Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA111508
`ESTTA Tracking number:
`11/27/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92046058
`Plaintiff
`MASIMO CORPORATION
`MASIMO CORPORATION
`
`Proceeding
`Party
`
`,
`
`Correspondence
`Address
`
`DEBORAH S. SHEPHERD
`KBOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`efiling@kmob.com
`Opposition/Response to Motion
`Stacey R. Halpern
`efiling@kmob.com, shalpern@kmob.com
`/Stacey R. Halpern/
`11/27/2006
`2006-11-27 Masimo's Opposition to Motion for Summary Judgment.pdf ( 86
`pages )(5506074 bytes )
`
`
`ESTTA111508
`ESTTA Tracking number:
`11/27/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92046058
`Plaintiff
`MASIMO CORPORATION
`MASIMO CORPORATION
`
`Proceeding
`Party
`
`,
`
`Correspondence
`Address
`
`DEBORAH S. SHEPHERD
`KBOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`efiling@kmob.com
`Opposition/Response to Motion
`Stacey R. Halpern
`efiling@kmob.com, shalpern@kmob.com
`/Stacey R. Halpern/
`11/27/2006
`2006-11-27 Masimo's Opposition to Motion for Summary Judgment.pdf ( 86
`pages )(5506074 bytes )
`
`
`
`MASIMOT.O68CN
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Masimo Corporation,
`
`.
`.
`Petitioner,
`
`V.
`
`'
`Medtr0n1c, Inc”
`
`Strant
`
`Medtronlc’ Inc"
`
`Counter—C1aim Petitioner,
`
`V.
`
`Masimo Corporation,
`
`Counter-Claim Respondent.
`
`Cancellation No.: 92,046,058
`
`this correspondence and all marked
`I hereby certify that
`attachments are being electronically filed with the Trademark
`Trial and Appeal Board of the U.S. Patent and Trademark Office
`
`through their website located at htgg://estta.uspto.gov on:
`
`November 27, 2006
`
`
`
`Stacey R. Halpem
`
`%€§/\./\./\./%%%%§/\-/€\&%/M
`
`MASIMO CORPORATION’S OPPOSITION TO
`
`MEDTRONIC, INC.’S MOTION FOR SUMMARY JUDGMENT
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Arlington, VA 22313-1451
`
`Dear Sir:
`
`This is a Cancellation proceeding brought by Masimo Corporation (“Masimo”) against
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`U.S. Registration No. 2,916,730 for the mark MAXIMO (“the MAXIMO Mark”) owned by
`
`Medtronic, Inc. (“Medtronic”).
`
`In its Motion for Summary Judgment seeking dismissal of
`
`Masimo’s Petition for Cancellation (“Medtronic’s Motion”), Medtronic has the burden of
`
`showing both that there are no genuine issues as to any material facts, and that Medtronic is
`
`entitled to judgment as a matter of law. Medtronic’s Motion fails on both counts. As a result, it
`
`should be denied.
`
`
`
`Masimo’s Petition for Cancellation sets forth two grounds for cancellation of the
`
`MAXIMO Mark:
`
`first, that the MAXIMO mark is likely to cause consumer confusion with
`
`Masimo’s MASIMO name and mark, and second, that the MAXIMO Mark dilutes the MASIMO
`
`mark. The ultimate questions of likelihood of consumer confusion and dilution are questions of '
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`fact, as are the DuPont factors underlying the likelihood of confiision analysis. Medtronic’s
`
`Motion centains argument based upon Medtronic’s own interpretations of evidence relating to
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`these fact questions. However, these arguments fail to establish that there are no factual issues
`
`present.
`
`Indeed, as shown below, Medtronic’s Memorandum of Law in_ Support of its motion
`
`(“Medtronic’s Brief’) itself contains references to (and itself creates) several disputed factual
`
`issues. Accordingly, Medtronic’s Motion fails to establish that there are no genuine issues as to
`
`any material facts.
`
`When the available facts and evidence are viewed in a light most favorable to Masimo, as
`
`is required in a motion for summary judgment, those facts and evidence support at least the
`
`conclusion that:
`
`(a) the marks at issue are similar in appearance, sound, and commercial
`
`impression, (b) the goods associated with the respective marks are similar in nature, (c) the
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`channels of trade for the goods associated with the marks are the same or similar, (d) Medtronic
`
`was aware of Masimo’s MASIMO name and mark when Medtronic adopted the MAXIMO Mark
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`and has attempted to create an association with the MASIMO mark, and (e) Masimo’s MASIMO
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`mark is famous.
