throbber
Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92051145
`
`Defendant
`
`3M Company
`ALLEN HINDERAKER
`MERCHANT& GOULD PC
`80 SOUTH 8TH STREET, 3200 IDS CENTER
`MINNEAPOLIS, MN 55402 2215
`UNITED STATES
`
`wschu|tz@merchantgou|d.com, aries@merchantgou|d.com,
`ahinderaker&merchantgou|d.com, dockmp|s@merchantgou|d.com
`
`Other Motions/Papers
`William Schultz
`
`
`
`wschu|tz@merchantgou|d.com, ahinderaker@merchantgou|d.com,
`aries@merchantgou|d.com, dockmp|s@merchantgou|d.com
`/William Schultzl
`
`08/30/2012
`
`2012 08 30 Status Report.PDF ( 14 pages )(216910 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA491917
`ESTTA Tracking number:
`08/30/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051145
`Defendant
`3M Company
`ALLEN HINDERAKER
`MERCHANT& GOULD PC
`80 SOUTH 8TH STREET, 3200 IDS CENTER
`MINNEAPOLIS, MN 55402 2215
`UNITED STATES
`wschultz@merchantgould.com, aries@merchantgould.com,
`ahinderaker&merchantgould.com, dockmpls@merchantgould.com
`Other Motions/Papers
`William Schultz
`wschultz@merchantgould.com, ahinderaker@merchantgould.com,
`aries@merchantgould.com, dockmpls@merchantgould.com
`/William Schultz/
`08/30/2012
`2012 08 30 Status Report.PDF ( 14 pages )(216910 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92051 145
`
`Registration No. 3619324
`
`Mark: CARDIOLOGY III
`
`) )
`
`) )
`
`)
`
`) )
`
`Pradeep Mohan,
`
`Petitioner,
`
`vs.
`
`3M Company,
`
`)
`)
`)
`Registrant.
`___:______.______)
`
`STATUS REPORT CONCERNING CONCLUSION OF
`
`FEDERAL CIRCUIT COURT DECISION AND REQUEST FOR DISMISSAL
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`This Status Report is to notify the Trademark Trial and Appeal Board (“Board”) of the
`
`status of a civil action related to the registration at issue in this proceeding and to request
`
`dismissal of this proceeding based on the final ruling in the civil action.
`
`On December 2, 2011, 3M Company filed a Status Report informing the Board that the
`
`United States District Court for the District of Minnesota entered final judgment that the
`
`CARDIOLOGY III trademark registration (Reg. No. 3,619,324) at issue in this proceeding was
`
`valid. 3M Company acknowledged in that Status Report that the District Court’s judgment may
`
`be appealed, which it was. The Board suspended the proceeding pending final determination of
`
`the civil proceeding.
`
`On May 29, 2012, the United States Court of Appeals for the Federal Circuit affirmed the
`
`District Court decision and held that the CARDIOLOGY III registration (Reg. No. 3,619,324)
`
`was valid. A copy of the May 29, 2012, decision is attached as Exhibit 1.
`
`

`
`On June 14, 2012, 3M Company filed with the Board a request to dismiss the
`
`cancellation proceeding with prejudice pursuant to 15 U.S.C. § 1119. The Board, on June 18,
`
`2012, held 3M Company’s request was premature pending final disposition of the federal case,
`
`including resolution of any appeals. Petitioner’s deadline to petition the Supreme Court for
`
`certiorari regarding the federal case expired on August 27, 2012. The federal case is now
`
`resolved with no opportunities for appeal.
`
`Based on the Federal Circuit’s affirmance of the District Court decision holding the
`
`CARDIOLOGY Ill registration valid and the fact all appeals have been exhausted, 3M Company
`
`requests the Board dismiss the cancellation proceeding with prejudice pursuant to 15 U.S.C. §
`
`1119.
`
`Date: August 30, 2012
`
`Respectfully submitted,
`
`3M Company
`
`By its attorneys,
`
`
`
` Allen Hin eraker
`William Schultz
`MERCHANT & GOULD P.C.
