Zimmer Technology, Inc.v.MIS Implant Technologies Ltd.

Trademark Trial and Appeal Board

Sep 6, 2007

No. 91164293 (T.T.A.B. Sep. 6, 2007)

Mailed:
September 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Zimmer Technology, Inc.

v.

MIS Implant Technologies Ltd.
_____

Opposition No. 91164293
to application Serial No. 78177980
filed on October 24, 2002
_____

Gerard T. Gallagher and Meg A. Anderson of Baker & Daniels
LLP for Zimmer Technology, Inc.

Victor N. King and Ann W. Speckman of Speckman Law Group
PLLC for MIS Implant Technologies Ltd.
______

Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Zimmer Technology, Inc. has opposed the application of
MIS Implant Technologies Ltd. to register the mark MIS in
stylized form, as shown below,

for the following goods:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91164293
2

surgical, medical, dental and
orthodontic apparatus and instruments,
namely, surgical screw drivers, torque
wrenches, drills, ratchets and hammers,
tissue punches, dental burs, scalpels,
scissors for surgery, saws for surgical
purposes, trephines, orthodontic
appliances, prosthetic holders, abutment
holders, suction tubes, kidney trays,
gloves for medical purposes, masks for
use by medical personnel, surgeon's
caps, surgical sterile sheets, surgical
thread, cases fitted for medical
instruments; implants for surgery and
medicine, namely, dental implants,
surgical implants comprising artificial
material; superstructures for prosthetic
reconstruction, namely, for prosthetic
reconstruction of teeth; crowns, bridges
and prostheses, which are mountable upon
implants, for dental medicine;
artificial teeth, dentures, artificial
jaws; pins for artificial teeth;
brackets, wires and screws for
orthodontics.1

As grounds for opposition, opposer has alleged that it
is a manufacturer of various orthopedic and dental implants,
surgical tools and equipment; that the term MIS is a
commonly and widely used acronym and abbreviation for
“minimally invasive surgery,” a term that describes a
commonly and widely used surgical technique in various
fields of medical treatment, including the dental field; and
that applicant’s mark is merely descriptive of the
identified goods and therefore prohibited from registration
by Section 2(e)(1) of the Trademark Act.

1 Application Serial No. 78177980, filed October 24, 2002, based
on Section 1(b) of the Trademark Act (intent-to-use).
Opposition No. 91164293
3
Applicant has denied the salient allegations of the
notice of opposition, and has also asserted what it
characterizes as affirmative defenses, but which are
primarily amplifications of its denial that its mark is
merely descriptive. In any event, applicant has not filed a
trial brief, and therefore has not argued that it is
entitled to judgment on any of its actual affirmative
defenses. Accordingly, we deem such claims to have been
waived.
The record includes the pleadings and the file of the
opposed application. Opposer has made of record, under a
notice of reliance, 48 exhibits that constitute printed
publications under Trademark Rule 2.122(e). Applicant has
also submitted evidence under a notice of reliance, and of
the 60 exhibits, opposer initially moved to strike all but
Exhibit 57. Although applicant did not filed a paper in
opposition to the motion, we do not treat it as conceded.
In its brief opposer reiterated its motion to strike,
although it did not maintain its objections to Exhibits 58-
60. Thus, we consider only the objections to Exhibits 1
through 56, although we note that, in any event, opposer’s
objections to Exhibits 58-60 are not well taken.
Specifically, Exhibits 58-60 are copies of opposer’s
registrations, taken from the USPTO TESS database. Opposer

