Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA316647
`ESTTA Tracking number:
`11/12/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048392
`Plaintiff
`ICU Medical, Inc.
`Kimberly Van Voorhis, Jennifer Taylor
`Morrison & Foerster LLP
`755 Page Mill Rd.
`Palo Alto, CA 94304
`UNITED STATES
`kvanvoorhis@mofo.com, jtaylor@mofo.com
`Other Motions/Papers
`Kimberly Van Voorhis
`kvanvoorhis@mofo.com, jtaylor@mofo.com
`/KNV/
`11/12/2009
`Neutral - motion for entry of judgment.pdf ( 37 pages )(1572770 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`TRADEMARK
`Docket No. 63145-6001.501
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ICU MEDICAL, lNC.,
`
`Cancellation No. 92048392
`
`v.
`
`Petitioner,
`
`Mark: NEUTRAL
`Reg. No. 3168566
`
`RYMED TECHNOLOGIES, INC.,
`
`Respondent.
`
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dated: November 12, 2009
`
`MOTION FOR ENTRY OF JUDGMENT
`
`Petitioner ICU Medical, Inc. (“ICU” or “Petitioner”) hereby moves the Board for an Order
`
`entering judgment in its favor and cancelling the “NEUTRAL” mark based on the October 8, 2009
`
`order and judgment of the U.S. District Court for the Central District of California in RyMed
`
`Technologies, Inc. v. ICU Medical, Inc., Case No. SA CV-07-1199 (DOC) (attached hereto as
`
`Exhibit A). See Trademark Trial and Appeal Board Manualof Procedure (“TMBP”) § 510.02(b).
`
`pa-1365136
`
`

`
`BACKGROUND
`
`On November 6, 2007, Petitioner filed a petition to cancel RyMed Technologies, Inc.’s
`
`(“RyMed” or “Respondent”) mark, Reg. No. 3,168,566 (“the ‘566 trademark”), “NEUTRAL,” on
`
`the basis that the mark is “generic” and/or “merely descriptive” of the identified goods and should
`
`not have registered as a trademark.
`
`On October 10, 2007, RyMed filed a civil action against ICU in the United States District
`
`Court for the Central District of California, RyMed Technologies, Inc. v. ICU Medical, Inc. , Case
`
`No. SA CV-07-1199 (DOC) alleging, inter alia, infringement of the ‘566 trademark.
`
`On February 14, 2008, Respondent filed a motion with the Board to issue an order
`
`suspending the instant cancellation proceeding, pending the disposition of the Civil Action
`
`because the claims asserted in the District Court in California involve common legal and factual
`
`issues in dispute in the Board proceedings. On April 1, 2008, the Board issued an Order granting
`
`Respondent’s motion and this Cancellation was suspended pending “final determination” of the
`
`Civil Action, and ordered that: “Within twenty days after the final determination of that civil
`
`action in California, the interested party should notify the Board so that this case may be called up
`
`for appropriate action.” Attached as Exhibit B is a copy of the Board’s April 1, 2008 Order.
`
`On April 22, 2009, the Court issued an order, attached hereto as Exhibit C, granting lCU’s
`
`motion for summary judgment on the trademark claims, holding that the “NEUTRAL” mark at
`
`issue in this cancellation proceeding is generic and not entitled to any trademark protection.
`
`On October 8, 2009, the Court issued an order granting ICU’s counterclaims 1 through 4
`
`for invalidity and cancellation of the “neutral” and “neutral displacement” trademarks, and
`
`dismissing as moot counterclaim 5 for non-infringement of the “neutra ” and “neutral
`
`displacement” trademarks. See Exhibit A. The Court further ordered that pursuant to 15 U.S.C. §
`
`1119, that the Director of the Patent and Trademark Office shall cancel U.S. Registration No.
`
`3,168,566 for the term “neutra .” Id.
`
`On October 8, 2009, the Court also entered final judgment concerning the trademark
`
`counterclaims in favor of ICU. Attached hereto as Exhibit D is a copy of the Court’s October 8,
`
`2009 judgment.
`
`pa-1365136
`
`

