Midmark Corp.v.Ritter-IBW Dental-systeme GmbH

Trademark Trial and Appeal Board

Mar 15, 2002

No. 92025720 (T.T.A.B. Mar. 15, 2002)

3/15/02
Hearing: Paper No. 40
October 11, 2001 TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Midmark Corporation
v.
Ritter-IBW Dentalsysteme GmbH
_____

Cancellation No. 25,720
_____

Thomas W. Flynn and Steven D.A. McCarthy of Biebel & French
for Midmark Corporation.

J. Scott Evans of Adams, Schwartz & Evans for Ritter-IBW
Dentalsysteme GmbH.
_____

Before Simms, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:
Midmark Corporation has petitioned to cancel the
registration owned by Ritter-IBW Dentalsysteme GmbH for the
mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 25,720
2
for “dental, medical and surgical equipment and appliances,
namely, foot and motor-pump operated chairs and tables;
stools; equipment stands or units; dental and bone surgery
engines; dental handpieces; cuspidors; syringes; cauteries;
pulp testers; mouth lamps and mirrors; examination,
treatment and surgical tables; sterilizers; x-ray machines;
electrosurgical apparatus; diathermy lights; office lights
for dental and medical use; air compressors for dental and
medical use; and lathes for dental and medical use.”1 As
grounds for cancellation, petitioner alleges that it
intends to use the mark RITTER in connection with dental
examination chairs and other dental equipment; that it has
filed an application, Serial No. 75/170,487, to register
the mark RITTER for such goods which is likely to be
rejected on the basis of respondent’s registration; and
that respondent’s mark has been abandoned due to nonuse
with no intent to resume use.
Respondent, in its answer, has denied the salient
allegations of the petition.
The record consists of the pleadings; the file of the
involved registration; trial testimony, with related
exhibits, taken by each party; a certified copy of a

1 Registration No. 853,719, issued July 30, 1968; renewed.
Cancellation No. 25,720
3
registration owned by petitioner,2 an assignment relating
thereto, a certified copy of an application owned by
petitioner,3 an Office action relating thereto,4 and answers
to certain of petitioner’s interrogatories, all introduced
by way of petitioner’s notice of reliance; and answers to
certain of respondent’s interrogatories relied upon in
respondent’s notice of reliance.5 Both parties filed

2 Registration No. 1,451,997, issued August 11, 1997 pursuant to
Section 2(f) of the Trademark Act, of the mark RITTER for
“medical products, equipment and appliances, namely, physicians’
examination tables, proctology tables, podiatry chairs and
tables, stools, physicians’ equipment cabinets, stands, units and
counters, and accessories and replacement items and parts
therefor”; Sections 8 and 15 affidavits filed.
3 Application Serial No. 75/170,487, filed September 23, 1996, to
register the mark RITTER for “dental examination chairs, dental
handpieces, sterilization units for dental instruments, dental
articulators, dental bite trays, dental impression trays, and
surgical and medical examination lights.”
4 The Office, on October 2, 1997, suspended action on the
application pending the disposition of this cancellation
proceeding.
5 Petitioner filed, on October 26, 2001 (i.e., after the oral
hearing), a paper captioned “newly discovered evidence.”
Petitioner asserts that respondent has been in bankruptcy in
Germany since January 10, 2001, and that this fact goes to
respondent’s lack of intent to resume use. Respondent filed a
response, wherein respondent admits that it filed for bankruptcy
in January 2001, but that this fact is irrelevant to whether
respondent abandoned its mark on or before the date of the filing
of the petition for cancellation (November 19, 1996). Respondent
also asserts that the bankruptcy filing supports its argument
that its efforts to use the RITTER mark were hampered by on-going
financial concerns, and that any nonuse of the RITTER mark after
November 19, 1996 is excusable.
Inasmuch as the evidence was filed after the close of trial, we
decline to consider it. We hasten to add that, in any event,
even if considered, it is not persuasive of a different result.
Cancellation No. 25,720
4
briefs6 and both were represented by counsel at an oral
hearing before the Board.7
Before turning to the merits of this case, we need to
address the parties’ misconception (made apparent by their
briefs and at oral argument), regarding the relevant time
period that may be considered in determining the
abandonment issue herein. The petition for cancellation
sets forth a broadly-worded claim of abandonment, that is,
respondent has abandoned the registered mark “by
discontinuing use of said mark with no intent to resume
said use.” No specific time period of abandonment was set
forth. The undisputed date of respondent’s last sale is
January 12, 1996 (see below); the petition was filed on
November 19, 1996. Although respondent has couched some of
its arguments in terms of nonuse between the date of the
last sale and the date of filing of the petition, the Board
may consider evidence of nonuse even through the end of
trial. And, indeed, respondent itself has testified about
events as recent as the year 2000 in its attempt to show
that any nonuse was not accompanied by an intent not to
resume such use. As noted above, the abandonment claim as

