for the deadlines in this case has been persistent and egregious. 4 In his summary judgment response, applicant indicates that he served late (on October 7, 2010) his responses to opposer's second requests for admission. However, applicant did not move to withdraw and amend effective admissions to such requests. Consequently, applicant's responses to opposer's second requests for admission are deemed admitted. Fed. R. Civ. P. 36(a). Opposer may rely on such effective admissions in support of its motion for summary judgment. Opposition No. 91191601 8 Opposer points to numerous other deadlines applicant has ignored in attempting to show that the late-filed summary judgment response is part of a pattern of delay. Applicant did not seek to extend his time to respond to the summary judgment motion, has not filed any response to opposer's motion to strike applicant's late-filed summary judgment response, and otherwise has not explained why the summary judgment response is late. Accordingly, opposer's motion to strike the response is granted. Trademark Rule 2.127(a). No further consideration will be given thereto, except as in clarifying notes later in this order.6 However, because of applicant's continued interest in this case, as evidenced by his submission of a response (albeit late), the Board will not grant opposer's summary judgment motion as conceded but will consider the motion on its merits. Opposer's motion for summary judgment In a motion for summary judgment, the moving party has the burden of establishing that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). A genuine dispute with respect to a material fact exists if sufficient evidence is presented 5 Opposer's third requests for admission consist of seven requests. Applicant admitted the first request and denied the remaining six requests. 6 As is apparent by the reference in footnote 4 to applicant's summary judgment response, the Board has reviewed the response, particularly to see if there was any explanation as to why it was filed late. Consideration of the merits of the response would not have altered the determinations made herein. Opposition No. 91191601 9 that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). A. The evidence of record The pleadings and the application file are of record without any further action by the parties. Fed. R. Civ. P. 56(a) and Trademark Rule 2.122(b)(1). Opposer has submitted the following evidence: 1. An addendum of its federal trademark registrations listing those registrations identified in the notice of opposition and three additional registrations.7 2. TARR copies of its pleaded registrations, and for the three additional registrations as well, showing that the registrations are valid and subsisting and are owned by opposer.8 Trademark Rule 2.122(d)(1). 7 Those additional registered marks are: LMA STONEBREAKER (Registration No. 3446593); LMA CLASSIC EXCEL (Registration No. 3764094); and LMA PAINCARE (Registration No. 3895272). 8 Opposer did not assert the three additional registrations in its notice of opposition. The Board notes in passing that one, LMA STONEBREAKER (Registration No. 3446593) was not recently issued and was registered at the time the notice of opposition was filed. While the remaining two were issued after the commencement of the opposition proceeding, applicant was not put on notice of opposer's reliance on such registrations (or underlying applications) until the filing of the summary judgment motion. Thus, the registrations will not be considered for purposes of determining, infra, whether any dispute of material fact exists with respect to opposer's standing Opposition No. 91191601 10 3. Opposer's first requests for admission and applicant's responses thereto. Trademark Rule 2.127(e)(2). 4. Opposer's second requests for admission. As discussed above, applicant did not serve timely responses and did not move to withdraw and amend the effective admissions to opposer's second requests for admission. Fed. R. Civ. P. 36(a) and (b); Trademark Rule 2.127(e)(2). 5. Opposer's third requests for admission. As determined above, applicant's motion to amend and withdraw the effective admissions was granted. The Board will not consider opposer's reliance on the effective admissions for opposer's third requests for admission in making a determination on opposer's summary judgment motion. 6. Opposer's first set of interrogatories and applicant's responses thereto. Trademark Rule 2.127(e)(1). B. Opposer's arguments In support of its motion, opposer argues that it has priority of use of its LMA mark. Opposer argues that the parties' respective marks are similar in sight, sound and connotation, with applicant's mark incorporating opposer's LMA mark in its entirety; that the addition of the single letter "C" in applicant's C-LMA mark is unlikely to diminish likelihood of confusion because consumers familiar with opposer's mark will and priority. However, because opposer also asserted common law rights in the mark LMA, paragraph No. 3 of the notice of opposition, the additional registered marks will be considered in determining whether any genuine dispute Opposition No. 91191601 11 assume that applicant's mark is merely a variation of opposer's LMA mark; and that many of opposer's registered marks and applicant's applied-for mark are in standard character, thus covering any style, font or presentation of the marks. Opposer states it is engaged in the