`
`The deadline for Respondent to file a notice of appeal of the District Court’s order and
`
`judgment was November 9, 2009. See Fed. R. App. Proc. 4(a)(1)(A). RyMed did not file a notice
`
`of appeal prior to the deadline.
`
`ARGUMENT
`
`The Board should cancel the ‘566 trademark in accordance with the Court’s order that
`
`“pursuant to 15 U.S.C. § 1119, the Director of the Patent and Trademark Office shall cancel U.S,.
`
`[sic] Registration No. 3,168,566 for the term ‘neutral’. ...” See Exhibit A.
`
`Furthermore, the Board should issue judgment in favor of Petitioner because the District
`
`Court’s judgment in the Civil Action in favor of Petitioner has become final and is therefore
`
`binding upon the Board. See TBMP § 510.02(a) (“To the extent a civil action in a federal district
`
`court involves issues in common with those in a proceeding before the Board, the decision of the
`
`Federal district court is binding upon the Board.”)(citing Goya Foods Inc. v. Tropicana Products
`
`Inc., 846 F.2d 848 (2d Cir. 1988); American Bakeries Co. v. Pan-O—Gold Baking Co., 650 F.Supp.
`
`563 (D.Minn. 1986); Tom Co. V. Hardigg Industries, Inc., 187 U.S.P.Q. 689 (T.T.A.B. 1975),
`
`rev ’d on other grounds, 549 F.2d 785 (C.C.P.A. 1977); Other Telephone Co. v. Connecticut
`
`National Telephone Co., 181 U.S.P.Q. 125 (T.T.A.B. l974),petition denied, 181 U.S.P.Q. 779
`
`(Comm’r 1974); Tokaido v. Honda Associates Inc., 179 U.S.P.Q. 861 (T.T.A.B. 1973); Whopper-
`
`Burger, Inc. v. Burger King Corp, 171 U.S.P.Q. 805 (T.T.A.B. 1971); Tuvache, Inc. v. Emilio
`
`Pucci Perfumes International, Inc., 263 F.Supp. 104 (S.D.N.Y. 1967) .
`
`Since RyMed opted not to file a notice of appeal on or before its deadline of November 9,
`
`2009, the District Court’s order directing the Director of the Patent and Trademark Office to
`
`cancel the ‘566 trademark for “NEUTRAL” has become final. See TMBP § 510.02(b) (“a
`
`proceeding is considered to have been fully determined when a decision on the merits of the case
`
`(i.e. a dispositive ruling that ends litigation on the merits) has been rendered and no appeal has
`
`been filed therefrom, or all appeals filed have been decided”)
`
`pa-1365136
`
`

`
`Thus, ICU respectfully requests that the Board enter judgment in favor of Petitioner and
`
`cancel registration of the ‘566 trademark.
`
`MORRISON & F OERSTER LLP
`
`'
`
`/75’
`
`J‘
`
`Kimberly N. Van Voorhis
`
`A
`
`....,
`
`._
`
`Morrison & Foerster, LLP
`755 Page Mill Road
`Palo Alto, California 94304-1018
`Telephone: (650) 813-5600
`Facsimile: (650) 494-0792
`
`Attorneys for Petitioner
`ICU MEDICAL, INC.
`
`By_
`I
`
`pa—1365136
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Motion for Entry of
`
`Judgment for Cancellation No. 92048392 was served on November 12, 2009 by e-mail and first
`
`class mail, postage prepaid, on:
`
`David P. Gordon
`Gordon & Jacobson PC
`
`60 Long Ridge Road, Suite 407
`Stamford, CT 06902-1842
`
` .
`
`V
`I/oorhis 9
`For Petitioner, ICU Medical, Inc.
`
`pa—1365136
`
`