`
`Accordingly, Medtronic’s Motion fails to establish that Medtronic is entitled to judgment
`
`as a matter of law. For these reasons, and as set forth in detail below, the Trademark Trial and
`
`Appeal Board (the “Board”) should deny Medtronic’s Motion.
`
`
`
`I. DISPUTED AND UNDISPUTED FACTS
`
`Since at least as early as 1994, Masimo has developed, offered, licensed, and marketed
`
`innovative monitoring technologies that significantly improve patient care, including its medical
`
`signal processing technologies and products for monitoring of vital signs in connection with the
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`MASIMO name and mark. E the Declaration of Charles Fowler (“Fowler Decl.”) at 1] 2.
`
`Masimo is the owner of U.S. Trademark Registration Nos. 1,906,425 and 1,951,663, both for the
`
`mark MASIMO. Li. at 1] 4. Due to Masimo’s use of the MASIMO name and mark for at least
`
`twelve (12) years, the name and mark have become well known. I_(Lat1] 5.
`
`Among the goods offered by Masimo in connection with its name and mark MASIMO
`
`are patient care devices that include Masimo SET® signal processing technologies, including
`
`multi-measurement monitors, defibrillators and infant incubators. These devices are offered by
`
`various patient monitoring system providers,
`
`including Medtronic and/or its related entities.
`
`Fowler Decl. at 1} 3.
`
`Prior
`
`to Medtronic’s
`
`filing of the application that matured into the MAXIMO
`
`Registration, Medtronic Physio—Control Corporation (“Medtronic PC”) entered into a license
`
`agreement with Masimo. E Medtronic’s Brief at pp. 1-3.
`
`Subsequently, Medtronic PC
`
`changed its name to Medtronic Emergency Response Systems, Inc., (“Medtronic ER”). Li. at pp.
`
`3-4.
`
`As is discussed in detail below, Medtronic’s own materials, including, but not limited to,
`
`press releases, its website, and government filings, fail to differentiate between Medtronic and
`
`Medtronic ER.
`
`For example, Medtronic’s website and press releases discussing Masimo’s
`
`technology and products and the LIFEPAK products (the products that incorporate Masimo’s
`
`technology and products) use Medtronic’s name, Medtronic’s marks, and repeatedly mention
`
`
`
`Medtronic. E the Declaration of Stacey R. Halpem (“Halpem Decl.”) at 1111 2-7.
`
`Indeed, Medtronic’s materials identify Medtronic ER as a division of Medtronic, a
`
`business unit of Medtronic, an operating segment, and Medtronic’s child. Halpem Decl. at ‘ll ‘H2
`
`and 6. The fact that Medtronic ER is a licensee of Masimo and that there are clearly ambiguities
`
`between the relationship between Medtronic ER and Medtronic (or at least ambiguities as to how
`
`the public perceives this relationship) demonstrates that genuine issues of fact exist as to the
`
`related nature of the parties’ goods, the channels of trade for the goods, the market interface
`
`between the parties,
`
`the consumers of the goods and Medtronic’s intent
`
`in selecting the
`
`MAXIMO Mark.
`
`Medtronic also admits that the MASIMO mark is arbitrary and/or coined. Medtronic’s
`
`Brief at pp. 10-12, Medtronic acknowledges that the terms MAXIMO and MASIMO only differ
`
`by a single letter. Medtronic’s Brief at 10. As the letters “S” and “X” are audibly similar and as
`
`the terms MAXIMO and MASIMO are similar
`
`in overall appearance and commercial
`
`impression, at a minimum, there are genuine issues of material fact regarding the similarity of the
`
`marks.
`
`Due to Masimo’s extensive use and registration of the MASIMO name and mark, at a
`
`minimum, material issues of fact exist as to the well—known nature of Masimo’s MASIMO name
`
`and mark. It is apparent that genuine issues of material fact exist as to the related nature of the
`
`goods.
`
`Issues of disputed fact also exist as to the nature and extent of use of the same or similar
`
`marks by third parties and whether Medtronic intended to create an association with Masimo.
`
`As genuine issues of material fact exist, Medtronic’s Motion cannot be granted insofar as
`
`the issues of likelihood of confusion or dilution.
`
`
`
`II. SUMMARY JUDGMENT STANDARD
`
`Medtronic’s burden of proof is substantial. Specifically, Rule 56 of the Federal Rules of
`
`Civil Procedure (“FRCP”) only permits the granting of a summary judgment when there is no
`
`genuine issue of material fact. Celotex Corp. V. Catrett, 477 U.S. 317, 322-23 (1986).
