Friday, June 06, 2008

Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark

In 1982, Applicant Karl Storz GmbH reached an agreement with Opposer's predecessor specifying how each may use the word "STORZ" in a trademark or service mark sense. In 1989, Opposer's predecessor wrote to Karl Storz, objecting to use of the mark STORZ THE WORLD OF ENDOSCOPY, shown immediately below. Although Karl Storz responded, Opposer B&L did not pursue the objection until 2003, when it began challenging applications for the mark. The Board ruled that the 1982 agreement prohibits use of the subject mark, and it entered judgment summarily in favor of B&L. Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526 (TTAB 2008) [precedential].

Opposer B&L filed for summary judgment on the ground of likelihood of confusion, but the Board sua sponte chose to rule on the contract issue.

The agreement provided that Applicant may use nine particular marks: (1) KARL STORZ GERMANY; (2) STORZ-GERMANY; (3) KARL STORZ; (4) KARL STORZ USA; (5) KARL STORZ ENDOSCOPY-AMERICA; (6) KARL STORZ ENDOSCOPY; (7) STORZ ENDOSKOP; (8) KARL STORZ ENDOSKOP; and(9) KS STORZ. Furthermore, Applicant might supplement these marks with "additional trademark formatives." In short, as Opposer argued, the agreement "does not allow Applicant to use [Applicant's Mark] or any other variation using the word STORZ without the qualifiers Karl, K., Germany or the German word 'Endoskop.'" The idea was that each of the allowed marks would reduce the likelihood of confusion between the US company, Storz Instruments, and the Germany company, by identifying the user of the mark as a German company.

The Board concluded that the applied-for mark was not an approved mark because it did not contain ENDOSKOP, or KARL STORZ, K STORZ, etc. Applicant's mark, containing the word ENDOSCOPY, is not a "supplemented" version of STORZ ENDOSKOP. Use of the English word ENDOSCOPY, "without any indication that the mark is used by the German company, would make the authorization for applicant to use the permitted mark KARL-STORZ ENDOSCOPY superfluous."

Applicant asserted the defense of equitable estoppel, but an opposer's conduct prior to publication of the subject application generally cannot support a finding of estoppel. Moreover, although Opposer here did not pursue its 1989 objection until 2003, "there is no evidence that opposer knew or should have known of applicant's alleged use of Applicant's mark in the U.S." [Emphasis in original].

And so the Board granted summary judgment to Opposer.

Text Copyright John L. Welch 2008.


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