6 Petitioner, in its brief (footnotes 1 and 2), renewed certain
evidentiary objections. Because the evidence is relevant to our
determination of the merits herein, the objections are overruled.
We have considered all of the evidence in reaching our decision.
7 Respondent’s motion to suspend, filed August 28, 2001, is moot.
Cancellation No. 25,720
5
pleaded in the petition for cancellation is not restricted
to any particular time frame. Thus, the issue of
abandonment of respondent’s mark during the time after the
filing of the petition is an issue that was impliedly tried
by the parties. Cf.: P.A.B. Produits et Appareils de
Beaute v. Satinine Societa In Nome Collettivo di S.A. e.M.
Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA 1978)
[registrant that proved use within two years preceding date
of petition in response to allegation of nonuse “for two
consecutive years immediately prior hereto” and did not
learn that record “would suggest” nonuse over two year
period running beyond petition date, and that this nonuse
constituted prima facie abandonment that had not been
rebutted, so that mark was deemed abandoned, until Board
rendered its opinion, was deprived of procedural due
process rights].
Respondent’s mark was in jeopardy from the admitted
date of last use, January 12, 1996, and this proceeding, as
shown by the way the parties tried the case, did not stop
the later years of nonuse from running against respondent.
Accordingly, we have based our decision on the entire
record adduced through the time of trial, including
evidence of events up to and including the year 2000 which
bear on the abandonment claim.
Cancellation No. 25,720
6
FACTS
The material facts surrounding the activities of
respondent are undisputed. Rather, the controversy in this
case centers on the legal implications that arise from
those facts.
The record establishes that both parties trace their
claims to the RITTER mark back to the Ritter Dental
Manufacturing Co., organized around 1893. In the words of
respondent, “the RITTER trademark for dental products and
Registration 813,719 have a tortured history.” (brief, p.
2) In the 1920’s, Ritter Dental Manufacturing Co. founded
a subsidiary, Ritter AG, to manufacture and sell RITTER
products in Europe. The involved registration was obtained
in 1968 by a successor to Ritter Dental Manufacturing Co.,
namely Ritter Pfauder Corporation. In 1968, Ritter Pfauder
Corporation merged with Taylor Instruments Companies and
changed its name to Sybron Corporation. In a 1985
agreement, Sybron Corporation assigned the registration to
Ritter AG, and provided that Ritter AG use RITTER only on
dental products. Ritter AG subsequently entered into
bankruptcy in Germany, and then was purchased out of
bankruptcy by Ritter GmbH. The purchase provided that
Ritter GmbH took title to the involved registration. In
1992, Ritter GmbH formed a subsidiary corporation in the
Cancellation No. 25,720
7
United States by the name of Ritter Dental Equipment, Inc.
In 1995, Ritter GmbH went bankrupt, and in the same year,
was purchased out of bankruptcy by Ritter-IBW Dentalsysteme
GmbH, and the involved registration was assigned to the
present respondent.
Shortly after acquiring Ritter GmbH, respondent
determined that the financial difficulties of Ritter GmbH
would require the dismantling of the United States
subsidiary, Ritter Dental Equipment, Inc. Ritter Dental
Equipment, Inc.’s last sale of dental equipment under the
mark RITTER was made on January 12, 1996. Around the time
the subsidiary ceased business, its president made
arrangements for an unrelated entity, Four Star Dental
Equipment Service, to provide repair service for
previously-sold RITTER dental equipment in the United
States. Mr. Reiling testified that respondent shipped to
the United States replacement parts for its products twice
in November 1996.
Although Sybron Corporation assigned the RITTER mark
and registration for dental products to Ritter AG in 1985,
Sybron Corporation continued to sell medial equipment under
the RITTER mark through a subsidiary corporation, Libel-
Flarscheim Company. Libel-Flarscheim Company sold some of
its medical equipment to Midmark Corporation, petitioner
Cancellation No. 25,720
8
herein, and Midmark continues to sell the equipment under
the RITTER mark. As noted above, petitioner owns, by way
of assignment from Libel-Flarscheim, Registration No.
1,451,997 for the mark RITTER for “medical products,
equipment and appliances, namely, physicians’ examination
tables, proctology tables, podiatry chairs and tables,
stools, physicians’ equipment cabinets, stands, units and
counters, and accessories and replacement items and parts
therefor.”
As indicated above, the last sale of respondent’s
RITTER dental equipment occurred in January 1996. In the
next month, February 1996, Peter Reiling, respondent’s
export manager, visited the United States and attended the
Mid-Winter Meeting of the Chicago Dental Society.
According to Mr. Reiling, this meeting is a large dental
trade show where manufacturers and suppliers exhibit their
dental equipment. The purpose of Mr. Reiling’s trip was
“to find out and use the machine, to settle Ritter Dental
Equipment, to close Ritter Dental Equipment, and especially
to avoid bankruptcy of Ritter Dental Equipment, Inc.”
(dep., p. 12). Mr. Reiling testified that he met with the
former president of Ritter Dental Equipment, Inc., Richard
Koch, and respondent’s attorney in the United States, Erik
Groves. Mr. Reiling also indicated that respondent handed
Cancellation No. 25,720
9
out brochures at the meeting, and contacted at least three
dental equipment companies to see about the possibility of
a joint venture. (Reiling dep., p. 13). Respondent did
not rent a booth at the meeting and did not display or
offer any dental equipment for sale there. Mr. Reiling was
asked what respondent learned at the meeting about the
prospects for sales of its products in the U.S. market
(dep., pp. 18-19):
Well, we realized again that the
present equipment was not so--not so
appropriate for the American market,
price wise, technical wise. We have a
very high standard of technology, and
normally they look for more simpler
units, which of course also cheaper
implies.