`
`In deciding Medtronic’s Motion, the Board must resolve all doubts as to whether any
`
`material issue of fact exists in favor of Masimo, must the review the record in the light most
`
`favorable to Masimo, must draw all factual inferences in Masimo’s favor, and must believe all
`
`evidence presented by Masimo. Olde Tme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
`
`U.S.P.Q.2d 1542 (Fed.Cir.1993); and Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
`
`Where, as here, Medtronic has failed to meet that burden, Medtronic’s Motion must be denied.
`
`III. ARGUMENTS
`
`A. Medtronic’s Brief Does Not Indicate the Material
`
`Facts Medtronic Believes Are Undisputed
`
`It is a requirement for a brief in support of a summary judgment to specify which material
`
`facts are undisputed. See T.B.M.P. §528.0l. However, Medtronic’s Brief fails to indicate which
`
`“facts” it believes are undisputed.
`
`Instead, Medtronic’s Brief states that the only facts it deems
`
`“relevant” to Medtronic’s Motion, are that: (1) the application that matured into the MAXIMO
`
`Registration was filed on April 17, 2003, claims a date of first use of November 14, 2003 and
`
`matured into a registration on January 4, 2005 and that (2) Masimo has relied, in part, on two
`
`registrations for the mark MASIMO, which were over a decade before the filing date of the
`
`MAXIMO Registration, which claim dates of first use almost a decade before the filing date of
`
`the MAXIMO Registration‘ and almost a decade before the date of first use alleged in the
`
`MAXIMO Registration, and which proceeded to registration almost a decade before the
`
`
`
`MAXIMO Registration. Thus, Medtronic has admitted that the only “relevant” fact is that
`
`Masimo is the senior and prior user of the MASIMO mark and that Masimo’s use and
`
`registration of the MASIMO mark occurred almost a decade before Medtronic’s alleged use and
`
`registration of the MAXIMO mark.
`
`As Medtronic’s Brief ignores many other material facts —— some undisputed, some
`
`disputed -- Medtronic’s——Motion must be denied.
`
`B.
`
`Genuine Issues of Material Fact Exist With Regard to Medtronic’s
`Position That There is No Likelihood of Confusion Between the
`
`MAXIMO Mark and the MASIMO Mark
`
`1.
`
`Genuine Issues of Material Fact Exist With Regard to Medtronic’s Position That the
`MAXIMO Mark and Masimo’s MASIMO Mark Are Dissimilar
`
`Despite Medtronic’s unsupported statements to the contrary, genuine issues of material
`
`fact exist as to whether the MAXIMO Mark and Masimo’s MASIMO Mark are similar.
`
`a.
`
`Because the U.S. Patent and Trademark Office Does Not Cite a Prior Registration
`Does Not Eguate to a Finding of no Likelihood of Confusion
`
`The law is clear that merely because the Examining Attorney did not refiise registration of
`
`Medtronic’s application which matured into the MAXIMO Registration, the Board can, and often
`
`does, find a likelihood of confusion.
`
`In fact,
`
`the Board has repeatedly emphasized that in
`
`determining likelihood of confusion in an ii gm proceeding,
`
`it must reach its own
`
`conclusion based on the evidence adduced therein.
`
`For example, in McDonald’s Corp. v. McClaim, 37 U.S.P.Q.2d 1274 (T.T.A.B. 1995),
`
`the restaurant chain McDonald’s opposed registration of the mark MC CLAIM for legal services
`
`on the grounds of likelihood of confusion with McDonald’s marks. The applicant argued that the
`
`Board should act consistently with the examining attorney, who had passed the application to
`
`publication despite the existence of McDonald’s registrations.
`
`I_d. at 1276.
`
`In rejecting this
`
`_6_
`
`
`
`approach, the Board stated:
`
`Applicant’s argument that the Board is somehow required to adopt the Examining
`Attomey’s conclusion that applicant is entitled to registration is also not well
`taken. Especially in an inter-partes proceeding such as this, where we have before
`us more evidence on the issue under Section 2(d) than the Examiner could
`possibly have had, including evidence establishing fame and a family of marks,
`we necessarily have the authority to reach whatever decision is supported by this
`record.
