Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA364688
`ESTTA Tracking number:
`08/24/2010
`
`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 P.C.
`80 SOUTH 8TH STREET, 3200 IDS CENTER
`MINNEAPOLIS, MN 55402-2215
`UNITED STATES
`ahinderaker&merchantgould.com
`Response to Board Order/Inquiry
`William Schultz
`wschultz@merchantgould.com, ahinderaker@merchantgould.com,
`dockmpls@merchantgould.com, aries@merchantgould.com,
`cnystrom@merchantgould.com
`/William Schultz/
`08/24/2010
`4871325_1.pdf ( 22 pages )(1216459 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`

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`Registrant acknowledges that the District Court’s Order, while final at the district court
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`level, is not appealable until after the Judgment entered upon completion of the scheduled bench
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`trial. Should the Board not grant Registrant’s motion to dismiss at this time, Registrant requests
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`that the Board continue the suspension pending the final resolution of the civil action.
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`Respectfully submitted,
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`3M Company
`
`By its attorn ys,
`
` 3 {(‘z'~/gzo/0
`
`Date
`
`A len Hinderaker
`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 MOTION TO DISMISS
`BASED ON DISTRICT COURT DECISION AND ALTERNATIVE REQUEST FOR
`CONTINUED SUSPENSION was served, via first-class mail, postage prepaid to:
`
`Pradeep Mohan
`115 Chace Street
`
`Santa Cruz, CA 95060
`
`this 24*“ day ofAugust, 2010.
`
`/4'
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`9/’Z 1"
`,1 Cf; ..
`._
`
`William Schultz
`
`CERTIFICATE OF FILING
`
`I hereby certify that this MOTION TO DISMISS BASED ON DISTRICT COURT
`DECISION AND ALTERNATIVE REQUEST FOR CONTINUED SUSPENSION is
`being filed electronically with the United States Patent and Trademark Office's Electronic
`
`System for Trademark Trial & Appeals (ESTTA) on this 2Q y orgAugust, 201O.
`
`, /I
`
`‘I
`
`
`
`/1‘.
`
`,
`W1‘
`
`
`William Schultz
`
`

`
`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
`
`3M COMPANY, a Delaware
`corporation, and 3M INNOVATIVE
`PROPERTIES COMPANY, a Delaware
`corporation,
`
`v.
`
`Pradeep Mohan,
`
`Plaintiffs,
`
`Defendant.
`
`MEMORANDUM OPINION
`AND ORDER
`Civil No. 09-1413 ADM/FLN
`
`______________________________________________________________________________
`
`Allen W. Hinderaker, Esq., and William Schultz, Esq., Merchant & Gould P.C., Minneapolis,
`MN; Hildy Bowbeer, Esq., 3M Innovative Properties Company, St. Paul, MN, on behalf of
`Plaintiffs.
`
`Pradeep Mohan, pro se.
`______________________________________________________________________________
`
`I. INTRODUCTION
`
`This matter is before the undersigned United States District Judge for a ruling on
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`Plaintiffs 3M Company and 3M Innovative Properties Company’s (collectively “3M”) Motion
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`for Partial Summary Judgment [Docket No. 122].1 For the reasons stated below, 3M’s partial
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`summary judgment motion is granted.
`
`II. BACKGROUND
`
`3M manufacturers and sells stethoscopes under the LITTMANN brand. Am. Compl.
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`[Docket No. 69] ¶¶ 7-8. 3M obtained federal trademark registration for various marks used and
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`associated with the LITTMANN brand including (1) MASTER CARDIOLOGY, United States
`
`1 Defendant Pradeep Mohan filed a partial summary judgment motion which the Court
`orally denied at the July 14, 2010 hearing.
`
`EXHIBIT 1
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`1 of 16
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`

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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 2 of 16
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`Registration Number 3,253,234 registered on June 19, 2007, for use on stethoscopes; and (2)
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`CARDIOLOGY III, United States Registration Number 3,619,324, registered on May 12, 2009,
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`also for use on stethoscopes. In addition, 3M owns U.S. Patent No. 5,449,865 (“the ‘865
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`patent”) entitled “Ear Tips Having Molded-In Recesses for Attachment to A Stethoscope,”
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`which covers a special configuration of an ear tip that is designed to engage with the eartubes of
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`stethoscopes. Id. ¶ 19. Defendant Pradeep Mohan (“Mohan”) sells stethoscopes over the
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`internet at his company website, kila.com, and on national third-party websites such as
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`Amazon.com and ebay.com. Id. ¶ 21.
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`On June 16, 2009, 3M filed this action asserting that Mohan’s sales and advertising
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`activities constitute trademark and patent infringement. See id. ¶¶ 43-49, 72-77. Mohan
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`answered and filed counterclaims for antitrust, unfair competition, tortious interference with a
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`contractual relationship, and deceptive trade practices. Def.’s Resp. [Docket No. 68]. Mohan
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`has withdrawn his antitrust and unfair competition counterclaims [Docket No. 92]. The parties
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`have completed discovery, and 3M moves for summary judgment that (1) the ‘865 patent is
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`valid; and (2) Mohan infringed claims 8, 9, and 12 of the ‘865 patent. 3M also seeks dismissal
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`of Mohan’s remaining counterclaims and a ruling on the validity of the trademarks at issue.
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`A. Standard of Review
`
`III. DISCUSSION
`
`Federal Rule of Civil Procedure 56(c) provides that summary judgment shall issue “if the
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`pleadings, depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); see Matsushita Elec.
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`2
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`EXHIBIT 1
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`2 of 16
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`

