Precedential No. 27: TTAB Rules that Notice of Reliance Must Indicate Relevance of Each Document by duPont Factor

In this Section 2(d) opposition, Applicant Sonoscape won a partial victory in its motion to strike certain evidence included in Opposer's notice of reliance. The Board ruled that Opposer could not rely on a newly-issued registration as a basis for opposition because the underlying application had not been pleaded in the notice of opposition, but the Board deferred until trial a ruling on whether the registration had any probative value. It agreed with applicant that, as to certain other documents (673 pages in all) purportedly relevant to the likelihood of confusion issue, opposer was required to indicate the relevance of each page by duPont factor. FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234 (TTAB 2014) [precedential].

Newly-issued registration: Applicant Sonoscape filed its motion just prior to commencement of its testimony period. Opposer Fuji claimed ownership of a family of "Sono-" formative marks, and sought in its notice of reliance to add a newly-issued registration to its arsenal. However, Fuji did not plead ownership of the application that matured into that registration. The Board ruled that Fuji "cannot use an unpleaded registration as a basis for the opposition (such as for purposes of removing priority as an issue in the case, or for proving standing)." However, the Board observed, an unpleaded registration, like third-party registrations, may be considered for "whatever probative value" it may lend to opposer's showing under the du Pont factors in its case in chief.

Because the Board's determination as to whether a registration (or other evidence) has probative value is made at final hearing, the Board refused to strike this exhibit and instead deferred any determination as to admissibility.

Relevancy of other evidence: Applicant Sonoscape contended that Fuji has failed to adequately designate the relevancy of certain documents attached to its notice of reliance. Although Fjui stated that the documents were relevant to three likelihood of confusion factors (the similarity of the parties’ marks, the similarity and relatedness of the goods at issue, and the similarity of the parties’ trade and
marketing channels), Sonoscape argued that Fuji must indicate which pages of the two involved exhibits were relevant to each particular du Pont factor.

Fuji claimed that the entirety of each exhibit was relevant to all three identified du Pont factors. Not good enough: "The Board will not expend its resources guessing which pages the propounding party is relying upon, particularly when an exhibit comprises such a large number of pages. Opposer should have indicated which web page or group of web pages within each exhibit support each specific du Pont factor." See Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010).

The Board observed that, although Fuji will have an opportunity to explain its exhibits in its trial brief, Sonoscape is entitled to know, prior to its testimony period, which web pages allegedly support which likelihood of confusion factor. Because the defect was one that can be cured by the offering party as soon as it is raised by any adverse party, Fuji was allowed 15 days to submit and appropriately revised notice of reliance.

Read comments and post your comment here.

TTABlog note:  This kind of specificity should be required by rule for document production during discovery, whereby the produced documents must be correlated with document requests and interrogatories to which they purportedly are responsive.

Text Copyright John L. Welch 2014.