`
`l_d. at 1277. E al_so Hilson—Research Inc. V. Soc’y for Human Res. Mgmt, 27 U.S.P.Q.2d 1423,
`
`1439 (T.T.A.B. 1993) (“[T]he fact that the Trademark Examining Attorney,
`
`in the ex parte
`
`examination of Society’s applications, did not cite Hilson’s previously registered mark is
`
`irrelevant. The Board is not bound by the actions of the Trademark Examining Attorney who, of
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`course, did not have the benefit of the evidence which has been introduced in these
`
`proceedings”); Real Prop. Mgmt., Inc. v. Marina Bay Hotel, 221 U.S.P.Q. 1187, 1189 n.2
`
`(T.T.A.B. 1984) (“[T]he Board, in an inter partes proceeding such as this, is not bound by [an]
`
`examiner’s prior determinations and has the responsibility of reaching its own decision on
`
`likelihood of confusion based on all the facts adduced in the inter partes proceeding”); and L
`
`
`Sichel Sohne GmbH. v. John Gross & C0,, 204 U.S.P.Q. 257, 261 (T.T.A.B. 1979) (“Suffice it
`
`to say, that the prior implicit finding of the Trademark Attorney in the ex parte prosecution of
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`respondent’s application which matured into the registration now sought to be cancelled, that
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`respondent’s mark was not considered confusingly similar to any registered mark, is not binding
`
`on this Board in a subsequent adversary proceeding”).
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`Similarly, in the case at hand, it is just as likely that that the Examining Attorney was not
`
`aware of material facts, including, but not limited to, the relationship between Medtronic ER,
`
`Medtronic, and Masimo and their goods.
`
`
`
`b.
`
`Whether the MAXIMO Mark and MASIMO Mark are Similar in Appearance is
`Disputed
`
`The terms MAXIMO and MASIMO differ visually by only one letter. As the MAXIMO
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`Mark is simply a combination of a descriptive term with a term that only differs from Masimo’s
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`MASIMO name and mark by org letter,
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`these facts support a finding of a likelihood of
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`confusion.
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`Indeed, Medtronic’s Brief supports this conclusion or at least the conclusion that
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`genuine issues of material fact exist as to whether the marks are similar in appearance.
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`Specifically, Medtronic argues that the first portion of the term MAXIMO (MAX), could
`
`be pronounced “MAKS” so that phonetically Medtronic’s mark would be MAKSIMO.
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`Medtronic’s Brief at p. 10-11. Medtronic also argues that
`
`the first portion of Masimo’s
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`MASIMO mark may be pronounced ‘mas’ as in ‘master’, so that phonetically Masimo’s mark
`
`would be MASIMO. Li.
`
`As “ks” and “s” are audibly very similar, if, as Medtronic has proposed, consumers and
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`potential consumers believe Medtronic’s mark is pronounced MAKSIMO and Masimo’s Mark is
`
`pronounced MASIMO, audibly, the marks would be not only similar in appearance, but also in
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`sound.
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`Furthermore,
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`the law is clear that one may po_t appropriate the entire mark, or a
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`confiisingly similar mark of another, and avoid a likelihood of confusion by the addition thereto
`
`of descriptive or otherwise subordinate matter. E TMEP § 1207.01 (b) (iii); Bellbrook Dairies
`
`v. Hawthorn—Melody Daig, 117 U.S.P.Q. 213, 214 (C.C.P.A. 1958); and Hewlett-Packard
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`Company v. Packard Press, lnc., 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).
`
`As Medtronic has admitted that the term MASIMO is an arbitrary and/or coined mark and
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`as the MAXIMO Mark only differs from the MASIMO mark by one letter, the “undisputed” facts
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`tend to demonstrate that Medtronic has virtually adopted Masimo’s mark in its entirety.
`
`-3-
`
`
`
`- Given the visual and phonetic similarities between the terms MAXIMO and MASIMO,
`
`the fact that the terms MAXIMO and MASIMO only differ by one letter, and the fact that the
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`second and third syllables of both marks are identical (IMO), it is apparent that genuine issues of
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`material fact exist regarding the similarity of the marks.
`
`2.
`
`There Are Genuine Issues of Material Fact as to Whether the Parties’ Goods Are
`Dissimilar
`
`After admitting that Medtronic ER has been Masimo’s licensee for four (4) years and
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`acknowledging that Masimo owns registrations for the mark MASIMO, Medtronic nonetheless
`
`argues that there is no genuine issue regarding the similarity of the parties’ goods. Medtronic’s
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`Brief at pp. 1, 3 and 4. However, the fact that Medtronic ER is Masimo’s licensee demonstrates
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`that there are genuine issues of material fact regarding the similarity between Masimo’s goods
`
`and Medtronic’s goods.
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`Specifically, as is discussed above and in the Halpern Decl., Medtronic’s own materials
`
`create ambiguity regarding Medtronic’s relationship with Medtronic ER or at least create the
`
`perception of ambiguity.
