Johnson & Johnsonv.Stryker Corporation

Trademark Trial and Appeal Board

Dec 5, 2013

No. 91209134 (T.T.A.B. Dec. 5, 2013)

BUO
Mailed: December 5, 2013

Opposition No. 91209134

Johnson & Johnson

v.

Stryker Corporation

Before Taylor, Mermelstein and Bergsman, Administrative
Trademark Judges.

By the Board:
Stryker Corporation (“applicant”) filed an application
to register the mark MICROFX, for use in connection with
“surgical instruments.”1 Johnson & Johnson (“opposer”) has
opposed applicant’s registration based upon an alleged
likelihood of confusion between applicant’s applied-for
mark and opposer’s registered mark MICROFIX for use with
“suture anchors.”2
Now before the Board is applicant’s motion, filed June
13, 2013, to amend its identification of goods. By the

1 Application Serial No. 85571434, filed March 16, 2012, on an
intent-to-use filing basis under Trademark Act Section 1(b), 15
U.S.C. § 1051(b).

2 Registration No. 3052207, issued January 31, 2006, from an
application filed February 17, 2004.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91209134

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proposed amendment, applicant seeks to change the
identification of goods to:
Surgical instruments, namely osteochondral drills,
drill guides, and curettes used to create
microfracture holes.

(for ease of reference, additions are underlined).
Applicant’s motion was filed without the consent of
opposer, and opposer objected to the proposed amendment.3
Opposer asserts that “the facts here ‘do not allow the
Board either to exercise its discretion to enter the
amendment now or to defer determination of the proposed
amendment until final decision.’” Opp. Br., p.1 (quoting
Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1436
(TTAB 2007)). Opposer states that “[i]n the absence of an
unconditional election by Applicant to accept judgment with
respect to the broader range of goods, Opposer is entitled
to proceed with trial as to the goods as published.” Id.,
p.2 (emphasis in original). Applicant’s position is not
completely clear. While it says that it “has consented to
entry of judgment as to its broader recitation” Reply Br.,
p.3, it also states that if the Board does not grant its
motion, applicant should be allowed “the opportunity to try

3 Applicant has obtained consent to the amendment from Microflex
Corporation, which also opposed the application as published
(Opposition No. 91209129). That opposition is suspended pending
resolution of the motion to amend in this case, and applicant has
represented that Microflex will withdraw its opposition if the
amendment is entered. Motion Br., p.2.
Opposition No. 91209134

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its case as to both recitations,” with determination of the
proposed amendment deferred until final decision, citing
Trademark Rule 2.133 and TBMP § 514.03 (3d ed. rev.2 2013).
Id., p.4 (emphasis in original).
Before we address that potential ambiguity, we first
note that, inasmuch as the proposed amendment has been
brought prior to trial, the proposed amendment has been
timely filed, giving opposer fair notice and an opportunity
to contest the motion, as opposer has done. See Drive
Trademark Holdings, 83 USPQ2d at 1435. We also note that
the amendment is limiting in nature as required by
Trademark Rule 2.71(a).
Although the Board generally will defer determination
of an unconsented motion to amend the identification of
goods in a subject application until final decision, or
until the case is decided upon motion for summary judgment,
see Drive Trademark Holdings, 83 USPQ2d at 1435, the
circumstances presented here, as we explain below, allow
the Board to accept applicant’s proposed amendment
immediately, notwithstanding opposer’s objection. See
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ
955, 963 (TTAB 1986).
In determining whether to accept a proposed amendment
to an identification that, while contested, is otherwise
Opposition No. 91209134

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acceptable, the Board looks to see whether the following
circumstances are present:
1) the proposed amendment must serve to limit the
broader identification of goods or services;

2) applicant must consent to the entry of judgment
on the grounds for opposition with respect to the
broader identification of goods or services
present at publication;

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 services or restrict
their channels of trade and customers so as to
introduce a substantially different issue for
trial; and

4) where required to support the basis of the
subject application, any specimens of record must
support the goods or services as amended;4 and
applicant must then introduce evidence during its
testimony period to prove use of its mark with
the remaining goods or services prior to the
relevant date as determined by the application’s
filing basis. See Drive Trademark Holdings, 83
USPQ2d at 1435; Giant Food, 229 USPQ at 964;
Int’l Harvester Co. v. Int’l Tel. & Tel. Corp.,
208 USPQ 940, 941 (TTAB 1980).

4 This concerns whether the mark is based on use in commerce, in
which case the relevant date is the filing date of the
application, or in the case of an intent-to-use application which
has been converted to a use-based application through an
amendment to allege use, the relevant date is the filing date of
the amendment to allege use. Because the subject application was
filed on an intent-to-use filing basis under Section 1(b) of the
Trademark Act, and no allegation of use has been filed, this
circumstance is not relevant to this case.
Opposition No. 91209134

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Because the first and third circumstances can be
presented more succinctly, the Board will address those
first.
The first circumstance is present because the proposed
amendment permissibly narrows the identification as it was
articulated at publication.
Skipping to the third circumstance, we find that too
is present because applicant’s proposed amendment narrows
the category of users by specifying the use of its goods in
osteochondral treatments. This has the effect of
restricting the channels of trade and prospective customers
of the goods so as to introduce a substantially different
issue for trial. See Int’l Harvester, 208 USPQ at 941
(applicant’s proposed amendment found to permissibly
restrict the scope of the goods to the extent that it
narrowed the category of users and, therefore, the function
for which the goods may normally be used). We disagree
with opposer’s assertion that “[t]he proposed amended
identification of goods is within the scope of the initial
identification of goods; thus, their general character has
not changed.” Opp. Br., p.2. The standard is not that the
goods themselves be changed so as to be outside the scope
of the goods identified at publication. Indeed, an
application may only be amended “to clarify or limit, but
Opposition No. 91209134

