Covidien AG Corporationv.Hansen Medical, Inc.

Trademark Trial and Appeal Board

Feb 21, 2014

No. 91204063 (T.T.A.B. Feb. 21, 2014)

Baxley Mailed: February 21, 2014

Opposition No. 91204063

Covidien AG Corporation

v.

Hansen Medical, Inc.

Before Cataldo, Bergsman, and Wellington,
Administrative Trademark Judges.

By the Board:

Hansen Medical, Inc. (“applicant”) filed an
application to register the mark HANSEN MEDICAL MAGELLAN in
standard character form for
[s]urgical instruments for vascular surgery,
endoluminal surgery, and minimally invasive
surgeries or interventional procedures, namely
robotic catheters; surgical robots for use in the
human body; flexible medical robotic instruments
for use in vascular surgery, endoluminal surgery,
and minimally invasive surgeries or
interventional procedures; computerized surgical
manipulation system comprised of surgeon's
console and master control for vascular surgery,
endoluminal surgery, and minimally invasive
surgeries or interventional procedures

in International Class 10.
Covidien AG Corporation (“opposer”) opposes
registration of applicant’s mark on the ground of
likelihood of confusion with its previously registered
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91204063

2
marks MAGELLAN in standard character form for “[s]urgical,
medical and veterinary apparatus and instruments, namely
injection devices and their components for all manner of
injection collection and transfer of tissues and fluids” in
International Class 101 and MONOJECT MAGELLAN in typed form2
for “[s]afety [n]eedle[s] and [s]yringe for medical use” in
International Class 10.3 Applicant, in its answer, denied
the salient allegations of the notice of opposition.
The following motions are pending before the Board:
(1) opposer’s motion (filed December 13, 2013) for partial
summary judgment on the issues of standing, priority and
similarity between applicant’s mark and its pleaded
MAGELLAN mark; and (2) opposer’s motion (filed February 7,
2014) to strike applicant’s surreply brief in opposition to
the motion for partial summary judgment.
The Board notes initially that surreply briefs are
prohibited by Trademark Rule 2.127(a). That is, as the
nonmovant, applicant’s opposition to opposer’s motion for

1 Registration No. 3577925, issued February 17, 2009.

2“Prior to November 2, 2003, ‘standard character’ drawings were
known as ‘typed’ drawings. The mark on a typed drawing had to be
typed entirely in capital letters. A typed mark is the legal
equivalent of a standard character mark.” Trademark Manual of
Examining Procedure (“TMEP”) § 807.03(i) (Oct. 2013).

3 Registration No. 2774118, issued October 14, 2003, Section 8
affidavit accepted, Section 15 affidavit acknowledged.

Opposition No. 91204063

3
partial summary judgment is limited to its brief in
response to that motion. Accordingly, we have not
considered applicant’s surreply brief in deciding the
motion for partial summary judgment. In view thereof,
opposer’s motion to strike is moot.
To the extent that opposer, in its reply brief, newly
alleges deficiencies in some of applicant’s responses to
discovery requests, such allegations are not properly
raised in a reply brief in support of a motion on summary
judgment. Rather, opposer’s remedy is to file a motion to
compel discovery and/or to test the sufficiency of
responses to requests for admission after having made a
good faith effort to resolve the parties’ discovery
dispute. See Trademark Rules 2.120(e) and (h); TBMP
Sections 523 and 524 (3d ed. rev.2 2013) and authorities
cited therein.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes as to
material facts, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). In deciding
motions for summary judgment, the Board must follow the
well-established principles that, in considering the
propriety of summary judgment, all evidence must be viewed
in a light favorable to the non-movant, and all justifiable
Opposition No. 91204063

4
inferences are to be drawn in the nonmovant’s favor. The
Board may not resolve disputes of material fact; it may
only ascertain whether such disputes are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The purpose of a motion for summary judgment is
judicial economy, that is, to avoid an unnecessary trial
where there is no genuine dispute of material fact and more
evidence than is already available in connection with the
summary judgment motion could not reasonably be expected to
change the result in the case. See TBMP Section 528.01 (3d
ed. rev.2 2013). Opposer’s motion for partial summary
judgment, filed on the day before the due date for its
pretrial disclosures, does not serve judicial economy and
is instead an inefficient use of the Board’s limited
resources that will both increase the cost of litigation
and delay resolution of this case. By such motion, opposer
is requiring the Board to review the record herein at least
twice to address the issues of this case in piecemeal
fashion in separate decisions, i.e., the decision on the
pending motion for partial summary judgment and another on
Opposition No. 91204063