business of developing, manufacturing, and selling laryngeal masks and other medical devices; that applicant's identified goods are laryngeal masks; that, thus, the parties' goods are the same; and that, to the extent it is applicant's position (as asserted in his answer and his responses to opposer's first requests for admission) that there are technical distinctions between the parties' respective goods, such distinctions do not matter because, as identified in applicant's application and opposer's pleaded registrations, both parties offer laryngeal masks. Opposer further argues that the trade channels and prospective consumers for the parties' respective goods are the same and overlapping; that opposers's LMA marks are well known; that there is no evidence of record of third-party marks composed in whole or in part of LMA for the same or similar goods; and that opposer uses its mark for goods other than laryngeal masks. Opposer points out that applicant is a former distributor of opposer's goods in Brazil and that, consumers familiar with this fact may believe that applicant is continuing in that role when distributing products under the C- LMA mark. Opposer, in support of the strength of its marks, of material fact exists with respect to opposer's likelihood of confusion Opposition No. 91191601 12 argues that its LMA mark, used over a long period of time, is inherently distinctive, registered on the Principal Register without a disclaimer or proof of secondary meaning, and is incontestable;9 and that its LMA marks are entitled to a broad scope of protection because they are composed of an unpronounceable set of letters. Opposer expresses its belief that there is substantial potential for confusion. C. Opposer's standing Opposer has introduced copies of its pleaded registrations from the electronic databases of the USPTO demonstrating that it is the owner of record of the pleaded registrations and the registrations are valid and subsisting. Trademark Rule 2.122(d)(1). Accordingly, there is no genuine dispute of material fact as to opposer's standing in this proceeding. Opposer's standing is established. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); and Metromedia Steakhouses, Inc. v. Pondco II, Inc., 28 USPQ2d 1205, 1209 (TTAB 1993). D. Opposer's priority claim. 9 The TARR records for its pleaded registrations, submitted with opposer's motion for summary judgment, indicate that for Registration No. 2506914 for the mark LMA, typed form, there is neither a disclaimer nor a statement of acquired distinctiveness of record. For Registration No. 1854088 for the mark LMA and design, a disclaimer of "LMA" is of record. There is no disclaimer or statement of acquired distinctiveness reflected in the TARR records for the remaining pleaded registrations. Opposition No. 91191601 13 In view of the submission by opposer of copies from the USPTO's TARR database of its pleaded registrations, there is no genuine dispute as to material fact and opposer has established its priority of use for the pleaded registered marks for the identified products, "laryngeal masks."10 See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). E. Likelihood of confusion Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In view of applicant's admissions in his answer and in his responses to opposer's first request for admissions, no genuine dispute of material fact exists with respect to the following DuPont factors: 1) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. While applicant attempts to distinguish the parties' products (in his answer and 10 We note too, as discussed earlier, applicant, in his answer, has admitted that opposer is the owner of its pleaded registrations, and they are valid and subsisting (paragraph Nos. 4 and 5 of the answer). Opposition No. 91191601 14 in his discovery responses), both parties have identified their goods as "laryngeal masks." Whether the parties' goods are related must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods. See Octocom Systems, Inc. v. Houston Computer Systems, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Opposer’s description of goods as set forth in the registrations is "laryngeal masks." The terminology "laryngeal masks" is broad enough to encompass applicant’s “supraglotic laryngeal mask combined with a cuffed esophageal tube.”11 Accordingly, there is no genuine dispute of material fact that the goods are legally identical. 2) The similarity or dissimilarity of established, likely- to-continue trade channels. Applicant has admitted that the parties' respective goods travel through the same channels of trade. Answer at paragraph No. 14; applicant's response to opposer's first request for admission No. 19. In any event, because the goods are legally identical, we must presume that 11 Supraglottic means "situated or occurring above the glottis." http://www.merriam-webster.com/medlineplus/supraglottic. Glottis refers to "the space between one of the true vocal cords and the arytenoid cartilage on one side of the larynx and those of the other side." http://www.merriam- webster.com/medlineplus/glottis. Laryngeal means "of, relating to, affecting, or used on the larynx. http://www.merriam-webster.com/medlineplus/laryngeal. Thus, applicant's use of the term "supraglottic" only provides more specificity with respect to his identified laryngeal masks but does not make the goods something completely different. The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Opposition No. 91191601 15 they travel in the same channels of trade. Octocom, 918 F.2d 937, 16 USPQ2d 1783, 1788. 