`
`In other words, even if the goods in question are not identical, the
`
`consuming public may perceive them as related enough to cause confusion about the source or
`
`
`origin of the goods. _S§ Recot Inc. v. M.C. Becton, 214 F.2d 1322, 1329 (Fed. Cir. 2000).
`
`For example, Medtronic’s own press releases, which discuss Masimo’s technology, use
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`Medtronic’s mark, identify the goods as “Medtronic’s goods,” provide a link to Medtronic’s
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`website, and also Medtronic’s NYSE listing information. Halpern Decl. at 1] 7.
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`Furthermore, even if a user goes to Medtronic ER’s website, this website prominently
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`uses Medtronic’s MEDTRONIC name and mark, provides information on Medtronic, and
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`provides a link to Medtronic’s home page. Halpern Decl. at 1] 2.
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`In fact, when a visitor “clicks”
`
`
`
`on the link entitled Terms of Use, the user is taken to a page that states “Terms of Use describe
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`rules for Visitors to this Medtronic web site. This web site is owned and operated by Medtronic.
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`Medtronic is the name we use to refer to our whole business, including Medtronic, Inc. and any
`
`of the companies that it controls, such as its subsidiaries and affiliates.” Li.
`
`Similarly, Medtronic’s SEC filings refer to the goods Medtronic ER is offering that
`
`_contain Masimo’s technology. Halpem -Decl. at 1] 6. Medtronic’s SEC filings also group
`
`together Medtronic’s implantable and external defibrillators and identify both of these products
`
`as “cardiac rhythm management” products.
`
`In fact, Medtronic’s January 27, 2006 10-Q SEC
`
`filing indicates that
`
`it “functions in five operating segments,
`
`including Cardiac Rhythm
`
`Management (CRM) .
`
`.
`
`.
`
`.” The January 27, 2006 10-Q also stated “CRM products consist
`
`primarily of pacemakers, implantable and external defibrillators. .
`
`.
`
`.
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`Similarly, Medtronic’s
`
`73
`
`September 6, 2006 10-Q states “Looking ahead, we expect our CRDM operating segment should
`
`benefit from the following: Continued acceptance of the Intrinsic and EnTrust ICDs, InSync
`
`CRT—D and EnRhythm pacemaker.
`
`.
`
`.
`
`. Future acceptance of the LIFEPAK® 1000 external
`
`defibrillator introduced in the U.S during fiscal first quarter 2007.
`
`.
`
`..” E. Medtronic’s 2006
`
`Annual Report discusses Medtronic’s ICD devices and its LIFEPAK products on the same page.
`
`Id.
`
`Additionally, Medtronic’s website states “Medtronic offers a range of products and
`
`services including LIFEPAK® defibrillators used by hospital and emergency service
`
`personnel as well as trained responders who have minimal training in CPR and use of an
`
`automated ‘external defibrillator.” (Emphasis added). Halpem Decl. at 1] 3.
`
`It is undisputed that Medtronic ER’s goods incorporate Masimo’s goods and technology.
`
`It is also undisputed that Medtronic ER is in some manner related to Medtronic. As Medtronic’s
`
`-10-
`
`
`
`own documents raise issues as to the relationship between Medtronic and Medtronic ER and
`
`Medtronic and Medtronic ER’s goods (as well as the relationship between Medtronic and
`
`Masimo), it is apparent that issues of material fact exist as to whether or not the parties’ goods
`
`are related or, at a minimum, whether the consuming public may perceive them as related. This
`
`is true no matter what the true relationship between Medtronic and Medtronic ER is.
`
`Moreover, as admitted by Medtronic, Medtronic’s goods offered in connection with the
`
`MAXIMO Mark and Medtronic ER’s LIFEPAK (the goods that include technology and products
`
`licensed from Masimo) are both types of defibrillators, designed to serve the same general
`
`purpose. Medtronic’s Brief at pp. 3-5. This fact supports the conclusion that the parties’ goods
`
`are similar.
`
`The issues regarding the relationship between Medtronic, Medtronic ER, and Masimo
`
`and the similarity of their goods also demonstrate that, at a minimum, material issues of genuine
`
`fact exist with regard to other relevant DuPont factors, such as the similarity of the parties’
`
`goods,
`
`the likelihood of Masimo bridging the gap in the marketplace (which the business
`
`relationship between Medtronic ER and Masimo demonstrates that it already has), the channels
`
`of trade and consumers of the goods, and Medtronic’s bad faith in selecting the mark.
`
`3.
