Dage-MTI, Inc. v. Medical Technology & Innovations Inc., Opposition 103
| Decision Date | 24 August 1999 |
| Docket Number | 606,Opposition 103 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
| Parties | Dage-MTI, Inc. v. Medical Technology & Innovations Inc., by change of name from Medical Technology, Inc.[1] |
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 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 opposition 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 vendor 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 dominated by "MTI," which is also the dominant portion of opposer's MTI (STYLIZED) mark and the entirety of opposer's MTI word mark; that both parties sell goods used in the field of ophthalmics ( 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 computerized 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 this purpose; that the trade channels for cameras that detect ocular abnormalities and television cameras do not overlap; that the relevant purchasers are careful, sophisticated 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 "television cameras" and therefore covered by the registrations, and opposer has not, by affidavit, indicated that the article 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 distinguished 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 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 U.S.P.Q.2d 1793 (Fed. Cir. 1987).
If opposer meets that initial burden, applicant must then present sufficient evidence to show an evidentiary conflict 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 U.S.P.Q.2d 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 U.S.P.Q.2d 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 material 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 applicant's mark, MTI PHOTOSCREENER (with "photoscreener" disclaimed), 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 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 material fact as to opposer's ownership of its pleaded subsisting 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 registrations. 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 U.S.P.Q. 108(CCPA 1974); Carl Karcher Enterprises Inc. v. Stars Restaurants Corp. 35 U.S.P.Q.2d 1125 (TTAB 1995); National Football League v. Jasper Alliance Corp., 16 U.S.P.Q.2d 1212 (TTAB 1990).
To determine whether there is a likelihood of confusion, 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...
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