Opposition No. 91164293
4
had initially objected to these exhibits because they were
not status and title copies prepared by the Office.
However, Trademark Rule 2.122(d)(2) requires that a status
and title copy of a registration be submitted by a party who
wishes to make its own registration of record. Because
applicant is not attempting to make its own registrations of
record by submitting the TESS records, but has submitted
copies of registrations owned by opposer, these exhibits
constitute official records of the USPTO, and may be
submitted under a notice of reliance pursuant to Trademark
Rule 2.122(e).
The first group of exhibits to which opposer has
objected are webpages. Exhibits 1-9, according to
applicant’s notice of reliance, were obtained from
applicant’s own website. Such documents do not qualify as
printed publications under Trademark 2.122(e). See
Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). The
next set of webpages, Exhibits 30-56, shows the results of
searches for “mis” with other words. To the extent that
applicant is attempting to rely on results stating that no
items were found the exhibits cannot be considered, as they
do not constitute printed publications. However, some of
these exhibits are for articles that have been retrieved
from printed publications, e.g., Exhibit 33 is an article
published in the “Journal of the Canadian Dental
Opposition No. 91164293
5
Association,” April 2005, Vol. 71, No. 4. We treat these
exhibits in the manner of articles retrieved from the NEXIS
database, i.e., as the electronic equivalent of printed
articles. The next grouping of exhibits are materials
published by applicant, such as newsletters and catalogs and
brochures. These do not qualify as printed publications.
In summary, opposer’s motion to strike is granted as to
Exhibits Nos. 1-30, 36-39, and 41-56. Exhibits Nos. 31-35,
40 and 57-60 of applicant’s notice of reliance are of
record.
On February 10, 2006, the last day of its testimony
period, and at the same time it filed its notice of
reliance, applicant also filed a motion to amend its
identification of goods to limit its goods to those with a
dental application. The proposed identification, which
shows the goods which applicant seeks to delete, is as
follows. Deleted items are shown by strikethroughs, added
terms are shown in bold type.
surgical, medical, dDental and
orthodontic apparatus and instruments,
namely, surgical screw drivers, torque
wrenches, drills, ratchets and hammers,
tissue punches, dental burs, scalpels,
scissors for surgery, saws for surgical
purposes, trephines, orthodontic
appliances, prosthetic holders, abutment
holders, suction tubes, kidney trays,
gloves for medical purposes, masks for
use by medical personnel, surgeon's
caps, surgical sterile sheets, surgical
thread, cases fitted for medical
instruments; implants for oral surgery
Opposition No. 91164293
6
and medicine, namely, dental implants,
surgical implants comprising artificial
material; superstructures for prosthetic
reconstruction, namely, for prosthetic
reconstruction of teeth; crowns, bridges
and prostheses, which are mountable upon
implants, for dental medicine;
artificial teeth, dentures, artificial
jaws; pins for artificial teeth;
brackets, wires and screws for
orthodontics.

The reason given in applicant’s motion is to conform the
identification of goods with the goods upon which
applicant’s mark is actually used.
Opposer has opposed this motion on the basis that it is
untimely, in that it was filed after the completion of
opposer’s testimony period, and therefore opposer prepared
its case based on the original identification.
Opposer has cited, in particular, the following language in
Personnel Data Systems Inc. v. Parameter Driven Software
Inc., 20 USPQ2d 1863, 1864-65 (TTAB 1991):
Section 18 of the Trademark Act, as
amended effective November 16, 1989,
provides the Trademark Trial and Appeal
Board with the authority to limit, or
otherwise modify, the goods or services
in a registration or an application.
However, in this case, we decline to
exercise our authority under the statute
and rules for the reason that this
proceeding was tried without
respondent's ever having raised the
issue of possible restriction of its
recitation of goods. As a consequence,
petitioner had not been put on notice
before it presented its case that
respondent intended to seek to have its
identification of goods amended. That is
to say, the Board will exercise its
Opposition No. 91164293
7
discretion under Trademark Rule 2.133(b)
only where the petitioner or opposer has
been put on notice during the trial
period that the Board will be
considering the issue of confusion with
respect to a recitation of goods or
services narrower in scope than that
which was shown in the registration or
application at the commencement of the
proceeding.