5
a subsequent summary judgment motion prior to trial or the
final decision after trial. Because raising the issues
presented by the motion for partial summary judgment does
not significantly simplify the issues in this case for
trial, the Board prefers that parties brief and establish
those issues at trial. Accordingly, the filing of motions
for partial summary judgment under circumstances such as
those herein, while technically permissible under the
Trademark Rules, is viewed with great disfavor.
In support of its motion, opposer has submitted copies
of electronic TESS and TSDR reports from the USPTO website
for Registration Nos. 2774118 and 3577925.
Turning to the merits of the motion for partial
summary judgment, we first determine opposer’s standing to
bring this opposition proceeding. Standing is a threshold
issue that must be proven by a plaintiff in every inter
partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999). Although applicant has made
arguments concerning opposer’s standing,4 we find that

4 Applicant alleges in its brief in response that opposer did not
explain documents filed with the USPTO’s Assignment Branch
records in connection with pleaded registrations, or whether, as
a Swiss corporation, opposer is relying upon use of the pleaded
marks in the United States by licensees, corporate affiliates or
other authorized entities. However, applicant did not include
any affirmative defenses in its answer and did not file a
compulsory counterclaim attacking the validity of either of the
pleaded registrations. Accordingly, these allegations are not
Opposition No. 91204063

6
opposer’s standing to bring this opposition proceeding
plainly is established by the copies of TARR and TESS
printouts for pleaded Registration Nos. 2774118 and 3577925
that opposer submitted as exhibits to its motion for
partial summary judgment. Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 189-
190 (CCPA 1982); Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (pleaded
registration made of record establishes standing). Such
copies confirm opposer’s ownership and the current status
of those registrations. Accordingly, we find no genuine
dispute of material fact that opposer’s standing has been
established.
Turning to the question of priority, applicant
concedes that priority is not an issue herein based on
opposer’s submission of copies of electronic TESS and TSDR
reports from the USPTO website for Registration Nos.
2774118 and 3577925. The submission of such copies removes
the issue of priority with respect to the goods identified
therein. King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Accordingly,
we find no genuine dispute of material fact that opposer’s

properly before the Board and cannot be relied upon in defense of
the motion for partial summary judgment. See Trademark Rules
2.106(b)(2)(1) and 2.114(b)(2)(i); TBMP Section 313.01 and
528.07(b).
Opposition No. 91204063

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priority is not at issue herein with respect to the pleaded
registrations and the goods identified therein.
Regarding the similarity of applicant’s mark and
opposer’s pleaded MAGELLAN mark, we note that the addition
of a trade name or house mark to one of two otherwise
confusingly similar marks will not generally serve to avoid
a likelihood of confusion between them, but may instead
aggravate potential confusion between marks. See In re
Cosvetic Laboratories, Inc., 202 USPQ 842, 845 (TTAB 1979).
However, this is not an inflexible rule, and we must
consider the marks in their entireties in deciding whether
marks are confusingly similar. See id. With this in mind,
and bearing in mind both that the Board may not resolve
disputes of material fact in deciding motions for summary
judgment and that we must draw all inferences in
applicant’s favor as the nonmoving party, we find that
there is a genuine dispute as to whether the involved
HANSEN MEDICAL MAGELLAN and MAGELLAN marks are confusingly
similar. Based on the foregoing, the motion for partial
summary judgment is granted on the issues of standing and
priority, but is otherwise denied.5

5 Evidence submitted in connection with the motion for summary
judgment is of record for the consideration of that motion only.
To be considered at final hearing, any such evidence must be
properly introduced in evidence during the appropriate trial
period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
Opposition No. 91204063

8
In briefing the motion for partial summary judgment,
each party accuses the other of dilatory conduct. The
parties are expected to move this case forward to trial
without undue delay.
Proceedings herein are resumed. Remaining dates are
reset as follows.

Plaintiff's Pretrial Disclosures Due 3/3/2014
Plaintiff's 30-day Trial Period Ends 4/17/2014
Defendant's Pretrial Disclosures Due 5/2/2014
Defendant's 30-day Trial Period Ends 6/16/2014
Plaintiff's Rebuttal Disclosures Due 7/1/2014
Plaintiff's 15-day Rebuttal Period Ends 7/31/2014

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days
after completion of the taking of testimony. Trademark
Rule 2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
If either of the parties or their attorneys should
have a change of address, the Board should be so informed
promptly.

USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB
1983); American Meat Institute v. Horace W. Longacre, Inc., 211
USPQ 712 (TTAB 1981).