Precedential No. 42: TTAB Grants Applicant's Contested, Pre-Trial Motion to Narrow Its Identification of Goods

Stryker Corporation filed an intent-to-use application to register the mark MICROFX, for "surgical instruments." Johnson & Johnson opposed, alleging likelihood of confusion with its registered mark MICROFIX for "suture anchors." Prior to trial, Stryker filed a motion under Rule 2.133, without opposer's consent, to amend its identification of goods to read: "surgical instruments, namely osteochondral drills, drill guides, and curettes used to create microfracture holes." The Board found that the "unique circumstances" of this case warranted granting of the motion. Johnson & Johnson v. Stryker Corporation, 109 USPQ2d 1077 (TTAB 2013) [precedential].

Under Rule 2.133(a), "An application subject to an opposition may not be amended in substance ... except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board." The Board will usually defer a ruling on such a motion until final decision. The circumstances presented here, however, "allow the Board to accept applicant's proposed amendment immediately," despite Johnson & Johnson's objection.

The Board first noted that the subject motion was timely filed, i.e., prior to trial. In considering the motion, the Board looks to the following requirements:

(1) the proposed amendment must serve to limit the broader identification of goods;

(2) applicant must consent to the entry of judgment on the grounds for opposition with respect to the broader identification of goods; and

(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 restrict their channels of trade and customers so as to introduce a substantially different issue for trial. See Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 964 (TTAB 1986); Int’l Harvester Co. v. Int’l Tel. & Tel. Corp., 208 USPQ 940, 941 (TTAB 1980).

Here, the first and third requirements were satisfied: the proposed amendment narrows the identification of goods, and the narrowing of the category of users restricts the channels of trade and the prospective customer base, so as to create a substantially different issue for trial.

The crucial question for the Board was whether Stryker unconditionally stated its willingness to accept judgment as to the broader range of goods. Its motion paper and its reply brief were inconsistent on that point. However, the reply brief indicated Stryker's intention to "obviate any doubt," and it clearly expressed its "desire to facilitate resolution of the other opposition to the involved application [which other opposition would be withdrawn by that opposer if the instant motion were granted]." The Board found that Stryker had expressed a 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."

In the "unique circumstances present here," the Board concluded that the second condition set forth above was satisfied.

The Board therefore granted Stryker's motion and accepted its consent to the entry of judgment as to the broader identification of goods. The Board entered judgment "with respect to the mark as applied to all goods encompassed by the broader description 'surgical instruments,' except as for the goods identified by the amended identification."

Proceedings were then resumed as to the amended identification of goods.

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TTABlog note: The Board noted that when the application is based upon use, the movant must meet a fourth condition: the specimens of record must support the goods, as amended, and applicant must prove at trial that its mark was in use with the remaining goods as of the relevant date as determined by the filing basis. See cases cited above.

Text Copyright John L. Welch 2013.