Website Exhibits Must Specifically Designate Pages Relevant for Specific Likelihood of Confusion Factors: TTAB | Practical Law

Website Exhibits Must Specifically Designate Pages Relevant for Specific Likelihood of Confusion Factors: TTAB | Practical Law

In Fujifilm SonoSite, Inc. v. Sonoscape Co., Ltd., the Trademark Trial and Appeal Board (TTAB) granted the applicant's motion to strike certain of the opposer's exhibits based on the opposer's failure to identify the specific web pages that were relevant to three likelihood of confusion factors.

Website Exhibits Must Specifically Designate Pages Relevant for Specific Likelihood of Confusion Factors: TTAB

by Practical Law Intellectual Property & Technology
Published on 08 Jul 2014 • USA (National/Federal)
In Fujifilm SonoSite, Inc. v. Sonoscape Co., Ltd., the Trademark Trial and Appeal Board (TTAB) granted the applicant's motion to strike certain of the opposer's exhibits based on the opposer's failure to identify the specific web pages that were relevant to three likelihood of confusion factors.
On June 25, 2014, in Fujifilm SonoSite, Inc. v. Sonocoscape Co., Ltd., a trademark opposition proceeding, the Trademark Trial and Appeal Board (TTAB) issued a precedential decision granting Sonoscape's motion to strike the opposer's website exhibits (Exhibits F and G) and deferred on Fujifilm's registration exhibit (Exhibit E) (Opposition No. 91201727, (TTAB June 25, 2014)). The TTAB struck Exhibits F and G because the exhibits consisted of over 100 individual web pages exceeding 670 pages and Fujifilm failed to identify which pages were relevant for each of the particular likelihood of confusion factors.
Sonoscape sought to register the mark SONOSCAPE for certain medical devices. Fujifilm owns ten trademark registrations for marks starting with SONO and opposed Sonoscape's registration.
Fujifilm's Exhibits F and G were printouts of website pages that Fujifilm argued applied to the following du Pont likelihood of confusion factors:
  • Similarity of the parties' marks.
  • Similarity and relatedness of the goods.
  • Similarity of the parties' trade and marketing channels.
Sonoscape argued that Fujifilm failed to adequately designate Exhibits F and G's relevancy because Fujifilm did not specify:
  • The relevant pages by number.
  • The page's relevancy to each factor.
Fujifilm argued it need only identify the general relevance of the exhibits themselves and that the exhibits in their entirety relate to the three factors.
The TTAB agreed with Sonoscape, noting that since the exhibits exceed 670 pages, the TTAB should not have to expend its resources guessing which pages support each specific du Pont factor. The TTAB granted Sonoscope's motion to strike with leave for Fujifilm to cure.