Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA316649
`ESTTA Tracking number:
`11/12/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048656
`Plaintiff
`ICU Medical, Inc.
`Kimberly Van Voorhis, Erika Yawger
`Morrison & Foerster LLP
`755 Page Mill Rd.
`Palo Alto, CA 94304
`UNITED STATES
`kvanvoorhis@mofo.com, eyawger@mofo.com
`Other Motions/Papers
`Kimberly Van Voorhis
`kvanvoorhis@mofo.com, jtaylor@mofo.com
`/KNV/
`11/12/2009
`Neutral Displacement - motion for entry of judgment.pdf ( 35 pages )(1454854
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`TRADEMARK
`Docket No. 63 l45—6002.501
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ICU MEDICAL, INC.,
`
`Cancellation No. 92048656
`
`V.
`
`Petitioner,
`
`Mark: NEUTRAL DISPLACEMENT
`Reg. No. 3337575
`
`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 DISPLACEMENT” 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 Manual of Procedure
`
`(“TMBP”) § 510.02(b).
`
`BACKGROUND
`
`On December 19, 2007, Petitioner filed a petition to cancel RyMed Technologies, Inc.’s
`
`(“RyMed” or “Respondent”) mark, Reg. No. 3,337,575 (“the ‘575 trademark”), “NEUTRAL
`
`pa—l365 137
`
`

`
`DISPLACEMENT,” on the basis that the mark is a “generic” term in the industry and should not
`
`have registered as a trademark on the supplemental register.
`
`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 ‘575 trademark.
`
`On July 28, 2008, the Parties filed a stipulated request 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 July 29, 2008, the Board issued an Order granting the
`
`stipulated request, and this Cancellation was suspended pending “final determination” of the Civil
`
`Action. The Board also ordered that: “Within twenty days after the final determination of the civil
`
`action, the parties shall so notify the Board and call this ease up for any appropriate action.”
`
`Attached as Exhibit B is a copy of the Board’s July 29, 2008 Order.
`
`On April 22, 2009, the Court issued an order, attached hereto as Exhibit C, granting ICU’s
`
`motion for summary judgment on the trademark claims, holding that the “NEUTRAL
`
`DISPLACEMENT” 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 “neutra ” and “neutral displacement” trademarks, and
`
`dismissing as moot counterclaim 5 for non-infringement of the “neutral” and “neutral
`
`displacement” trademarks. See Exhibit A. The Court filrther ordered that pursuant to 15 U.S.C. §
`
`1 119, that the Director of the Patent and Trademark Office shall cancel U.S. Registration No.
`
`3,337,575 for the term “neutral displacement.” 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-1365137
`
`Cancellation No. 92048656
`Docket No. 63145-6002.531
`
`

`
`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 ‘575 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. Registration No. 3,337,575 for the term ‘neutral displacement.” 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 is 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-0—Gold Baking Co., 650 F.Supp. 563 (D.Minn. 1986); Toro
`
`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 C0,, 181
`
`U.S.P.Q. 125 (T.T.A.B. 1974),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); Wh0pper—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 ‘575 trademark for “NEUTRAL DISPLACEMENT” 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—l365l37
`
`Cancellation No. 92048656
`Docket No. 63145-6002.531
`
`

`
`Thus, ICU respectfillly requests that the Board enter judgment in favor of Petitioner and
`
`cancel registration of the ‘575 trademark.
`
`MORRISON & FOERSTER LLP
`
`By:
`
`;
`
`-(2%
`
`_
`I
`Kimberly N. Van Voorhis
`
`Morrison & Foerstcr, LLP
`755 Page Mill Road
`Palo Alto, California 94304-1018
`Telephone: (650) 813-5600
`Facsimile: (650) 494-0792
`
`Attorneys for Petitioner
`ICU MEDICAL, INC.
`
`pa-1365137
`
`Cancellation No. 92048656
`Docket No. 63145-6002.531
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Motion for Entry of Judgment
`
`for Cancellation No. 92048656 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
`
`
`
` >
`
`R!/M", K/// ‘‘,r'
`.
`
`rly N. Van Voorhis
`For Petitioner, ICU Medical, Inc.
`
`pa—l365 137
`
`Cancellation No. 92048656
`Docket No. 63145-6002.501
`3
`
`