3) The classes of consumers. [Generally, the conditions under which and buyers to whom sales are made refers to the degree of care.] Applicant has admitted that the parties' respective goods will be marketed to the same potential consumers, answer at paragraph No. 14, and to the same class of purchasers, namely, hospitals, medical professionals, doctors, and clinics. Responses to opposer's first requests for admission Nos. 20, 22-24. 4) The fame of the prior mark. Applicant has admitted that opposer has established goodwill in its marks, which have become well and favorably recognized by the relevant trade and public as identifying the laryngeal masks of opposer, answer at paragraph No. 6;12 that opposer's LMA marks are well-known trademarks within the medical field for laryngeal masks and that applicant knew this was so at the time he filed his application. Responses to opposer's first requests for admission Nos. 6 and 10. While this does not establish fame, we find that there is no genuine 12 Applicant qualified this admission by further averring that the "term LMA is widely and commonly used in medicine to define any type of laryngeal mask and not necessarily the ones specifically made be opposer." However, there is no evidence of record concerning this asserted "common use" in the field. The Board notes in passing that applicant did not submit such evidence with its untimely response to the summary judgment motion. A party responding to a motion for summary judgment may not rest on mere denials or conclusory assertions, but must proffer countering evidence. See TBMP § 528.01 (2d ed. rev. 2004). Thus, even had the Board considered applicant's untimely response, applicant had not offered any evidence to support his qualified admission in his answer. Opposition No. 91191601 16 dispute of material fact and opposer’s LMA marks are strong marks in the field. 5) The market interface between applicant and the owner of a prior mark. Applicant has admitted that he distributed laryngeal masks manufactured by opposer, or by opposer's related companies and predecessors in title, in Brazil prior to filing his application, answer at paragraph No. 18, through his employment or affiliation with a Brazilian company, response to opposer's first request for admission No. 2. Applicant admits he was aware of opposer's LMA marks and use of such marks at the time he filed his application; and that he knew of no other persons or entities selling, manufacturing, applying to register, or owning a registration for a mark consisting or incorporating the term LMA for laryngeal masks. Responses to opposer's first request for admissions No. 4 and 13-15. Applicant admits that he intends to distribute products under his C-LMA mark which will compete with opposer's products offered under its LMA marks. Response to first request for admission No. 21. In view of the foregoing, we find no genuine dispute of material fact exist with respect to relatedness of the parties' goods, the established likely-to-continue trade channels, classes of consumers, marketplace strength of opposer’s mark and applicant’s knowledge regarding opposer’s prior use of its mark, which are all in opposer's favor. Opposition No. 91191601 17 We turn now to the first enumerated DuPont factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Applicant consistently denies that the parties' marks are similar, asserting in his answer and explaining in his discovery responses that "LMA" is a suffix in his mark and suggests "laryngeal mask airway," while the letter "C" suggests the word "combined" because his patented product is a "combination artificial airway device and esophageal obturator." Applicant consistently asserts and explains that opposer uses "LMA" as a prefix on all its "composed trademarks." Nonetheless, of opposer's seven pleaded registrations, one is for the word mark LMA, and there is no disclaimer or claim of acquired distinctiveness. Opposer owns several other registered LMA marks, with other wording, and an LMA and design mark (for which a disclaimer of the term LMA is of record with respect to the latter registered mark only). On summary judgment, opposer introduced three additional LMA registered marks owned by opposer. There is no evidence of record indicating that LMA is a weak term. Applicant's mark is similar to opposer's marks in appearance. It incorporates opposer's LMA mark in its entirety, adding only a single letter ("C"), and incorporates the LMA component of opposer's composite marks. Each individual letter in LMA is pronounced separately, L-M-A, such that the parties' marks are similar in sound. While applicant asserts and Opposition No. 91191601 18 qualifies that LMA has meaning in the medical field, there is no evidence of record supporting this position. Thus, the parties' marks are similar in connotation because of the presence of the term LMA. Accordingly, there is no genuine dispute of material fact and the parties' marks are similar in appearance, sound and connotation. In view thereof, no genuine disputes of material fact existing as to opposer's standing and priority of use, and as to likelihood of confusion, opposer's motion for summary judgment is granted, the opposition is sustained, and registration to applicant is refused. ***