`
`Medtronic Has Failed to Address All of the Relevant Du Pont Factors
`
`Medtronic has failed to demonstrate there are no issues of genuine material fact with
`
`regard to the similarity of the parties’ marks or the parties’ goods. Recognizing its failure, in a
`
`footnote, Medtronic states that it “reserves the right to submit evidence at a later date .
`
`.
`
`.
`
`[regarding] the other DuPont factors.” Medtronic’s Brief at p. 5, ft nt. 1.
`
`However, as the moving party, Medtronic was required to demonstrate that there are no
`
`genuine issues‘ of material fact with regard to any of the applicable factors, such as the strength of
`
`-1]-
`
`
`
`Masimo’s name and mark, the similarity of the channels of trade for the goods, the market
`
`interface between the parties,
`
`the similarity between the consumers of the goods, and
`
`Medtronic’s intent in selecting the MAXIMO Mark.
`
`The disputed issues regarding all of these factors demonstrate that the Board should deny
`
`Medtronic’s Motion. Moreover, as shown in Exhibits 5 and 6 to the Halpern Decl, there is
`
`market interface between the parties and their consumers. For example, based on publicly
`
`available materials, it is apparent that the parties attend the same trade shows and conferences,
`
`offer their goods to the same consumers, and are listed as customers by many of the same
`
`entities. Halpern Decl. at ‘H 7.
`
`Furthermore, Medtronic has admitted there is an ongoing relationship between Medtronic
`
`ER and Masimo.
`
`It is also undisputed that Medtronic ER is, at a minimum, an entity closely
`
`related to Medtronic. These facts support the conclusion that Medtronic knew of Masimo’s mark
`
`prior to adopting its own, and that Medtronic adopted the MAXIMO mark at least in part to trade
`
`off of Masimo’s goodwill. This would be true regardless of whether Medtronic ER is a wholly-
`
`owned subsidiary of Medtronic, a business unit of Medtronic or an operating segment of
`
`Medtronic.
`
`C.
`
`Genuine Issues of Material Fact Exists With Regard to
`
`Masimo”s Dilution Claim
`
`A mark is famous if it is widely recognized by consumers as a designation of source of
`
`the goods of the mark’s owner. Medtronic does not dispute that Masimo owns registrations for
`
`the mark MASIMO and that such registrations Iarcacijate the filing date, alleged date of first use of
`
`the application which matured into the MAXIMO Registration, and the registration date of the
`
`MAXIMO Registration by almost a decade. Medtronic’s Brief at p. 5. Medtronic also admits
`
`-12-
`
`
`
`that Medtronic ER is Masimo’s licensee and that Medtronic ER was Masimo’s licensee at the
`
`time Medtronic selected the MAXIMO Mark. Medtronic Brief at pp. 1, 3 and 4. Furthermore,
`
`Medtronic has not disputed that Masimo has extensively used the MASIMO name and mark for
`
`at least twelve years. These facts support the conclusion that the MASIMO mark is famous or, at
`
`minimum, at least place this issue in dispute.
`
`Similarly, in determining whether a mark is likely to cause dilution, the Board considers
`
`various factors including: (1) the degree of similarity between the marks; (2) the degree of
`
`inherent or acquired distinctiveness of Masimo’s mark; (3) the nature and extent of use of the
`
`same or similar marks by third parties; (4) whether Masimo’s mark is registered; and (5)
`
`whether Medtronic intended to create an association with Masimo.
`
`Medtronic has acknowledged the fact that the terms MAXIMO and MASIMO only differ
`
`by one letter. This fact, coupled with Medtronic’s admission that MASIMO is a coined arbitrary
`
`term and the fact that “ks” and s” are audibly very similar, support the conclusion that there is a
`
`high degree of similarity between the marks. At minimum, this is at least a disputed issue of fact.
`
`Medtronic has also stated that the term MASlMO'has no apparent meaning in the English
`
`language (and is therefore a strong, arbitrary or coined term). Medtronic’s Brief at pp. 10-12.
`
`Medtronic has not disputed that Masimo has extensively used the MASIMO name and mark for
`
`at least twelve years. Accordingly, the available facts and evidence support the conclusion that
`
`Masimo’s MASIMO mark is inherently distinctive.
`
`Additionally, the MASIMO mark is registered and, except for the MAXIMO Mark,
`
`Medtronic has failed to offer any evidence showing similar marks for similar goods used by third
`
`parties.
`
`Medtronic has admitted there is an ongoing relationship between Medtronic ER and
`
`-13-
`
`
`
`Masimo and that this relationship existed at the time Medtronic adopted the MAXIMO Mark.
`
`Medtronic’s Brief at pp.