`
`EXHIBIT A
`
`

`
`Case 8:07-cv-O1199—lVlRP—VBK Document 336
`
`Filed 10/08/2009
`
`Page 1 of 2
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`6 7 8
`
`9
`
`10
`
`11 RYMED TECHNOLOGIES, INC., a
`Delaware corporation,
`
`Plaintiff,
`
`Case No. SA CV 07-1199 MRP (VBKX)
`
`VS.
`
`ICU ME_DICAL, INC., a Delaware
`corporation,
`
`15
`
`16
`
`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 infiingement 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 8:0’/'—cv-01199—IVlRP—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 1 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. § 1119, 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
`
`

`
`-UNWEDSTATESPATENTANDTRADEMARKOFHCE
`Trademark Trial and Appeal Board
`PO. Box 1451
`Alexandria, VA 22313-1451
`
`Mailed:
`
`July 29, 2008
`
`Cancellation No. 92048656
`
`ICU Medical,
`
`Inc.
`
`v.
`
`RyMed Technologies,
`
`Inc.
`
`George C. Pologeorgis, Interlocutory Attorney:
`
`The parties’ stipulation (filed July 28, 2008)
`
`to
`
`suspend these proceedings pending the final determination
`
`of a civil action between the parties in the United States
`
`District Court for the Central District of California is
`
`hereby granted.1 See Trademark Rules 2.l27(a) and 2.117(a).
`
`Accordingly, proceedings are suspended pending final
`
`disposition of the civil action between the parties.
`
`Within twenty days after the final determination of
`
`the civil action,
`
`the parties shall so notify the Board and
`
`call this case up for any appropriate action. During the
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`suspension period,
`
`the parties shall notify the Board of
`
`any address changes for the parties or their attorneys.
`
`ICU Medical, Inc., Case No. SA CV-
`Inc. V.
`1 RyMed Technologies,
`07 1199 (DOC), United States District Court for the Central
`District of California.
`
`RECEIVED
`
`AUG — 1 2008
`
`MORRISON & FOERSTER. LLP
`
`

`
`Cancellation No. 92048656
`
`NEWS FROM THE TTAB:
`
`The USPTO published a notice of final rulemaking in the
`By
`Federal Register on August 1, 2007, at 72 F.R. 42242.
`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
`
`the parties are referred to a reprint
`further information,
`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:
`htt
`://www.us to. ov/web/offices/com/sol/notices/72fr42242. df
`
`
`
`http://www.uspto.ggy/web/offices/com/sol/notices/72fr42242 FinalR
`u1eChart;pg§
`
`the Board's
`By one rule change effective August 31, 2007,
`standard protective 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
`rule and chart,
`this change will not affect any case in
`which any protective 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,u§pto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
`
`

`
`EXHIBIT C
`
`

`
`Cas 8:07-cv-01199—l\/ERP-VBK Document182
`
`Filed 04/22/2009
`
`Page 1 01°20
`
`v—a
`
`D-|r—d
`
`’-‘C\OO0\IC'\'J‘t-§UJi\)
`|\J>—»—ap-Aa--.—a.—p-av-A©\OOO\lC7\LIIJ>UJl\>
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`
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`[Q 00
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`RyMed Technologies, Inc.,
`
`Case No. 8:07—CV—1 199 MRP (VBKX)
`
`V.
`
`Plaintiff,
`
`ORDER GRANTING ICU MEDICAL,
`INC.’S MOTION FOR PARTIAL
`SUMMARY JUDGMENT
`
`ICU Medical, Inc.,
`
`
`
`Defendant.
`
`I. Background
`
`A. Procedural Histog
`
`ICU Medical, Inc. (“ICU”) brought suit against Rymed Technologies, Inc.
`
`(“Rymed”) for patent infringement in the District of Delaware on July 27, 2007.
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`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
`
`' 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:O7—cv—01199-MRP—VBK Documentl82
`
`Filed 04/22/2009
`
`Page 2 of 20
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`\OO<>\]O\UI-l>bJl\J
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`ll
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`28
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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?
`
`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
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`inability to draw blood or infuse medication to the patient, and the risk of catheter-
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`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
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`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.” Decl. 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 1-9, Rymed’s First
`Am. Compl. for Injunctive Relief at 14-23.
`2 These claims include Counts 1, 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-O1t99—MRP—VBK Document 182
`
`Filed 04/22/2009
`
`Page 3 of 20
`
`p—i
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`I0 00
`
`C. Rmed’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 Displacement”] 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 “InVision—
`P1us® Neutral® Intraluminal Protection System” was in April 2004, which was
`afler its application for U.S. Patent No. 6,994,315.
`
`-3-
`
`