`80 S. 8th Street
`3200 IDS Center
`
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing STATUS REPORT
`CONCERNING CONCLUSION OF FEDERAL CIRCUIT COURT DECISION AND
`
`REQUEST FOR DISMISSAL was served, Via first—class mail, postage prepaid to:
`
`Pradeep Mohan
`115 Chace Street
`
`Santa Cruz, CA 95060
`
`this 30”‘ day of August, 2012.
`
`
`
`CERTIFICATE OF FILING
`
`I hereby certify that this STATUS REPORT CONCERNING CONCLUSION OF
`FEDERAL CIRCUIT COURT DECISION AND REQUEST FOR DISMISSAL is being
`filed electronically with the United States Patent and Trademark Office's Electronic System for
`
`Trademark Trial & Appeals (ESTTA) on this 30th d
`
`

`
`EXHIBIT 1
`
`
`
`EXHIBIT 1
`
`

`
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`__________________________
`
`3M COMPANY and
`3M INNOVATIVE PROPERTIES COMPANY,
`Plaintiffs-Appellees,
`v.
`PRADEEP MOHAN,
`Defendant-Appellant.
`__________________________
`2011-1328
`__________________________
`Appeal from the United States District Court for the
`District of Minnesota in Case No. 09-CV-1413, Judge Ann
`D. Montgomery.
`_________________________
`Decided: May 29, 2012
`_________________________
`ALLEN W. HINDERAKE, Merchant & Gould, P.C., of
`Minneapolis, Minnesota,
`for plaintiffs-appellees. Of
`counsel on the brief was HILDY BOWBEER, 3M Innovative
`Properties Company, of St. Paul, Minnesota.
`
`
`PRADEEP MOHAN, Santa Cruz, California, pro se.
`
`
`
`__________________________
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`2
`
`Before RADER, Chief Judge, LOURIE and REYNA, Circuit
`Judges.
`
`RADER, Chief Judge.
`Defendant-Appellant Pradeep Mohan (“Mohan”) ap-
`peals the district court’s grant of partial summary judg-
`ment, finding of trademark infringement, and award of
`attorneys’ fees and costs in favor of Plaintiffs-Appellees
`3M Company and 3M Innovative Properties Company
`(collectively “3M”). Because this court finds no error in
`the decision of the district court, this court affirms.
`I
`Before the district court, 3M alleged trademark in-
`fringement, counterfeiting, and unfair competition under
`the Lanham Act, 15 U.S.C. § 1051 et seq., related state
`law causes of action, and patent infringement of U.S.
`Patent No. 5,449,865 (“the ’865 patent”). 3M manufac-
`tures and sells stethoscopes under and in association with
`the
`following marks:
` LITTMANN, LITTMANN
`QUALITY Stylized L, Stylized L, CARDIOLOGY III,
`MASTER
`CARDIOLOGY,
`3M,
`and MASTER
`CARDIOLOGY configuration mark. The ’865 patent is
`titled “Ear Tips Having Molded-In Recesses for Attach-
`ment to a Stethoscope,” which is assigned to 3M Com-
`pany.
`3M alleged that Mohan was doing business under the
`names “Kila Labs” and “Lauteen Stethoscopes,” that he
`sold stethoscopes which infringed both the ’865 patent
`and 3M’s trademarks, and that he sold these stethoscopes
`over the Internet via the following websites: kila.com,
`amazon.com, cardioglobal.com, and eBay.com. As of
`October 31, 2008, Mohan’s Kila Labs website contained
`images and words that were either identical to or similar
`to the following trademarks owned by 3M: 1) the 3M
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`3
`
`Corporate logo; 2) the LITTMANN word mark; 3) the
`LITTMANN QUALITY Stylized L; 4) the CARDIOLOGY
`III word mark; and 5) the MASTER CARDIOLOGY
`configuration mark. 3M also argued that the intentional
`nature of Mohan’s actions caused this to be an “excep-
`tional case” warranting award of attorneys’ fees under 15
`U.S.C. § 1117(a). 3M initially sought preliminary and
`permanent injunctions of Mohan, statutory damages, lost
`profits, and pre-judgment interest under 28 U.S.C. § 1961.
