Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc.

• Decision Date: 18 August 2017
• Docket Number: 91219435
• Court: Trademark Trial and Appeal Board
• Parties: Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc.

Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc.

No. 91219435

United States Patent and Trademark Office, Trademark Trial and Appeal Board

August 18, 2017

Kirk M. Hallam, Esq. and Nicholas J. Hoffman, Esq. for Apollo Medical Extrusion Technologies, Inc.

Dirck J. Edge, Esq. for Medical Extrusion Technologies, Inc.

Before Quinn, Ritchie, and Shaw, Administrative Trademark Judges.

OPINION

Quinn Administrative Trademark Judge

Medical Extrusion Technologies, Inc. ("Applicant") filed an application to register on the Principal Register the mark MEDICAL EXTRUSION TECHNOLOGIES (in standard characters) for "polyurethanes in the form of sheets, films, pellets granules, and tubes for use in the manufacture of medical devices, medical diagnostic devices, artificial vascular grafts, stents, pacemaker leads, artificial heart pump diaphragms, catheters, drug delivery devices, orthopedic and spinal implants, blood glucose monitors, and blood gas analyzers" in International Class 17.^[1] The application includes a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).

Apollo Medical Extrusion Technologies, Inc. ("Opposer") opposed registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant's mark, as used in connection with Applicant's goods, is merely descriptive thereof. Further, Opposer claims that inasmuch as Applicant's proposed mark is highly descriptive, and that use of it has not been substantially exclusive, the Section 2(f) claim of acquired distinctiveness fails.

Applicant in its answer, denied the salient allegations of the notice of opposition.^[2]

Evidentiary Objections

Opposer took the testimony of Gregg Hallam, Opposer's vice president of manufacturing.^[3] 9 TTABVUE. Applicant objected to this deposition as improper rebuttal testimony, contending that the testimony should have been presented during Opposer's case-in-chief. Applicant also moved to strike the exhibits accompanying Opposer's notice of reliance. 14 TTABVUE. In support of the objections, Mr. Edge, Applicant's counsel, submitted his declaration and related exhibits. The Board, in an order dated May 12, 2016, deferred consideration of the evidentiary objections until final hearing. 17 TTABVUE.

By way of background, we note that the Board held a telephone conference with the parties on October 26, 2015, memorializing the conference in an order on October 27, 2015. Opposer did not serve pretrial disclosures due to counsel's oversight, and then on October 23, 2015, noticed two testimony depositions (including one of Mr. Hallam) to be taken on October 27, 2015, the last day of Opposer's testimony period. During the conference, and apparently as a result of the parties' agreement in lieu of extending the trial dates, "Oppos er withdrew the notices of testimony deposition at issue and indicated that it intended to file prior to the close of its testimony period a notice of reliance in which it makes of record documents that it planned to make of record by way of the testimony depositions. Accordingly, Opposer's testimony depositions noticed for October 27, 2015 shall not go forward." 5 TTABVUE 2.

We first turn to the notice of reliance. 6 TTABVUE. Applicant argues that although Internet evidence may be introduced in a notice of reliance, Opposer did not specify the relevance of each exhibit, but only generally indicated the relevance of the documents as a whole. Applicant asserts that this evidence, in any event, has little probative value, and is admissible only to show what has been printed, not the truth of what has been printed.

The objection is not well taken. First, as Applicant seems to acknowledge, Internet evidence is proper subject matter for introduction by way of a notice of reliance. (Exhibits 1-20). Trademark Rule 2.122(e)(2). And Exhibit 21 is taken from a printed publication, also proper subject matter of a notice of reliance. Trademark Rule 2.122(e)(1). Second, Applicant did not timely make its objection:

[t]he failure to properly "indicate generally the relevance of the material being offered" . . . is an evidentiary defect that can be cured by the propounding party as soon as it is raised by any adverse party, without reopening the testimony period of the propounding party. If the adverse party believes that the propounding party has not met the requirement to "indicate generally the relevance of the material being offered, " the adverse party must lodge an objection before the opening of the next testimony period following that in which the material was offered into the record, or risk a finding that any objection on this basis has been waived.

Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031, 1040 (TTAB 2010). See FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111 U.S.P.Q.2d 1234, 1237 (TTAB 2014); Trademark Rule 2.122(g).^[4] See generally TBMP § 707.02(b) (June 2017). Thus, Applicant's objection is waived. Further, and perhaps most importantly, Opposer did, in fact, refer to the general relevance of the documents as follows: "relevant to the highly descriptive nature of 'medical extrusion technologies'; the complete lack of exclusive use by Applicant in the five years prior to its claim of acquired distinctiveness; the nature of Applicant's application, as well as the channels of trade and customers for Applicant's goods and/or services." (emphasis in original). 6 TTABVUE 5. This statement of relevance is acceptable, and Applicant's admissibility objection is overruled.

Even though Applicant has questioned the probative value of this evidence, "[u]ltimately, the Board is capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations, and this precludes the need to strike the testimony and evidence." Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734, 1737 (TTAB 2014). Accordingly, we have considered all of the items listed in Opposer's notice of reliance, and have accorded each of them whatever probative value is appropriate.

Applicant also objected to the Hallam deposition as improper rebuttal testimony. Applicant raised its objection at the deposition, 9 TTABVUE 8-9, and reiterated the objection when it filed its brief on the case. Applicant contends that Opposer was precluded from taking any trial testimony during its case-in-chief due to the lack of pre-trial disclosures, and that Opposer has attempted to circumvent this situation by taking the rebuttal testimony deposition of Mr. Hallam that was originally noticed as a case-in-chief deposition. The original notice described the topics of his anticipated testimony as follows:

[T]he mere descriptiveness and lack of secondary meaning of the term "medical extrusions technology, " [the] deponent's interactions and communications with third parties relating to the term "medical extrusions technology, " packaging and marketing materials including "medical extrusions technology, " and Opposer's history. 15 TTABVUE 6

Opposer's notice to take the rebuttal testimony of Mr. Hallam described the topics as follows: "the lack of exclusive use of the term 'medical extrusions technologies' and lack of secondary meaning by Applicant." 15 TTABVUE 9.

Opposer claims that Applicant failed to cite any specific testimony that is improper, but rather based its objection on "the unremarkable fact that Opposer originally intended to depose Mr. Hallam during its case-in-chief before withdrawing that deposition." 18 TTABVUE 10-11. Opposer maintains that Mr. Hallam's testimony is entirely proper as rebuttal to deny, explain or discredit certain facts introduced by Applicant's witnesses.

The function of rebuttal evidence is "'to explain, repel, counteract, or disprove the evidence of the adverse party.'" Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 116 U.S.P.Q.2d 1869, 1883 (Fed. Cir. 2015) (citing Victor Gold, 28 Fed. Prac. & Proc. Evid. § 6164 (2d ed. 2015)). See ProMark Brands, Inc. and H.J. Heinz Co. v. GFA Brands, Inc., 114 U.S.P.Q.2d 1232, 1239 (TTAB 2015). We find that Mr. Hallam's testimony rebuts certain testimony and evidence introduced by Applicant in connection with the degree of descriptiveness and the claim of acquired distinctiveness. See Data Packaging Corp. v. Morning Star, Inc., 212 U.S.P.Q. 109, 113 (TTAB 1981) ("The fact that evidence might have been offered in chief does not preclude its admission as rebuttal."). It is not that unusual to have a witness noticed for both case-in-chief and rebuttal testimony, even if, as in this case, the deposition was only taken on rebuttal. Accordingly, Mr. Hallam's testimony constitutes proper rebuttal and the objection to the deposition is overruled.^[5] We have considered the rebuttal testimony in our determination of the merits of the opposition.

The Record and Briefs

The record consists of the pleadings; trial testimony, with related exhibits, taken by each party; and dictionary definitions, excerpts of third-party websites, a book excerpt, and articles retrieved from the Internet, all introduced by way of Opposer's notice of reliance.^[6] The parties filed briefs. Although Opposer originally requested an oral hearing, the request subsequently was deemed waived, and the case was submitted on brief.

Standing

"The facts regarding standing . . . are part of [a plaintiff's] case and must be affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely because of the allegations in its petition." Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982). To prove its standing to oppose the registration of allegedly merely descriptive wording that has not acquired distinctiveness, an opposer...