`
`Cas 8:O7~ev-01199-MRP-VBK Document 182
`
`Filed 04/22/2009
`
`Page 4 of 20
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`\OO0\lO’\'JIJ>l.oJl\>
`
`10
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`ll
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`12
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`13
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`14
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`15
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`16
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`II. Analysis
`
`A. Legal Standard for Summary Judgment
`
`Summary judgment is appropriate “if the pleadings, the discovery and
`
`disclosure materials on file, and any affidavits show that there is no genuine issue
`
`as to any material fact and that the movant is entitled to judgment as a matter of
`
`law.” Fed. R. Civ. P. 56(c). In this inquiry, “[t]he evidence of the non—movant is
`
`to be believed, and all justifiable inferences are to be drawn in his favor.”
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). However, for the non-
`
`moving party to prevail, there must be evidence sufficient to allow a reasonable
`
`jury to return a verdict in favor of the non-moving party. Id. at 248.
`
`Summary judgment also “necessarily implicates the substantive evidentiary
`
`standard of proof that would apply at trial on the merits.” See Anderson, 477 U.S.
`
`at 252-255 (“Whether a jury could reasonably find for either party .
`
`.
`
`. cannot be
`
`defined except by the criteria governing what evidence would enable the jury to
`
`find for either the plaintiff or the defendant .
`
`.
`
`. .”). The burden of the moving
`
`party is “to show initially the absence of a genuine issue concerning any material
`
`fact.” Celotex Corp. v. Catrett, 477 U.S. 316, 325 (U.S. 1986). The non-moving
`
`party must then “go beyond the pleadings” and designate “specific facts showing
`
`that there is a genuine issue for trial.” Id. at 324.
`
`B. Trademark validity
`
`1. Legal standard
`
`The purpose of a trademark is to identify and distinguish the goods or
`
`services of one party from those of another party. 15 U.S.C. § 1127. The Lanham
`
`Act makes “actionable the deceptive and misleading use of marks” and “protect[s]
`
`persons
`
`against unfair competition.” Id. A trademark is defined as including
`
`“any word, name, symbol, or device, or any combination thereof’ used by a person
`
`“to identify and distinguish his or her goods, including a unique product, from
`
`-4-
`
`