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not to broaden, the identification of goods and/or
services.” See In re Swen Sonic Corp., 21 USPQ2d 1794,
1795 (TTAB 1991). TMEP § 1402.06 (8th ed. rev.3 2013). We
cannot accept opposer’s interpretation of this factor, as
it would require that every unconsented amendment violate
the first circumstance in an attempt to satisfy the third.
We therefore find the third circumstance to be present.
Whether the second circumstance is present is the
principal question before the Board, as the gravamen of
opposer’s contention is that applicant has only
conditionally stated its willingness to accept judgment as
to the broader range of goods. Applicant’s statements
about its willingness to accept judgment are far from
clear. In its motion, applicant stated that “Applicant …
notes that it is willing to consent to entry of judgment on
the basis of its broader recitation, provided that
registration is granted as to the proposed narrower
recitation.” Motion, p.5 (emphasis added). Footnote four
of the motion further states that:
Applicant reserves the right to accept
registration based on the initial recitation,
however, depending on the Board's ruling. TBMP
§ 514.03 (stating, “[i]f . . . the Board
ultimately finds that the defendant is entitled
to registration even without the proposed
restriction, defendant will be allowed time to
indicate whether it still wishes to have the
restriction entered”).
Opposition No. 91209134

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Id. n.4.

However, applicant’s reply brief makes a seemingly
inconsistent statement with regard to entry of judgment as
to the broader scope of the goods, stating:
[f]or the avoidance of doubt, Applicant states
that it will consent to entry of judgment on the
basis of its broader recitation. But, if this
motion is not granted immediately, Applicant
respectfully requests the opportunity to try its
case as to both recitations in the manner
permitted by 37 C.F.R. § 2.133 and TBMP § 514.03.

App. Reply Br., p.4 (emphasis added). Applicant then
says this:
… should the Board instead permit Applicant's
proposed amendment at this time and [thereby]
allow resolution of the other opposition
proceeding …, Applicant consents to entry of
judgment as to its broader recitation
immediately.

Id. (emphasis added).

As we read it, applicant’s statement in its initial
motion papers appears to condition its acceptance of
judgment on the Board’s grant of registration,5 and in
footnote four of its motion faintly invokes the Board’s
authority under Section 18 of the Trademark Act, 15 U.S.C.
§ 1068, to determine whether a registration may be granted

5 We assume applicant meant that the condition was the Board’s
grant of judgment in applicant’s favor. The Board does not
grant/issue registrations, and even if applicant prevails in this
proceeding, it must still complete the application process by
filing an acceptable statement of use.

Opposition No. 91209134

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as to a broader identification or in the alternative an
identification with a proposed restriction. In contrast,
applicant’s reply brief conditions its acceptance of
judgment as to the broader scope of goods on the Board’s
acceptance of its proposed amended identification.
However, inasmuch as we cannot both accept applicant’s
reservation to be heard at trial on both its broader
identification and its proposed narrowed version, and
accept its immediate concession to judgment on the broader
identification, we must reconcile the inconsistency.
Given applicant’s statement in its reply brief that
its intention was to obviate any doubt, as well as the
clear expression of applicant’s desire to facilitate
resolution of the other opposition to the involved
application, we believe that the statements made in the
reply brief express applicant’s 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. Thus, we believe that, in the unique
circumstances present here, the second Drive Trademark
Holding condition is satisfied.
Accordingly, we grant applicant’s motion to amend the
identification of goods in its application and accept
Opposition No. 91209134

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applicant’s consent to judgment with respect to the broader
identification of goods. Consequently, we enter judgment
in favor of opposer with respect to the mark as applied to
all goods encompassed by the broader description “surgical
instruments,” except for the goods identified by the
amended identification. Applicant’s proposed
identification, “Surgical instruments, namely osteochondral
drills, drill guides, and curettes used to create
microfracture holes,” is accepted and is now the operative
identification of goods in the involved Application Serial
No. 85571434,6 and this case will proceed to trial on that
identification.7
The proceeding is resumed, and discovery, disclosure
and trial dates are reset as follows:
Expert Disclosures Due 3/4/2014
Discovery Closes 4/3/2014

6 Applicant’s proposed amendment will be entered and the USPTO’s
records will be updated in due course.

7 To be clear, applicant will only be heard on its amended
identification of goods going forward. The Board will not
entertain a reservation to be heard on the broader scope of goods
at trial or motion for summary judgment where applicant has
explicitly consented to entry of judgment as to those goods. Cf.
Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825 (TTAB
2013) (applicant’s motion to amend was deferred until trial and
construed as an amendment to its answer to assert an affirmative
defense under Section 18, restricting its identification in order
to obviate likelihood of confusion, where applicant (i) did not
explicitly consent to judgment, (ii) requested that the Board
alternatively consider its request to restrict its goods, and
(iii) the issue was implicitly tried by the parties in their
briefing).
Opposition No. 91209134

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Plaintiff's Pretrial Disclosures 5/18/2014
Plaintiff's 30-day Trial Period Ends 7/2/2014
Defendant's Pretrial Disclosures 7/17/2014
Defendant's 30-day Trial Period Ends 8/31/2014
Plaintiff's Rebuttal Disclosures 9/15/2014
Plaintiff's 15-day Rebuttal Period Ends 10/15/2014

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.