`
`EXHIBIT A
`
`

`
`Case 8:07—cv—O1’l99—l\/lRP—VBK Document 336
`
`Filed 10/08/2009
`
`Page 1 of 2
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`RYMED TECHNOLOGIES, INC., a
`Delaware corporation,
`
`Plaintiff,
`
`Case No. SA CV 07-1199 MRP (VBKX)
`
`VS.
`
`ICU MEDICAL, INC., a Delaware
`corporation,
`
`Defendant.
`
`
`ORDER
`
`Hon. Mariana R. Pfaelzer
`
`On April 22, 2009, the Court found the terms “neutral” and “neutral
`
`displacement” to be generic and that there can be no trademark protection for these
`
`terms. Therefore, the Court granted Defendant ICU Medical, Inc.’s Motion for Partial
`
`Summary Judgment as to Counts 1 through 7 of the First Amended Complaint for
`
`RyMed’s trademark infringement claims with respect to the term “neutral.”
`
`Subsequently, Claim 8 was dismissed on May 8, 2009. The Defendant’s Motion for
`
`Summary Judgment for Counts 3, 6, 7, and 9 was granted in part on June 24, 2009 with
`
`respect to false advertising. Defendant’s Motion for Summary Judgment on the
`
`remaining claims was granted July 30, 2009.
`
`Accordingly, IT IS HEREBY ORDERED, pursuant to the Court’s Order of April
`
`

`
`Case 8:07—cv—O1199—l\/1RP—VBK Document 336
`
`Filed 10/08/2009
`
`Page 2 of 2
`
`22, 2009 finding the terms “neutral” and “neutral displacement” to be generic, that ICU
`
`Medical Inc.’s Counterclaims I through 4 for invalidity and cancellation of the
`
`“neutral” and “neutral displacement” trademarks are hereby GRANTED.
`
`IT IS FURTHER ORDERED that ICU Medical Inc.’s Counterclaim 5 for
`
`non—infringement of the “neutral” and “neutral displacement” trademarks is dismissed
`
`as moot.
`
`IT IS FURTHER ORDERED that pursuant to 15 U.S.C. § 11 19, the Director of
`
`the Patent and Trademark Office shall cancel U.S,. Registration No. 3,168,566 for the
`
`term “neutral” and U.S. Registration No. 3,337,575 for the term “neutral displacement."
`
`IT IS SO ORDERED.
`
` DATED: October Q, 2009
`
`The Honorable Mariana R. Pfa zer
`
`United States District Judge
`
`