`
`1 and 3. The available facts and evidence show that Medtronic’s own
`
`materials, including its press releases, website, and governmental filings indicate that the goods
`
`incorporating Masimo’s products and technology are Medtronic’s goods. As the license with
`
`Masimo requires the use of the MASIMO mark,
`
`the available evidence demonstrates that
`
`Medtronic knew of Masimo’s mark prior to adoptingthe MAXIMO Mark and also supports the
`
`conclusion that Medtronic intended to create an association with Masimo. Consequently, the
`
`evidence of record supports Masimo’s dilution claim.
`
`IV.
`
`CONCLUSION
`
`For the reasons set forth above, Masimo respectfully requests that
`
`the Board deny
`
`Medtronic’s Motion.
`
`Dated:
`
`November 27 2006
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: P
`
`Diane M. Reed
`
`Stacey R. Halpem
`Deborah S. Shepherd
`2040 Main Street, 14”‘ Floor
`Irvine, California 92614
`
`Attorneys for Petitioner
`and Counter-Claim Respondent,
`Masimo Corporation
`
`-14-
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing MASIMO CORPORATION’S
`
`OPPOSITION TO MEDTRONIC INC.’S MOTION FOR SUMMARY JUDGMENT upon
`
`Registrant/Counter—Claim Petitioner’s counsel by depositing one copy thereof in the United
`
`States Mail, first-class postage prepaid, on November 27, 2006 addressed as follows:
`
`Dean R. Karau
`
`Fredrikson & Byron, P.A.
`200 South Sixth Street, Suite 4000
`
`Minneapolis, MN 554021425
`
`/i;_
`
`Stacey R. Halpem
`
`3l20552:sg
`1 12706
`
`-15-
`
`
`
`MASIMOT.068CN
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Masimo Corporation,
`
`V.
`
`.
`.
`Petitioner,
`
`Medtronic, Inc.,
`
`Registrant.
`
`Medtronic, Inc.,
`
`Counter~Claim Petitioner,
`
`V.
`
`Masimo Corporation,
`
`Counter-Claim Respondent.
`
`\.J
`
`\/\/\/\./g/g/\/\_/\_/\/\./\/\..J
`
`Cancellation No.: 92,046,058
`
`this correspondence and all - marked
`I hereby certify that
`attachments are being electronically filed with the Trademark
`Trial and Appeal Board of the U.S. Patent and Trademark Office
`through their website located at htt
`:/estta.us to, ov on:
`
`I [ I :1’ 9‘,
`
`(Dam
`4/-
`
`Stacey R. Halpem
`
`DECLARATION OF CHARLES FOWLER IN SUPPORT OF MASIMO
`
`j__
`CORPORATION’S OPPOSITION TO MEDTRONIC INC.’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`l.
`
`I am the Patent Attorney for Masimo Corporation (“Masimo”), the Petitioner in the
`
`above—referenced cancellation proceeding. As the Patent Attorney for Masimo, I have personal
`
`knowledge of the facts set forth below. If called upon and sworn as a witness, I could and would
`
`competently testify as set forth below.
`
`2.
`
`Since at least as early as 1994, Masimo has developed, offered, licensed, and
`
`marketed innovative monitoring technologies that significantly improve patient care, including
`
`its medical signal processing technologies and products for monitoring of vital signs offered in
`
`connection with the MASIMO name and mark.
`
`3.
`
`Among the goods offered by Masimo and/or
`
`its authorized licensees in
`
`connection with the name and mark MASIMO are devices that include Masimo SET® signal
`
`processing technologies,
`
`including multi~measurement monitors, defibrillators and infant
`
`-1-
`
`
`
`3.
`
`Among the goods offered by Masimo and/or
`
`its authorized licensees in
`
`connection with the name and mark MASIMO are devices that include Masimo SET signal
`
`processing technologies,
`
`including multi-measurement monitors, defibrillators I and infant
`
`incubators. These devices are offered by various patient monitoring system providers, including
`
`Medtronic, Inc. and/or its related entities. Under the terms of the license agreement between
`
`Masimo and Medtronic, Inc. and/or its related entities, Medtronic, Inc. and/or its related entities
`
`are required to use the MASIMO mark in association with the licensed products and technology.
`
`4.
`
`Masimo is the owner of U.S. Trademark Registration Nos. 1,906,425 and
`
`1,951,663, both for the mark MASIMO. Copies of these Registrations are attached hereto.
`
`5.
`
`Due to Masimo’s use of the MASIMO name and mark for at least twelve (12)
`
`years, the name and mark have become well—known.