`Mohan counterclaimed, alleging tortious interference with
`contract, deceptive trade practices, unfair competition,
`and antitrust violations. Mohan subsequently withdrew
`his antitrust counterclaim.
`3M moved for a partial summary judgment that (i)
`the ’865 patent was not invalid; (ii) Mohan infringed
`claims 8, 9 and 12 of the ’865 patent; and (iii) Mohan’s
`counterclaims be dismissed. Mohan moved for partial
`summary judgment that 3M’s MASTER CARDIOLOGY
`and CARDIOLOGY III marks were invalid.
`The district court granted 3M’s partial summary
`judgment motion and denied Mohan’s motion. 3M Co. v.
`Mohan (“3M I”), No. 09-cv-01413, 2010 WL 3200052, at *3
`(D. Minn. Aug. 9, 2010). The district court then held a
`four-day bench trial on the remaining issues of trademark
`infringement, permanent injunction, and attorneys’ fees.
`The district court concluded that Mohan had engaged in
`willful and deliberate infringement of 3M’s trademarks,
`that a permanent injunction was warranted, and that this
`was an exceptional case justifying the award of 3M’s
`attorneys’ fees. 3M Co. v. Mohan (“3M II”), No. 09-cv-
`01413, 2010 WL 5095676, at *1 (D. Minn. Nov. 24, 2010).
`On January 19, 2011, the district court denied Mohan’s
`motion for a new trial.
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`4
`
`Mohan filed a timely appeal before this court concern-
`ing (i) whether the district court erred in rendering sum-
`mary judgment, (ii) whether his right to a jury trial was
`violated, (iii) whether the district court erred in finding
`Mohan infringed 3M’s trademarks, and (iv) whether the
`district court erred in its determination that the action
`was “exceptional”. This court has jurisdiction under 28
`U.S.C. § 1295(a)(1).
`
`II
`This court reviews the district court's grant of partial
`summary judgment without deference. Int’l Visual Corp.
`v. Crown Metal Mfg. Co., 991 F.2d 768, 770 (Fed. Cir.
`1993). Summary judgment is appropriate only “if the
`pleadings, depositions, answers to interrogatories, and
`admissions on file, together with the affidavits, if any,
`show that there is no genuine issue as to any material
`fact and that the moving party is entitled to judgment as
`a matter of law.” Fed. R. Civ. P. 56(c) (as in effect during
`litigation). The evidence must be viewed in the light most
`favorable to the nonmoving party. SRI Int'l v. Matsushita
`Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed. Cir. 1985)
`(en banc). To overturn summary judgment, the non-
`movant need only show that one or more facts on which
`the district court relied was genuinely in dispute and was
`material to the judgment. Amini Innovation Corp. v.
`Anthony Cal., Inc.¸ 439 F.3d 1365, 1368 (Fed. Cir. 2006).
`However, conclusory statements alone do not raise a
`genuine issue of material fact sufficient to defeat sum-
`mary judgment. Applied Cos. v. United States, 144 F.3d
`1470, 1475 (Fed. Cir. 1998); Sweats Fashions, Inc. v.
`Pannill Knitting Co., Inc., 833 F.2d 1560, 1562-63 (Fed.
`Cir. 1987).
`In reviewing issues not within this court’s exclusive
`jurisdiction, this court applies the law of the regional
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`5
`
`circuit, in this case the United States Court of Appeals for
`the Eighth Circuit. See Cicena Ltd. v. Columbia Tele-
`commc’ns. Grp., 900 F.2d 1546, 1548 (Fed. Cir. 1990).
`The district court’s issuance of a permanent injunction
`and award of attorneys’ fees on the grounds that the case
`is exceptional is reviewed under an abuse of discretion
`standard. See Cmty. of Christ Copyright Corp. v. Devon
`Park Restoration Branch of Jesus Christ’s Church, 634
`F.3d 1005, 1013 (8th Cir. 2011).
`III
`The district court did not err in granting 3M’s motion
`for partial summary judgment. With respect to the ’865
`patent, Mohan’s lone objection to the summary judgment
`decision is that “the [district court] made a [f]actual
`[f]inding that 3M’s patent was valid after a visual inspec-
`tion that lasted several seconds.” Brief for Appellant 35.