`
`EXHIBIT B
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Page 1 of4
`
`Lontayao, Loraine
`
`Subject: FW: ICU/RyMed TTAB '566: 2008-04-01 Order
`
`From: ESTTA@uspto.gov [mai|to:ESTTA@uspto.gov]
`Sent: Tuesday, April 01, 2008 6:59 AM
`To: Van Voorhis, Kimberly N.; Taylor, Jennifer Lee (SF)
`Subject: TTAB Order — Do Not Reply By E-mail. Mail Box Not Monitored.
`
`UNWEDSTATESPATENTANDTRADEMARK
`OFHCE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Brown Mailed: April 1, 2008
`
`Cancellation No. 920483922048392
`
`ICU Medical,
`
`Inc.
`
`ICU Medical,
`
`Inc.
`
`V.
`
`Rymed Technologies,
`
`Inc.
`
`Angela Lykos, Interlocutory Attorney:
`
`This case comes before the Board for consideration of respondents motion
`
`(filed February 14, 2008)
`
`to suspend proceedings pending the outcome of a civil
`
`action, currently pending in the U.S. District Court for California, Case No.
`
`SA cv O7—1199(DOC).{l] The motion is fully briefed.
`
`After carefully considering the parties’ arguments, as well as reviewing
`
`the petition to cancel and respondents complaint filed in the district court
`
`proceeding in California,iA} the Board finds that suspension is appropriate in
`this case.
`
`By way of background, petitioner,
`
`ICU Medical, Inc., filed a petition to
`
`cancel Registration No. 3168566 for the mark NEUTRAL for medical apparatus for
`
`use in performing intravenous procedures, namely,
`
`tubing connectors and valves
`
`for use in the collection and distribution of blood and intravenous fluids. As
`
`grounds for cancellation, petitioner asserts that the mark is merely
`
`descriptive of the identified goods under Trademark Act Section 2(e)(1)
`
`(see
`
`6/5/2008
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Page 2 of4
`
`petition to cancel at paragraph #4) and has become generic because members
`
`of the healthcare industry primarily use or understand this term to refer to
`
`the types of medical goods in question (see petition to cancel at paragraph
`
`#6).
`
`In support of suspension and along with its motion to suspend,
`
`respondent
`
`provided a copy of the complaint it filed in the U.S. District Court for
`
`California on October 10, 2007 as well as petitioners motion to dismiss that
`
`case.
`
`In the complaint,
`
`respondent asserts claims for declaratory relief of
`
`invalidity and non—infringement of the patents asserted by petitioner in the
`
`Delaware action and infringement of Registration No. 3168566 for the mark
`
`NEUTRAL as well as unfair competition under federal and state law.
`
`With regard to suspension of a Board proceeding pending other litigation,
`
`Trademark Rule 2.1l7(a) provides as follows:
`
`Whenever it shall come to the attention of the Trademark Trial and
`
`Appeal Board that parties to a pending case are engaged in a civil
`action which may be dispositive of the case, proceedings before the
`Board may be suspended until determination of the civil action.
`
`Suspension of a Board proceeding pending the final determination of
`
`another proceeding is solely within the discretion of the Board and is
`
`appropriate when a ruling in the civil case will have a bearing on the
`
`rights of the parties in the Board proceeding. See Martin Beverage Co.,
`
`Inc. V. Colita Beverage Corp., 169 USPQ 568 (TTAB 1971). To the extent
`
`that a civil action in a federal district court
`
`involves issues in common
`
`with those in a proceeding before the Board,
`
`the decision of the Federal
`
`district court is binding upon the Board, while the decision of the Board
`
`is not binding upon the court. See, for example, Goya Foods Inc. V.
`
`Tropicana Products Inc., 846 F.2d 848,
`
`6 USPQ2d 1950 (2d Cir 1988); and
`
`Trademark Trial and Appeal Board Manual of Procedure (TBMP) 510.02(a)
`
`(2d
`
`ed. rev. 2004) and cases cited therein.
`
`At a minimum, it appears that the claims asserted in the U.S. District
`
`Court
`
`in California involve common legal and factual issues in dispute in the
`
`Board proceedings. Moreover, on page four
`
`(4) of its reply brief in support of
`
`6/5/2008
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Page 3 of 4
`
`its motion to dismiss the district court complaint
`
`in California, it
`
`appears that petitioner intends to challenge respondents mark on many of the
`
`same grounds that it asserts in the petition to cancel, namely that respondents
`
`mark is highly descriptive and should not be afforded trademark protection.
`
`With the validity of respondents registration presently before the court,
`
`suspension would avoid the undesirable result of litigating the same or similar
`
`issues in two separate forums and minimizes the waste of the limited resources
`
`of all involved parties including the Board. Furthermore, as requested by
`
`respondent
`
`in the civil action in California, such further relief as the Court
`
`deems appropriate could include a prohibition against bringing proceedings
`
`involving the same parties before the Board. This type of relief would
`
`undoubtedly impact and have a bearing on the case before the Board. As the
`
`civil action in California is currently
`
`stayedggi and there is a pending motion to dismiss in the case, it is clear
`
`that a final determination has not been made and until then,
`
`the Board finds
`
`that the best course of action is to suspend the cancellation proceeding.
`
`Accordingly,
`
`in the interest of judicial economy and consistent with the
`
`Boards inherent authority to regulate its own proceedings,
`
`respondents motion
`
`to suspend is granted. Proceedings herein are therefore suspended pending
`
`disposition of the civil action between the parties.
`
`Within twenty days after the final determination of that civil action in
`California,
`the interested party should notify the Board so that this case may
`be called up for appropriate action.
`
`NEWS FROM THE TTAB:
`
`The USPTO published a notice of final rulemaking in the Federal Register on
`August 1, 2007, at 72 F.R. 42242. By this notice, various rules governing
`Trademark Trial and Appeal Board inter partes proceedings are amended. Certain
`amendments have an effective date of August 31, 2007, while most have an
`effective date of November 1, 2007. For further information,
`the parties are
`
`referred to a reprint of the final rule and a chart summarizing the affected
`rules,
`their changes, and effective dates, both viewable on the USPTO website
`via these web addresses:
`
`
`
`2 2 Z2 .
`ces/com/sol/noticesf72f;
`http://www.uspto.gov/web/of
`
`é2mFinalRuleChart.pdf
`htto://www.uspto.gov/web/ofLices/com/sol/notices/72hr-22
`
`the Board's standard protective
`By one rule change effective August 31, 2007,
`order is made applicable to all TTAB inter partes cases, whether already
`pending or commenced on or after that date. However, as explained in the final
`
`6/5/2008
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Page 4 of4
`
`this change will not affect any case in which any protective
`rule and chart,
`order has already been approved or imposed by the Board. Further, as explained
`in the final rule, parties are free to agree to a substitute protective order
`or to supplement or amend the standard order even after August 31, 2007,
`subject to Board approval. The standard protective order can be viewed using
`the following web address:
`
`http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
`
`[i’ The Board notes that respondent filed two motions to suspend proceedings on the
`same day, February 14, 2008. While the respective motions appear to be the same, only
`one contained respondents exhibits and other supporting documentation.
`W1
`[A’ According to respondent, on July 27, 2007, petitioner filed a complaint against
`respondent
`in the District Court of Delaware alleging that respondents products
`infringe upon four of petitioners patents.
`"7'!
`3]
`
`the Delaware court denied respondents motion to transfer the
`On January 23, 2008,
`case in Delaware to California. Insofar as respondent has requested that the Delaware
`court reconsider its decision,
`the proceedings in California were stayed.
`
`6/5/2008
`
`