`
`I declare that all statements made herein of my own knowledge are true and all
`
`statements made on information and belief are believed to be true; and further that
`
`these
`
`statements are made with the knowledge that willful, false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`"Code and that such willful, false statements may jeopardize the validity of the application or
`
`document or any registration resulting therefrom.
`
`Charles Fowler
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing DECLARATION OF CHARLES
`
`FOWLER IN SUPPORT OF MASIMO CORPORATION’S OPPOSITION TO
`
`MEDTRONIC, INC.’S MOTION FOR SUMMARY JUDGMENT upon Registrant/Counter
`
`Claim Petitioner’s counsel by depositing one copy thereof in the United States Mail, first-class
`
`postage prepaid, on November 27, 2006 addressed as follows:
`
`Dean R. Karau
`
`Fredrikson & Byron, P.A.
`200 South Sixth Street, Suite 4000
`
`Minneapolis, MN 554021425
`
`3120608:sg
`I 12706
`
`Stacey R. Halpern
`
`
`
`
`
`
`
`‘"22..._.2'~',~’-
`
`
`
`Int. CI.: 10
`Prior U.S. CIs.: 26, 39, and 44
`Reg. No. 1,906,425
`United States Patent and Trademark Office Registered July 18,1995
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`MASIMO
`
`‘ Ii
`
`MASIMO CORPORATION (CALIFORNIA-COR-
`PORATION)
`26052 MERIT CIRCLE, SUITE 103
`LAGUNA HILLS, CA 92653
`
`IN VIVO PATIENT MONITORS FOR
`FOR:
`DETECTING A PHYSIOLOGICAL CONDI-
`TION, IN CLASS 10 (US. CLS. 26, 39 AND 44).
`
`FIRST USE 11-17-1994;
`11-17-1994.
`
`IN COMMERCE
`
`SN 74-442,460, FILED 9-30-I993.
`
`BARNEY CIIARLON, EXAMINING ATTORNEY
`
`
`
`1 Int. Cl.: 10
`
`©
`
`Prior U.S. Cls.: 26, 39, and 44
`
`Reg. No. 1,951,663
`United States Patent and Trademark Office Registered Jan. 23, 1995
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`MASIMO
`
`‘MASIMO CORPORATION (CALIFORNIA COR-
`PORATION)
`26052 MERIT CIRCLE, #103
`LAGUNA HILLS, CA 92653 BY CHANGE OF
`NAME FROM VITAL SIGNALS. INC. (CALI-
`FORNIA CORPORATION) LAGUNA HILLS,
`CA 92653
`
`FOR: ELECTRONIC IN VIVO MONITORS;
`NAMELY, BLOOD MONITORS,
`IN CLASS IO
`(U.S. CLS. 26, 39 AND 44).
`FIRST USE
`ll—l7—l994;
`1147-1994.
`
`IN COMMERCE
`
`SN 74—323,652, FILED I0-16-1992.
`
`JESSIE B. BILLINGS, EXAMINING ATTORNEY
`
`
`
`MASlMOT.068CN
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Masimo Corporation,
`
`.
`.
`Petitioner,
`
`V.
`
`Medtronica Inc,’
`
`Registrant
`
`Medtronic, lnc.,
`
`Counter-Claim Petitioner,
`
`V.
`
`Masimo Corporation,
`
`Counter-Claim Respondent.
`
`Cancellation No.2 92,046,058
`
`this correspondence and all marked
`I hereby certify that
`attachments are being electronically filed with the Trademark
`Trial and Appeal Board of the U.S. Patent and Trademark Office
`
`through their website located at http://estta.usp1o.gov on:
`
`November 27, 2006
`(Date)
`
`/:,__
`
`Stacey R. l-lalpem
`
`\)\_/%\-/\)§/Q/%/Q/%%/\-/%/%\é%
`
`DECLARATION OF STACEY R. HALPERN IN SUPPORT OF MASIMO
`
`CORPORATION’S OPPOSITION TO
`
`MEDTRONIC, INC.’S MOTION FOR SUMMARY JUDGMENT
`
`1, Stacey R. Halpern, declare as follows:
`
`1.
`
`I am a partner with Knobbe, Martens, Olson & Bear, LLP, U.S intellectual
`
`property counsel for Masimo Corporation (“Masimo”),
`
`the Petitioner in the above above-
`
`identified Cancellation proceeding.
`
`I have personal knowledge of the facts set forth below.
`
`If
`
`called upon and sworn as a witness, I could and would competently testify as set forth below.
`
`2.
`
`Attached as Exhibit
`
`1 hereto are true and correct printouts from the w
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