Respondent met with representatives of the three companies
it had contacted. After the meetings, Mr. Groves followed
up with letters to the three companies, reiterating
respondent’s continued interest in a joint venture. As a
result, respondent’s general manager, Hans Wünschel,
traveled in May 1996 to the United States to meet with one
of the companies, Matrix Medical, Inc. According to Mr.
Groves, discussions “never got to the actual negotiation
phase.” (dep., 33). Mr. Wünschel also visited “at least”
two dental practices “where Ritter products had been sold
to follow up with the dentists about the product.” (Groves
Cancellation No. 25,720
10
dep., p. 19). Mr. Reiling testified that “some shipments
of spare parts were made afterwards” to these dentists.
(dep., p. 20, exs. 9-11).
In February 1997, Mr. Wünschel attended the Mid-Winter
Meeting of the Chicago Dental Society on behalf of
respondent. Prior thereto, respondent sent letters to
three dental equipment companies in the hope of generating
interest in its products. The letters began as follows:
“We hope that the name of Ritter is still known to you
although in recent years we have lessened our business in
the United States.” Respondent displayed a “multimedia
cart system” bearing the RITTER mark at a booth maintained
by an unrelated entity, Cygnus Imaging. In addition, Mr.
Wünschel met with a representative of another company
(Beaver State Dental) to discuss joint venture
possibilities between the two, but nothing ever developed.
Cygnus Imaging also rented a booth at a dental trade
show held in Washington, D.C. in October 1997, and allowed
respondent to display its multimedia cart at the show.
Respondent itself rented booths at the February 1998,
February 1999 and February 2000 Mid-Winter Meetings of the
Chicago Dental Society where respondent displayed its
“dental unit” and the “multimedia cart system.” Product
literature was made available at the booths. Mr. Reiling
Cancellation No. 25,720
11
testified that one of the reasons for the trade show
appearances was “to show that Ritter is still present,”
(dep., p. 39), and “to show that Ritter’s still alive.”
(dep., p. 47). Mr. Reiling estimated that the trade show
appearances cost $8,000-$12,000 each. Other than the trade
show appearances, respondent has not promoted its product
in the United States.
Mr. Reiling maintains that respondent was in a
position to fill any orders for its equipment, and that
there never were any discussions to discontinue sales in
the United States.
ANALYSIS
A federal registration of a trademark may be canceled
if the mark is abandoned. Section 45 of the Trademark Act
provides, in pertinent part, that a mark is abandoned when
the following occurs:
When its use has been discontinued with
intent not to resume such use. Intent
not to resume may be inferred from
circumstances. Nonuse for three
consecutive years shall be prima facie
evidence of abandonment. “Use” of a
mark means the bona fide use of that
mark made in the ordinary course of
trade, and not made merely to reserve a
right in a mark.