`
`EXHIBIT C
`
`

`
`Gas
`
`8:07-cv-O1199—MRP—VBK Document182
`
`Filed 04/22/2009
`
`Page 1 of 20
`
`|—a
`
`©\DOO\IO\U1-bu-)l\)
`
`D-A
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`RyMed Technologies, Inc.,
`
`Case No. 8:07—CV-1199 MRP (VBKX)
`
`V.
`
`Plaintiff,
`
`ORDER GRANTING ICU MEDICAL,
`INC.’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT
`
`ICU Medical, Inc.,
`
`Defendant.
`
`I. Background
`
`A. Procedural Histogg
`
`ICU Medical, Inc. (“ICU”) brought suit against Rymed Technologies, Inc.
`
`(“Rymed”) for patent infringement in the District of Delaware on July 27, 2007.
`
`Rymed then filed this suit in the Central District of California on October 10, 2007
`
`for declaratory judgment of non—infringement and patent invalidity, together with
`
`state and federal trademark and related claims.’ The patent claims were transferred
`
`1 Rymed’s claims include federal claims under the Lanham Act: trademark
`infringement (15 U.S.C. § 1114), false designation of origin, and unfair
`competition (§ 1l25(a)); claims under California law: unfair competition (Cal.
`Bus. & Prof. Code §§ 17200, 17500); common law passing off and unfair
`competition; intentional interference with contract; and intentional interference
`
`-1-
`
`

`
`Cas
`
`8:07-cv-O1199—MRP—VBK Document182
`
`Filed 04/22/2009
`
`Page 2 of 20
`
`r—A
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`to the District of Delaware May 21, 2008. ICU filed in this Court a Motion for
`
`Partial Summary Judgment of the “Neutral” False Advertising and Trademark
`
`Claims.2
`
`B. Needleless connectors
`
`Since the early 1990s, intravenous catheters have almost exclusively
`
`employed needleless connectors because they obviate many problems associated
`
`with accidental needle stick injuries. When the original needleless intravenous
`
`(I.V.) connectors were disconnected, they caused a “negative fluid displacement,”
`
`or reflux of the patient’s blood within the catheter fluid pathway. If this blood
`
`remained into the catheter, it would likely clot and block fluid flow, resulting in an
`
`inability to draw blood or infiise medication to the patient, and the risk of catheter-
`
`related bloodstream infection.
`
`In the late 1990s, “positive fluid displacement” I.V. connectors were
`
`developed, which were designed to push fluid out of the catheter upon
`
`disconnection. However, upon connection, they caused negative fluid
`
`displacement, drew patient blood into the catheter, and were likely to cause the
`
`resulting issues associated with blood reflux.
`
`In 2004, Rymed sought to alleviate the problems associated with negative
`
`fluid flow with the InVision—Plus needleless connector, which was characterized b
`
`Rymed as the first needleless connector with “zero fluid displacement.” Dec]. of
`
`Dana Wm. Ryan in Opp. to ICU Medical’s Mot. for Partial Summ. J. (“Ryan
`
`Decl.”) at 5-6.
`
`
`
`with prospective business and economic advantages. Counts l-9, Rymed’s First
`Am. Compl. for Injunctive Relief at 14-23.
`2 These claims include Counts l, 2, 4, and 5 in their entirety, Counts 3, 6, and 7,
`with respect to the “Neutral” mark, but not Counts 8 and 9. Id.
`
`-2-
`
`