In reply, applicant attempts to distinguish the
Personnel Data case on the basis that in Personnel Data the
request to amend the identification of goods was made in the
party’s brief, while applicant has made its motion during
trial. However, the testimony period for opposer had closed
before applicant ever made its motion, so the effect of the
timing of the motion is the same as that in Personnel Data,
namely, opposer had not been put on notice before it
presented its case that applicant intended to seek to have
its identification of goods amended. Applicant also points
to the fact that opposer’s rebuttal testimony period had not
yet opened at the point applicant filed its motion.
However, rebuttal testimony is limited to testimony that
rebuts the evidence that the applicant submits during its
testimony period; a plaintiff may not use it to submit
evidence that should have been made of record during its
case-in-chief, and evidence to prove the descriptiveness of
the goods in applicant’s proposed identification would have
been part of opposer’s case-in-chief. Moreover, we must
recognize that opposer expended time and effort to prepare
Opposition No. 91164293
8
its case-in-chief based on the identification of goods in
applicant’s application as published for opposition.
Applicant has not provided a compelling reason why it waited
until after the close of opposer’s testimony period (and,
indeed, until the last day of its own testimony period) to
file its motion to amend. Certainly if applicant wished
only to conform the goods in its identification to those on
which its mark is in use, it could have done so prior to the
commencement of trial. Here, the prejudice to opposer if we
were to grant applicant’s motion would be substantial. Even
if we were to reopen opposer’s testimony period for its
case-in-chief, that would not remove the prejudice to
opposer, since it would then essentially have to mount a new
trial. Applicant has simply not provided a sufficient
reason for us to require this.
Applicant’s motion to amend its identification of goods
is denied.
We turn now to the substantive issues in this
opposition, namely, whether opposer has shown its standing
and whether it has shown that applicant’s mark is merely
descriptive of its identified goods.
With respect to standing, we note that opposer has not
submitted any evidence on this point. Although opposer
stated in its notice of opposition, and again in the “Facts”
section of its brief, that “opposer is a leading
Opposition No. 91164293
9
manufacturer of various orthopedic and dental implants,
surgical tools and equipment,” brief, p. 7, opposer
submitted no evidence to support such an allegation. An
allegation in a notice of opposition is just that--an
allegation--and it must be supported by evidence for it to
be treated as fact. In the present case, however, applicant
has submitted under a notice of reliance copies of three
registrations owned by opposer for MIS marks, stating in the
notice that these are registrations of opposer’s. See
exhibits 58-60 of applicant’s notice of reliance.
Registration No. 3007589 is for printed materials in the
field of minimally invasive surgical techniques;
Registration No. 2967452 is for educational services in the
field of minimally invasive surgical techniques; and
Registration No. 2967451 is for public relations campaigns.
These registrations are sufficient for us to find that
opposer has a real interest in this proceeding and a
reasonable claim of damage.2
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the

2 The irony is not lost on us that opposer had initially moved
to strike the very exhibits which we have found to establish its
standing.
Opposition No. 91164293
10
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Moreover, if the mark is
descriptive of any of the goods or services for which
registration is sought, it is proper to sustain the
opposition with respect to the entire class. See In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d
without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989).
Opposition No. 91164293
11
It is opposer’s position that MIS is an initialism that
is readily understood as meaning “minimally invasive
surgery,” and that this initialism, as well as the phrase
which it represents, is merely descriptive of applicant’s
identified goods because it describes a feature, use,
function or purpose of the goods, which are surgical,
medical, dental and orthodontic apparatus and instruments.
In support of this position opposer has made of record a
listing form the Dictionary of Medical Acronyms &
Abbreviations, 5th ed. © 2005, stating that “MIS” means,
inter alia, “minimally invasive surgery.” Opposer has also
submitted some 47 publications in which MIS is used as an
alternative term for “minimally invasive surgery.” In some
of these publications MIS appears in parentheses after the
phrase “minimally invasive surgery,” while in others it is
used directly as the term. Some examples follow:
Minimally invasive surgery describes an
area of surgery that crosses all
traditional disciplines, from general
surgery to neurosurgery. …Minimally
invasive surgery is a means of
performing major operations through
small incisions, often using miniatured,
high-tech imaging systems, to minimize
the trauma of surgical exposure.
...John Wickham’s term minimally-
invasive surgery (MIS) is widely used
because it describes the paradox of
postmodern high-tech surgery—small
holes, big operations—and the
“minimalness” of the access and
invasiveness of the procedures, captured
in three words.
Opposition No. 91164293
12
Chapter 13, Minimally Invasive Surgery,
Schwartz’s Principles of Surgery, 8th
ed. © 2005.
Exhibit 2 to opposer’s notice of
reliance