`He does not appeal the finding of infringement.
`An issued patent is presumed valid. 35 U.S.C. § 282.
`As the accused infringer, Mohan was required to present
`clear and convincing evidence of invalidity to overcome
`this presumption. Eli Lilly & Co. v. Barr Labs., Inc., 251
`F.3d 955, 962 (Fed. Cir. 2001). Mohan relied solely on his
`own testimony that a turkey baster anticipates the ’865
`patent and that the claims of the ’865 patent were obvious
`in view of a door hinge, eye dropper, gears, toilet plunger,
`and a toothbrush. Appellee App. 0160. Mohan failed to
`show that these items disclose or render obvious elements
`of the asserted claims or that any of these asserted de-
`vices would be considered pertinent by one of ordinary
`skill in the art. Mohan’s conclusory assertions of patent
`invalidity do not raise a genuine issue of material fact
`sufficient to defeat summary judgment. Applied Cos., 144
`F.3d at 1475. Therefore, this court affirms the district
`court’s finding that the ’865 patent was not invalid.
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`6
`
`Similar evidentiary infirmities plague Mohan’s appeal
`on trademark validity. The district court found 3M’s
`marks to be suggestive, requiring some imagination to
`connect the marks, “CARDIOLOGY III” and “MASTER
`CARDIOLOGY,” with stethoscopes. See Frosty Treats Inc.
`v. Sony Computer Entm’t Am. Inc., 426 F.3d 1001, 1004-
`05 (8th Cir. 2005) (“Suggestive marks, which require
`imagination, thought, and perception to reach a conclu-
`sion as to the nature of the goods . . . are entitled to
`protection regardless of whether they have acquired
`secondary meaning.”). Mohan presented no evidence to
`the contrary. While Mohan argues that 3M’s marks have
`become generic and that 3M has abandoned these marks,
`the district court correctly found that Mohan failed to
`produce any meaningful evidence in support of these
`assertions. Therefore, this court upholds the district
`court’s grant of summary judgment on trademark valid-
`ity.
`
`IV
`The district court’s decision to hold a bench trial on
`the issue of trademark infringement did not violate
`Mohan’s Seventh Amendment right to a jury trial because
`the district court refused to grant 3M’s request for statu-
`tory damages under the Lanham Act.
`Following the entry of partial summary judgment for
`3M, the district court held a bench trial on trademark
`infringement, injunctive relief, statutory damages, and
`attorneys’ fees. The district court recognized that the
`right to a jury trial under the Seventh Amendment is
`determined by the nature of the remedies at stake.
`Entergy Ark, Inc. v. Neb., 358 F.3d 528, 545-46 (8th Cir.
`2004). While 3M requested a judicially-determined award
`of statutory damages, the district court found that, under
`Eighth Circuit law, this request conflicted with Mohan’s
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`7
`
`Seventh Amendment right to a jury trial on statutory
`damages. 3M II, 2010 WL 5095676, at *28. The district
`court denied 3M’s claim for judicially determined statu-
`tory damages under the Lanham Act.
`Without its statutory damages claim, 3M only sought
`to enforce its equitable rights and remedies under the
`Lanham Act, and the Seventh Amendment does not apply
`in suits seeking only equitable relief. See City of Monterey
`v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687, 709-
`11 (1999). This court rejects Mohan’s argument that a
`permanent injunction operates as a de facto damages
`award. The economic consequences of an injunction do
`not transform it from a traditional equitable remedy into
`a legal one.
`Furthermore, 3M was not required to obtain Mohan’s
`consent in order to withdraw its jury demand because
`Federal Rule of Civil Procedure 38 does not apply when a
`party decides to proceed only on equitable claims. See
`Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331,
`1341 (Fed. Cir. 2001). Thus, the district court’s finding of
`trademark infringement and resulting permanent injunc-
`tion did not violate Mohan’s Seventh Amendment right to
`a jury trial.
`
`V
`Regarding trademark infringement, 3M was required
`to show that there was a likelihood of confusion between
`its marks and Mohan’s marks. See 15 U.S.C. § 1125(a).