`
`Cas
`
`8:07—cv—01199-MRP-VBK Document182
`
`Filed 04/22/2009
`
`Page 3 of 20
`
`p_.i
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`
`C. Rymed’s trademark registrations
`
`Rymed holds Trademark Registration No. 3,168,566 on the Principal
`
`Register for the term “Neutral” in connection with “medical apparatus for use in
`
`performing intravenous procedures, namely, tubing connectors and valves for use
`
`in the collection and distribution of blood and intravenous fluids” in Class 10
`
`(medical apparatus). Rymed filed for this trademark protection in the U.S. Patent
`
`and Trademark Off1ce(“U.S.P.T.O.”) on December 22, 2005, representing its first
`
`use and first use in commerce as December 1, 2005. ICU filed a petition for
`
`cancellation of Ryrned’s “Neutral” registered mark in the U.S.P.T.O. on November
`
`6, 2007. The proceedings were stayed on April 2, 2008 by the Trademark Trial
`
`and Appeal Board, pending the outcome of this case.
`
`At the same time as the application for “Neutral,” Rymed filed an
`
`application for the term “Neutral Displacement” in connection with the same good
`
`and in the same class as the “Neutral” term, but the first use and first use in
`
`commerce of the mark were represented to be January 1, 2004.3 The examining
`
`attorney at the U.S.P.T.O. refused the application for registration, on the grounds
`
`that the term was “merely descriptive of the identified goods” and that Rymed was
`
`“not the only user of this term [“Neutral Displace-ment”] to describe medical
`
`valves,” citing ICU’s MicroClave marketing material. Rymed amended its
`
`application to apply for registration on the Supplemental Register, rather than the
`
`Principal Register. Rymed received Trademark Registration No. 3,337,575 on the
`
`Supplemental Register on November 13, 2007.
`
`The central dispute in this summary judgment centers around whether
`
`“neutral” and “neutral displacement” are generic terms to describe features of
`
`needleless connectors or are protectable as trademarks.
`
`3 Rymed, in this suit, asserts that the first sale for clinical use of the “lnVision—
`Plus® Neutral® Intraluminal Protection System” was in April 2004, which was
`after its application for U.S. Patent No. 6,994,315.
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`-3-
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`

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`Gas 8:O7—cv-01199-MRP-VBK Document182
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`Filed O4/22i2009
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`Page 4 of 20
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`II. Analysis
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`A. Legal Standard for Summagg Judgment
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`Summary judgment is appropriate “if the pleadings, the discovery and
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`disclosure materials on file, and any affidavits show that there is no genuine issue
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`as to any material fact and that the movant is entitled to judgment as a matter of
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`law.” Fed. R. Civ. P. 56(c). In this inquiry, “[t]he evidence of the non—movant is
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`to be believed, and all justifiable inferences are to be drawn in his favor.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). However, for the non-
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`moving party to prevail, there must be evidence sufficient to allow a reasonable
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`jury to return a verdict in favor of the non-moving party. Id. at 248.
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`Summary judgment also “necessarily implicates the substantive evidentiary
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`standard of proof that would apply at trial on the merits.” See Anderson, 477 U.S.
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`at 252-255 (“Whether a jury could reasonably find for either party .
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`.
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`. cannot be
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`defined except by the criteria governing what evidence would enable the jury to
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`find for either the plaintiff or the defendant .
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`.
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`. .”). The burden of the moving
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`party is “to show initially the absence of a genuine issue concerning any material
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`fact.” Celotex Corp. v. Catrett, 477 U.S. 316, 325 (U.S. 1986). The non-moving
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`party must then “go beyond the pleadings” and designate “specific facts showing
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`that there is a genuine issue for trial.” Id. at 324.
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`B. Trademark validigg
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`1. Legal standard
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`The purpose of a trademark is to identify and distinguish the goods or
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`services of one party from those of another party. 15 U.S.C. § 1127. The Lanham
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`Act makes “actionable the deceptive and misleading use of marks” and “protect[s]
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`persons
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`against unfair competition.” Id. A trademark is defined as including
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`“any word, name, symbol, or device, or any combination thereof’ used by a person
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`“to identify and distinguish his or her goods, including a unique product, from
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`-4-
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`