`
`Cas 8:07-cv—01199—MRP-VBK Document 182
`
`Filed 04/22/2009
`
`Page 5 of 20
`
`those manufactured or sold by others and to indicate the source of the goods, even
`
`if that source is unknown.” Id.
`
`Cases generally identify four categories of marks, in ascending levels of
`
`strength, they are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
`
`fanciful, although “the lines of demarcation are not always clear.” Surgicenters of
`
`Am. v. Med. Dental Surgeries, 601 F.2d 1011, 1014 (9th Cir. 1979). A ‘“generic’
`
`term is one that refers, or has come to be understood as referring, to the genus of
`
`which the particular product or service is a species” and “cannot become a
`
`trademark under any circumstances.” Id. (citing Abercrombie & Fitch Co. v.
`
`Hunting World, Inc., 537 F.2d 4, 9-10 (2nd Cir. 1976)). “A merely ‘descriptive’
`
`term specifically describes a characteristic or ingredient of an article or service”
`
`and can become a valid trademark by “acquiring a secondary meaning, i.e.,
`
`becoming ‘distinctive of the applicant's goods.”’ Ia’. “A ‘suggestive’ term
`
`suggests rather than describes an ingredient, quality, or characteristic of the goods
`
`and requires imagination, thought, and perception to determine the nature of the
`
`goods” and therefore does not require proof of secondary meaning to be registered
`
`as a trademark. Id. at 1014-15. “An ‘arbitrary or fanciful’ 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 bears 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 infringement 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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`8:O7—cv—O1199—MRP-VBK Document 182
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`Filed 04/22/2009
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`Page 6 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 Fan 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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`1 125(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. Rymed’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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`8:07-cv-01199—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 Rymed’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 Ojficial 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 Fan 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 plaintiff’ s 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 C0,, 434 F.2d 794 (9th Cir. 1970)).
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`8:O7—cv—O1199—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. Rmed’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 applications for marks “Neutral” and “Neutral Displacement.” Rymed
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`used the word “neutral” within the term “neutral fluid displacement” throughout
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`the specification and in prosecution arguments.
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`The application recites the word “neutral” within the term “neutral fluid
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`displacement in the title and written description generically five times, and in the
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`claims three times. See the Rymed patent: title, col. 2, lines 42-45 (“It is another
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`object of the invention to provide an injection port valve system which has a
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`neutralfluid displacement to minimize blood being refluxed or retrograded into a
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`vascular access device lumen. . .”), col. 3, lines 58-59 (“The system achieves a
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`neutralfluid displacement and an improved microbial ingress barrier”), col. 8,
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`lines 39-43 (“This new design eliminates any interstitial cavity chamber or dead
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`space between these two interfaces thus assisting in achieving a ‘neutralfluid
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`displacement’ when the valve is moved from the decompressed state to the
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`compressed state.”), and col. 9, lines 6-11 (“assisting in eliminating the dead space
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`between the septum/boot valve and boot valve/spike tip interfaces to achieve
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`neutralfluid displacement during the compression and decompression cycle.’’)
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`.8.
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`8:07—cv—O1199-MRP—VBK Doeument182
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`Filed 04/22/2009
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`Page 9 of 20
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`(emphases added). Three claims of the Rymed patent recite the limitation as well:
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`claim 16 (“said second connector forces said second resilient barrier and said tip
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`portion of said first resilient barrier over said spike with neutralfluid displacement
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`and such that said second connector and said first connector are in fluid
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`communication with each other”), claim 28 (“such that the valve is opened putting
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`the device is in fluid communication with the fluid pathway with neutralfluid
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`displacement during coupling,” and claim 29 (“such that the device is no longer in
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`fluid communication with the fluid pathway with neutralfluid displacement during
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`uncoupling.). The Rymed patent; col. 12, lines 61-66; col. 15, lines 20-23; and col.
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`15, line 27 to col. 16, line 2 (emphases added).
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`While prosecuting the Rymed patent, Rymed used the neutral displacement
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`feature to overcome a rejection under 35 U.S.C. § lO2(b) over its own prior patent.
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`To distinguish the claims from the prior art, Rymed characterized neutral fluid
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`displacement as “arguably the most important improvement over this inventor’s
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`prior apparatus which provided ‘low reflux’ but not ‘neutral fluid disp1acement’.”
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`Reply to Office Action dated Aug. 26, 2005 in Serial No. 10/756,601, at 18.
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`Rymed continued, “It wasn’t until the presently disclosed and claimed invention
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`that it was possible to provide completely neutral displacement, i.e.[,] absolutely
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`no reflux, a significant improvement” and offered to provide customer testimonials
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`to demonstrate that “the neutral (zero) fluid displacement is being heralded
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`throughout the U.S. at hospitals and by nursing associations as a significant
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`achievement which eliminates the need for heparin flushes.” Id.
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`The patent examiner allowed the claims, but amended claim 17 (which
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`issued as claim 16) to also include the limitation of “with neutral fluid
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`displacement” to “overcome potential prior art rejections.” Examiner’s
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`Amendment dated Sept. 20, 2005 in Serial No. 10/756,601, at 2. Rymed did not
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`comment on the examiner’s amendments.
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`Cass
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`8:O7—cv—O1199—MRF’—VBK Document182
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`Filed 04/22/2009
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`Page 10 of 20
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`While trademarks may be used in patent applications, they “should be
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`identified by capitalizing each letter of the mark (in the case of word or letter
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`marks) or otherwise indicating the description of the mark” such as following the
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`mark with [trade] or ®, and “be accompanied by the generic terminology.”
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`Manual of Patent Examining Procedure (“M.P.E.P.”) § 608.0l(v). In addition, the
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`M.P.E.P. counsels “[a]lthough the use of trademarks is permissible in patent
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`applications, the proprietary nature of the marks should be respected and every
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`effort made to prevent their use in any manner which might adversely affect their
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`validity as trademarks” and counsels against the use of trademarks in the titles of
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`patent applications. Id.
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`Rymed’s use of the term “neutral fluid displacement” in the Rymed patent
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`and prosecution history are inconsistent with its assertion that the marks “Neutral”
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`and “Neutral Displacement” are protectable as trademarks. There is no indication
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`that Rymed intends these terms to be trademarks in the Rymed patent as filed, and
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`there is no generic terminology other than “neutral” to describe the type of fluid
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`displacement. In fact, it was not until Rymed had to rely on the neutral fluid
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`displacement feature for patentability that it even discussed the