With the potential for fewer
complications, less complex procedures
and reduced average lengths of hospital
stay, minimally invasive surgeries (MIS)
will hold particular appeal to cost
conscious healthcare authorities.
Therefore, the long-term cost
efficiencies may encourage uptake of MIS
devices despite their higher capital
costs, boosting the prospects of
European MIS device manufacturers.
“Medicine & Law Weekly,” September 30,
2005
Exhibit 3 to opposer’s notice of
reliance

Surgeons also commended the system for
its inherent versatility with both open
and minimally invasive surgery (MIS)
procedures.
“Managed Care Business Week,” August 2,
2005
Exhibit 5 to opposer’s notice of
reliance

Sales of minimally invasive surgery, or
MIS, products increased 6% to $4.3
million....
…Sales of MIS products increased 22% to
$1.2 million in the fourth quarter....
“Medical Devices & Surgical Technology
Week,” March 14, 2004
Exhibit 11 to opposer’s notice of
reliance

Study claims the MIS approach results in
positive short-term outcomes [headline]
According to the latest research on the
minimally-invasive surgery (MIS)
approach for hip, knee and shoulder
surgery,....
“Espicom Business Intelligence,”
February 5, 2003
Opposition No. 91164293
13
Exhibit 22 to opposer’s notice of
reliance

Further research is needed before MIS is
expanded to all areas [headline]
Minimally-invasive surgery (MIS) will
result in less pain, shorter hospital
stays and quicker recovery times for
more patients undergoing joint
replacement surgery and other types of
joint reconstruction....
“Espicom Business Intelligence,”
January 30, 2003
Exhibit 23 to opposer’s notice of
reliance

SPINAL IMPLANTS: Spinal Concepts
announces first implantations of
PathFinder MIS device [headline]
Spinal Concepts, Inc., a leading
innovator of spinal implant technology,
announced in December that its
PathFinder Minimally Invasive Surgery
(MIS) pedicle screws were implanted for
the first time.
“Medical Devices & Surgical Technology
Week,” January 26, 2003
Exhibit 25 to opposer’s notice of
reliance

In addition to the exhibits submitted by opposer, we
also note that in opposer’s three registrations for MIS
marks, opposer has disclaimed exclusive rights to use MIS,
thereby giving further support to opposer’s position that it
regards this term as merely descriptive.
The evidence of record shows that MIS is a recognized
initialism for minimally invasive surgery. Further, when
MIS is used in connection with such items as scalpels,
suction tubes, surgical thread and the like, it immediately
Opposition No. 91164293
14
conveys to the relevant group of consumers and purchasers
that such goods are used for minimally invasive surgery.
As noted previously, applicant has not submitted a
trial brief, so we do not know why it takes the position
that its mark is not merely descriptive. It has properly
made of record some articles in which “MIS” is used to mean
something other than “minimally invasive surgery.” For
example, one article has the title “(Mis)Interpretations of
Leukoplakia.” Exhibit 33 to applicant’s notice of reliance.
The fact that “mis” may have other meanings in other
contexts, however, does not affect the fact that, as used in
connection with at least some of the goods identified in
applicant’s application, MIS would be understood as the
equivalent of “minimally invasive surgery,” and immediately
conveys to the relevant class of consumers information about
the character or purpose of the goods.
Decision: The opposition is sustained.