`To determine whether a likelihood of confusion exists, the
`district court was required to consider the following
`factors: (1) the strength of the trademark; (2) the similar-
`ity between the plaintiff’s and defendant’s marks; (3) the
`competitive proximity of the parties’ products; (4) the
`alleged infringer’s intent to confuse the public; (5) evi-
`dence of any actual confusion; and (6), the degree of care
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`8
`
`reasonably expected of the plaintiff’s potential customers.
`See SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th
`Cir. 1980). The district court’s determination regarding
`likelihood of confusion is a question of fact reviewed for
`clear error. Id.
`The district court evaluated each of the SquirtCo fac-
`tors, and the record supports its ultimate finding of
`trademark infringement based on the likelihood of confu-
`sion between 3M’s marks and Mohan’s marks. 3M pre-
`sented evidence of confusion between the two marks
`including survey data among nurses and doctors showing
`a likelihood of confusion of 42 percent. 3M also presented
`emails between consumers and Mohan in which Mohan
`apologized for confusion regarding the source of the goods.
`See 3M II, 2010 WL 5095676, at *21-22. While Mohan
`challenges the fairness and quality of the survey data, he
`has not presented any evidence supporting these chal-
`lenges. Mohan raised similar arguments at trial, and the
`district court found that “the survey was not substantially
`flawed, and is accorded substantial weight.” See id.
`Mohan’s arguments on appeal do not highlight error
`sufficient to overturn this finding.
`Mohan’s argument that the fair use doctrine protects
`his uses of 3M’s marks is misplaced. Fair use under the
`Lanham Act requires that the alleged infringer prove that
`the use of the allegedly-infringing term is used “otherwise
`than as a mark . . . or of a term or device which is descrip-
`tive of and used fairly and in good faith only to describe
`the goods or services of such party. . . .” 15 U.S.C. §
`1115(b)(4). Here, the district court specifically found that
`Mohan’s uses of 3M’s marks constituted counterfeiting
`under the Lanham Act and that Mohan intended to
`associate his stethoscopes with 3M’s goods and take
`advantage of 3M’s fame. 3M II, 2010 WL 5095676, at *18,
`20. Its “unequivocal finding of purposeful and egregious
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`9
`
`infringement unmistakably negates any possibility that
`[Mohan’s] use of 3M’s marks constituted fair use.” 3M Co.
`v. Mohan, No. 09-cv-01413, *5 (D. Minn. Jan. 19, 2011)
`(order denying defendant’s motion for new trial). Mohan
`has failed to show that the district court erred in making
`this finding or that his use of the marks was actually in
`good faith. Thus, he has not met his burden of proof
`under the Lanham Act and cannot claim fair use as a
`defense to his infringement of 3M’s marks.
`VI
`The Lanham Act authorizes “reasonable attorney fees
`to the prevailing party” in “exceptional cases.” 15 U.S.C.
`§ 1117(a). “Courts have defined the characteristics of
`exceptional cases with adjectives suggesting egregious
`conduct by a party.” Doctor's Assoc. v. Subway.SY,
`L.L.C., 733 F. Supp. 2d 1083, 1088-89 (D. Minn. 2010)
`(quoting Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 877
`(8th Cir. 1994)).
`The district court determined that Mohan's conduct
`was deliberate and willful, finding this case to be excep-
`tional justifying an award of attorneys’ fees and costs. 3M
`II, 2010 WL 5095656, *27-28. Mohan argues that the
`award was baseless because his use of 3M's marks consti-
`tuted fair use. As noted above, Mohan did not engage in
`fair use of 3M’s marks. Furthermore, the district court
`found that Mohan deliberately and knowingly counter-
`feited 3M’s marks, sold goods with these counterfeit
`marks, and intended to use 3M’s well-known marks in an
`“attempt to free ride on the goodwill of the trademark
`holder . . .” Id. at *27. Thus, the award of fees was justi-
`fied in this case.
`
`
`
`

`
`3M COMPANY v. MOHAN
`
`
`
`10
`
`VII
`We have considered other arguments made on appeal
`and find they provide no basis for relief. For the foregoing
`reasons, the district court’s decision is affirmed.
`AFFIRMED

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