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`Cas
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`8:07-cv-01199—MRP—VBK Document182
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`Filed 04/22/2009
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`Page 5 of 20
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`those manufactured or sold by others and to indicate the source of the goods, even
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`if that source is unknown.” Id.
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`Cases generally identify four categories of marks, in ascending levels of
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`strength, they are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
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`fanciful, although “the lines of demarcation are not always clear.” Surgicenters of
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`Am. v. Med. Dental Surgeries, 601 F.2d 1011, 1014 (9th Cir. 1979). A “‘generic’
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`term is one that refers, or has come to be understood as referring, to the genus of
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`which the particular product or service is a species” and “cannot become a
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`trademark under any circumstances.” Id. (citing Abercrombie & Fitch Co. v.
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`Hunting World, Inc., 537 F .2d 4, 9-10 (2nd Cir. 1976)). “A merely ‘descriptive’
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`term specifically describes a characteristic or ingredient of an article or service”
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`and can become a valid trademark by “acquiring a secondary meaning, i.e.,
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`becoming ‘distinctive of the applicant's goods.”’ Id. “A. ‘suggestive’ term
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`suggests rather than describes an ingredient, quality, or characteristic of the goods
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`and requires imagination, thought, and perception to determine the nature of the
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`goods” and therefore does not require proof of secondary meaning to be registered
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`as a trademark. Id. at 1014-15. “An ‘arbitrary or fancifiil’ term is usually applied
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`to words invented solely for their use as trademarks” and may be registered as a
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`trademark without proof of secondary meaning, i.e., “without the need of debating
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`whether the term is ‘merely descriptive”’ and also “with ease of establishing
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`infringement.” Id. at 1015.
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`In a trademark infringement action, the plaintiff lbears the ultimate burden
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`of persuasion, that is, proof of infringement. Tie Tech, Inc. v. Kinedyne Corp., 296
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`F.3d 778, 783 (9th Cir. 2002). The validity of the trademark is of course “a
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`threshold issue,” as there can be no infiingement of an invalid mark. Id.
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`Federal registration is primafacie evidence of the validity of the mark. 15
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`U.S.C. § 1057(b) (“A certificate of registration of a mark upon the principal
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`register provided by this chapter shall be prima facie evidence of the validity of the
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`-5-
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`

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`Cas
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`8:O7~cv—0‘l199—MRP—VBK Document182
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`Filed 04/22/2009
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`Page 8 of 20
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`registered mark and of the registration of the mark, of the registrant’s ownership of
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`the mark, and of the registrant’s exclusive right to use the registered mar ”). Thus,
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`for registered marks, a defendant may rebut the presumption of validity, “by a
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`showing by a preponderance of the evidence that the term was or has become
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`generic.” Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316,
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`1319 (9th Cir. 1982). When a mark is not registered, there is no presumption of
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`validity, and “the plaintiff is left with the task of satisfying its burden of proof of
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`establishing a valid mark absent application of the presumption.” Yellow Cab Co.
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`v. Yellow Cab ofElk Grove, Inc., 419 F.3d. 925, 928 (9th Cir. 2005).
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`If a plaintiff meets its burden of proving that he has a Valid mark, he must
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`also prove that “the defendant’s use of the same or similar mark would create a
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`likelihood of consumer confiision” to maintain an action for trademark
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`infringement under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. §
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`1l25(a), and unfair competition under California law. Murray v. Cable Nat ’l
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`Broadcasting Co., 86 F.3d 858, 860 (9th Cir. 1996).
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`Summary judgment is proper when there is no trademark protection.
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`Filipino Yellow Pages, Inc. v. Asian Journal Publ ’ns, Inc., 198 F.3d 1143, 1147
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`(9th Cir. 1999) (affirming summary judgment of finding; “Filipino Yellow Pages” a
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`generic term and dismissing trademark infringement, false designation of origin,
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`unfair competition and other claims).
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`In actions involving registered marks,
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`courts may determine the right to registration, and cancel registrations, in whole or
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`in part. 15 U.S.C. § 1119. See also Informix Software, Inc. v. Oracle Corp., 927
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`F. Supp. 1283 (N.D. Cal. 1996) (discussing concurrent jurisdiction of a federal
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`court and the Trademark Trial and Appeal Board over cancellation of trademarks).
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`2. Rmed’s marks
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`ICU asserts that Rymed’s marks “Neutral” and “Neutral Displacement” are
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`generic terms, or at most, merely descriptive marks without secondary meaning.
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`Mem. of P. & A.’s in Support of Mot. for Partial Summ.. J. of “Neutral” False
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`-5-
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`