A petitioner claiming abandonment has the burden of
establishing the case by a preponderance of the evidence.
Cancellation No. 25,720
12
Introduction of evidence of nonuse of the mark for three
consecutive years constitutes a prima facie showing of
abandonment and shifts the burden to the party contesting
the abandonment to show either evidence to disprove the
underlying facts triggering the presumption of three years
nonuse, or evidence of an intent to resume use to disprove
the presumed fact of no intent to resume use. Imperial
Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14
USPQ2d 1390 (Fed. Cir. 1990); Cerveceria Centroamericana
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307 (Fed. Cir. 1989); and Stromgren Supports, Inc. v. Bike
Athletic Company, 43 USPQ2d 1100 (TTAB 1997). The burden
of persuasion remains with the petitioner to prove
abandonment by a preponderance of the evidence. On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000).
We first turn to consider petitioner’s standing to
bring the petition for cancellation. Of record is a
certified copy of petitioner’s Registration No. 1,451,997
for the mark RITTER for, among other things, “physicians’
examination tables, proctology tables, podiatry chairs and
tables, [and] stools.” Petitioner also made of record a
certified copy of its application Serial No. 75/170,487,
filed September 23, 1996, to register the mark RITTER for
Cancellation No. 25,720
13
“dental examination chairs, dental handpieces,
sterilization units for dental instruments, dental
articulators, dental bite trays, dental impression trays,
and surgical and medical examination lamps.” Petitioner
further introduced a certified copy of an Office action
dated October 2, 1997 wherein action on petitioner’s
application was suspended pending the disposition of this
cancellation proceeding.
We find that the evidence of record establishes that
petitioner has standing, that is, that petitioner has a
real interest in the outcome of this proceeding, and that
petitioner has a reasonable belief of damage. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
The record shows that only one of respondent’s dental
units was sold between January 1996 and October 2000 (the
date of the close of respondent’s testimony period), the
last sale taking place on January 12, 1996. Although there
were two shipments of spare parts in November 1996, the
simple fact remains that respondent’s dental unit, that is,
the product covered by the involved registration, has not
been the subject of a sale since January 12, 1996.
Further, replacement parts (such as the “PC board”, Reiling
dep., p. 21) are not listed in the identification of goods
in the involved registration. Likewise, the “multimedia
Cancellation No. 25,720
14
cart system,” the subject of two shipments to Cygnus
Imaging for display at Cygnus Imaging’s booths at the 1997
meetings in Chicago and Washington, does not appear to be
encompassed within the identification of goods in
respondent’s registration.8 See: Imperial Tobacco Ltd. v.
Philip Morris Inc., supra, [marketing strategy to sell
“incidental” goods (rather than the goods listed in the
registration) did not excuse nonuse of mark on listed
goods]. Cf.: On-line Careline Inc. v. America Online
Inc., supra, [registered mark was used “in accordance with
the registration,” hence, no abandonment].
It has been clearly established that the period of
nonuse of the mark is almost five years. Thus, the
critical issue in this case is whether the use as of
January 12, 1996 was discontinued with intent not to resume
use. We find that the circumstances surrounding
respondent’s nonuse warrant a finding that the nonuse was
accompanied by an intent not to resume use of the mark
RITTER.
Although respondent appeared at six trade shows (one
in each of the years 1996, 1998, 1999 and 2000, and two in
1997), not even a single sale was consummated. Further,