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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 3 of 16
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`Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 252 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On a motion for
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`summary judgment, the Court views the evidence in the light most favorable to the nonmoving
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`party. Ludwig v. Anderson, 54 F.3d 465, 470 (8th Cir. 1995). The nonmoving party may not
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`“rest on mere allegations or denials, but must demonstrate on the record the existence of specific
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`facts which create a genuine issue for trial.” Krenik v. County of Le Sueur, 47 F.3d 953, 957
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`(8th Cir. 1995).
`
`B. Plaintiffs’ Motion for Partial Summary Judgment
`
`1. Patent Infringement
`
`a. Invalidity
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`An issued patent is presumed valid. 35 U.S.C. § 282. An accused infringer must
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`establish its claims of invalidity by clear and convincing evidence. Eli Lilly & Co. v. Barr Labs.,
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`Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). Because patent invalidity is an affirmative defense that
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`Mohan failed to plead, 3M argues that Mohan is precluded from raising it now as a defense.
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`However, in his response, Mohan requests a “[d]eclaration of the Court that any patent rights to
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`the stethoscope ear piece owned by the Plaintiffs are invalid, void and/or otherwise enforceable.”
`
`Am. Response [Docket No. 72] p. 30.
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`Title 35 of the United States Code sets forth the grounds for finding a patent invalid.
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`See, e.g., §§ 101, 102, and 103. When probed in an interrogatory regarding the basis for
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`Mohan’s contention that the ‘865 patent is “invalid, void and/or otherwise enforceable,” Mohan
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`responded by stating “Mohan has no additional documentation. All information has already
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`been provided to 3M in the package of documents sent to 3M in December 2009. Additional
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`3
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`EXHIBIT 1
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`3 of 16
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`

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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 4 of 16
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`information has been provided in Mohan’s Response to the Complaint.” Schultz Decl. [Docket
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`No. 125] Ex. 6 at 12. 3M moved to compel a substantive response to this interrogatory which
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`Magistrate Judge Franklin L. Noel granted. Mohan then responded by stating “The answers are
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`incorporated in the response in G (above).” Schultz Decl. Ex. 7 at 25. The response to G relates
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`to Mohan’s allegations regarding his claims for tortious interference with a contractual
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`relationship and deceptive trade practices and does not provide 3M with a substantive basis for
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`the assertions of patent invalidity.
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`At his deposition, Mohan was asked to explain why he believed the ‘865 patent was
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`improvidently issued, and he responded, “It’s a simple mechanism of a groove in a – flange and
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`grooves . . .” In his report titled “Expert Rebuttal Report of Pradeep Mohan to Report of Mary
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`Jo Johnson” he writes “The same mechanism is found on a turkey baster. A common turkey
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`baster shows the same recess and flange mechanism.” Schultz Decl. Ex. 8, ¶ 19. He further
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`states: “[3M’s expert’s] results reinforce the position that this patent should be declared invalid
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`since the concept and applications are intuitive and common place.” Id. ¶ 23. Mohan has
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`adequately raised the defenses of anticipation and obviousness, 3M has fully briefed these
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`defenses, and, therefore, the Court will address the merits of the arguments.
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`i. Anticipation
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`For a prior art reference to anticipate a claim under § 102, “the reference must disclose
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`each and every element of the claim with sufficient clarity to prove its existence in the prior art.”
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`Motorola, Inc. v. Interdigital Technology Corp., 121 F.3d 1461, 1473 (Fed. Cir. 2007). “An
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`expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the
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`requirement of anticipatory disclosure in the prior art reference itself.” Id.
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`4
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`4 of 16
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 5 of 16
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`Mohan has provided only his own unsupported assertion that a turkey baster anticipates
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`the claimed invention.2 Mohan has not identified what prior art anticipates the ‘865 patent, much
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`less shown that each claim of the ‘865 patent is contained in the prior art. “A passing reference
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`to patents that might anticipate patents in suit is not enough to create a triable issue of fact
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`regarding the invalidity of the patents in suit.” Biotec Biologische Naturverpackungen GmbH &
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`Co. KG v. Biocorp, Inc., No. CV 98-5691 ER, 1999 WL 35014902, at *2 (C.D. Cal. July 23,
`
`1999). There is no record that Mohan has conducted any tests. He has not placed any drawings
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`or descriptions of a turkey baster in evidence, and he has not performed any analysis of the
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`products. In fact, Mohan concedes that he did not “exert[] undue effort in proving the patent
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`invalid” and that the issue of patent validity “did not merit an elaborate defense from Mohan.”
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`Defs’. Resp. to Pls’. Mot. for Partial Summ. J. at 8.
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`Mohan asserts that “[h]is preparation is ongoing and limited by his status as a pro-se
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`defendant and a sole proprietor with no employees.” Id. at 7. He further states that “[s]ummary
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`judgment is not appropriate because [he] has not had an opportunity to present his case. It is not
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`reasonable for him to make a comprehensive and elaborate Response within twenty one days of
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`the Complaint. His initial Response is just that and not a final defense.” Id. Defendant’s pro se
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`status does not excuse him from complying with the Federal Rules of Civil Procedure. See
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`Ackra Direct Mktg. Corp. v. Fingerhut Corp., 86 F.3d 852, 856-57 (8th Cir. 1996). Rule 56
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`requires the nonmovant to come forward with evidence sufficient to create a genuine issue of
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`material fact. See also Celotex, 477 U.S. at 322 (the party opposing the motion for summary
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`2 Mohan argues for the first time in his opposition brief that a “door hinge, eye dropper,
`medical syringe, gears, toilet plunger, [and] toothbrush” render the invention invalid due to
`obviousness. Defs’. Resp. to Pls’. Mot. for Partial Summ. J. [Docket No. 141] at 4.
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`5
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`EXHIBIT 1
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`5 of 16
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`