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`Ca
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`8:07-cv—()1199—MRP-VBK Document 182
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`Filed 04/22/2009
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`Page 7 of 20
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`Advertising and Trademark Claims (“ICU’s P. & A.’s”) at 17. ICU must present
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`facts to show by a preponderance of the evidence that Rjymed’s marks are generic
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`to overcome the presumption of validity of the registered mark.
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`To determine whether a mark is generic, the Ninth Circuit has endorsed the
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`“‘who-are-you/what-are-you’ test.” Filipino Yellow Pages, 198 F.3d at 1147. ‘“A
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`mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from?’
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`‘Who Vouches for you?’ But the [generic] name of the product answers the
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`question ‘What are you?’” Filipino Yellow Pages, 198 F.3d (citing Oflicial Airline
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`Guides, Inc. v. Goss, 6 F .3d 1385, 1391 (9th Cir. 1993) (quoting 1 J. McCarthy,
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`Trademarks and Unfair Competition § 12.01 (3d ed. 1992)). Under the “who-are-
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`you/what-are-you” test, “[i]f the primary significance of the trademark is to
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`describe the type of product rather than the producer, the trademark [is] a generic
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`term and [cannot be] a valid trademark.” (Id. at 1 147 quoting Anti—Monopoly, Inc.
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`v. General Mills Fun Group, 611 F.2d 296, 304 (9th Cir. 1979)). For a
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`determination of genericness, the crucial date is the date the alleged infringer
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`entered the market with the disputed mark or term. Yellow Cab, 419 F.3d at 928.
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`The test for genericness depends on the “primary significance of the registered
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`mark to the relevant public.” 15 U.S.C. § 1064(3). Evidence to prove genericness
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`can be varied, and may include plaintiffs use, competitors’ use, dictionary
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`definitions, media usage, testimony of people in the trade, and consumer surveys.
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`2 J. McCarthy on Trademarks and Unfair Competition § 12:13 (4th ed. 2009). See
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`also Filipino Yellow Pages, 198 F.3d at 1145.
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`Marks that are descriptive can be protected as valid trademarks with a
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`showing of secondary meaning. Filipino Yellow Pages, 198 F.3d at 1151 (citing
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`Surgicenters ofAm., 601 F.2d at 1014). Secondary meaning has “attached” to a
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`mark when “the consuming public connects the mark with the producer rather than
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`the product.” Surgicenters, 601 F.2d at 1018 (citing Carter- Wallace, Inc. v.
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`Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970)).
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`-7-
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`

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`Cas
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`8:O7—cv-01199-MRP—VBK Document 182
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`Filed 04/22/2009
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`Page 8 of 20
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`Courts may look to the use of a mark by the trademark holder itself as well
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`as others to determine genericness. Colt Defense LLC v. Bushmaster Firearms,
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`Inc., 486 F.3d 701, 707 (1st Cir. 2007). “Generic use by the party seeking
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`trademark protection is relevant because ‘[a] kind of estoppel arises when the
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`proponent of [a] trademark use is proven to have itself used the term before the
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`public as a generic name .
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`.
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`. .’” Id. (citing McCarthy § 12:13) (alterations in
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`original). See also CG Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp. 2d 1019,
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`1029 (N.D. Cal. 2008).
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`a. Ryr_ned’s use of the terms
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`Rymed filed a patent application for a “Swabbable Needle-Free Injection
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`Port Valve System with Neutral Fluid Displacement,” now U.S. Patent No.
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`6,994,315 (“the Rymed patent”), on January 13, 2004, before its filing of the
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`trademark