8 Such computerized hardware undoubtedly did not even exist when
the registration issued in 1968.
Cancellation No. 25,720
15
although respondent contacted a few entities in the trade
regarding the possibility of a joint venture, there were
virtually no follow-up discussions, and not a single joint
venture was ever formed. Mr. Reiling testified that
respondent was developing a new strategy for marketing its
dental unit in this country, “to find out how we can
continue the presence in the American market.” (dep., p.
48). Mr. Reiling conceded, however, that selling its
equipment in this country is “very hard” (dep., p. 66).
Mr. Reiling reiterated this thought when he stated that
when respondent took over from its bankrupt predecessor in
1995, “it’s [a] very critical situation to start after
bankruptcy. So you need to convince people again to
cooperate, and it’s hard work. And that’s also why I’m
here because in America we are [a] foreign company and the
work is even harder and it takes a long time to enter
again.” (dep., p. 72).
Respondent does not own or lease any land, nor does it
have a permanent place of business in the United States.
It has no employees or business representatives in this
country. Although Mr. Reiling testified that respondent
could fulfill an order for its dental unit if such order
were placed, it is clear that there was no market for the
product.
Cancellation No. 25,720
16
In this connection, the most telling facts regarding
respondent’s intent not to resume use involve respondent’s
recognition that its dental unit, that is, the product
specifically identified in the involved registration, was
not a viable product in the United States market. As
indicated earlier, Mr. Reiling stated that respondent
“realized again that the present equipment was not so--not
so appropriate for the American market, price wise,
technical wise” and that American dentists normally “look
for more simpler units, which of course also cheaper
implies.” (dep., pp. 18-19) In response to a question as
to whether respondent had designed any equipment
specifically for the United States, Mr. Reiling answered:
“Not yet. But it’s clear that we need something.” (dep.,
p. 68).
The circumstances convince us that respondent’s
activities between 1996-2000 were sporadic in nature and
were only casual, half-hearted attempts to consummate a
sale. At best, respondent’s activities are consistent with
a maintenance program, in Mr. Reiling’s words, “to show
that Ritter’s still around,” rather than the bona fide use
of the mark in the ordinary course of trade. Given
respondent’s explicit recognition that its dental equipment
was ill-suited to the American market, respondent’s failure
Cancellation No. 25,720
17
to address this problem is troublesome. Respondent never
undertook any design changes to make its equipment
marketable, with the result of not even a single sale
during a period running almost five years. Rather,
respondent merely made an appearance at a single trade show
per year (two in 1997), with little more accomplished than
letting others know that “Ritter is still present.”
(Reiling dep., p. 39). See: Rivard v. Linville, 133 F.3d
1446, 45 USPQ 1374, 1377 (Fed. Cir. 1998) [“His
[respondent’s] actions are not those that a reasonable
businessman would take pursuant to a plan to use the
mark.”]. We agree with petitioner’s assessment that
respondent’s “lack of interest in developing products which
would meet demand in the United States, despite knowledge
of a lack of demand for its current products, is
inconsistent with an intent to resume use of the abandoned
mark in this country.” (reply brief, p. 6).
Decision: The petition for cancellation is granted,
and Registration No. 853,719 will be canceled in due
course.