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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 6 of 16
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`judgment bears the burden of responding after the moving party has met its burden). Because
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`Mohan has not presented evidence sufficient to create a genuine issue of material fact, the Court
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`grants 3M’s motion for summary judgment that the ‘865 patent is not invalid due to anticipation.
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`ii. Obviousness
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`3M also moves for summary judgment on the issue of invalidity due to obviousness. A
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`patent is invalid when “the differences between the subject matter sought to be patented and the
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`prior art are such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art . . .” 35 U.S.C. § 103(a).
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`Obviousness is a question of law based on underlying factual findings. Honeywell Int’l, Inc. v.
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`United States, 596 F.3d 800, 806 (Fed. Cir. 2010).
`
`Mohan argues that a person of ordinary skill in the art would have combined the
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`disparate pieces of prior art references making the invention obvious. See Def.’s Resp. to Pls.’
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`Mot. for Partial Summ. J. at 4. 3M responds that Mohan’s arguments fail because he has
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`submitted no evidence to support his assertions, specifically no evidence that at the time of the
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`invention there was any reason to combine the references. Pls.’ Mot. for Partial Summ. J. at 11-
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`12.
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`Again, the statements made by Mohan are merely conclusory statements without a factual
`
`basis that the patent is invalid due to obviousness. The record contains no specific factual
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`findings on the scope and content of the prior art. The statements in Mohan’s Response are
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`broad-brush statements of what Mohan believes should be obvious to the Court and will be
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`obvious to a jury. “It is not the trial judge’s burden to search through lengthy technologic
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`documents for possible evidence. The public interest in invalidating invalid patents does not
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`6
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`EXHIBIT 1
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 7 of 16
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`override the well established procedure requiring the nonmovant to come forward with evidence
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`sufficient to negate the movant’s position.” Biotec Biologische Naturverpackungen GmbH &
`
`Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1353 (Fed. Cir. 2001). Mohan fails to come forward, as
`
`is required, with evidence that the patents are invalid due to obviousness. Thus, the Court grants
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`3M’s summary judgment motion on this defense.
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`b. Infringement
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`3M argues that there are no genuine issues that Mohan’s products infringe claims 8, 9,
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`and 12 of the ‘865 patent. An infringement analysis requires two steps: (1) claim construction to
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`determine the scope and meaning of the asserted claims, and (2) a comparison of the properly
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`construed claims with the allegedly infringing device to determine whether the device embodies
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`every limitation of the claims. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.
`
`Cir. 1998) (en banc). Claim construction is a matter of law for the court. Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 372 (1996). Whether the accused device infringes a claim,
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`either literally or under the doctrine of equivalents, is a question of fact. See Insituform Techs.,
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`Inc. v. Cat Contracting, Inc., 161 F.3d 688, 692, (Fed. Cir. 1998). But the Court may decide this
`
`issue at summary judgment if it concludes that no genuine issue of fact exists. See, e.g.,
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`TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002); Amhil Enters. Ltd. v.
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`Wawa, Inc., 81 F.3d 1554, 1557-58 (Fed. Cir. 1996). Courts routinely grant summary judgment
`
`and find infringement as a matter of law where there is no factual dispute on the infringement
`
`question. See, e.g., Elantech Devices Corp. v. Synaptics, Inc., No. C 06-1839, 2008 WL (N.D.
`
`Cal. Apr. 12, 2008); BASF Agrochemical Prods. v. Unkel, No. 05-CV 1478, 2006 WL 3533133
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`(W.D. La. Dec. 7, 2006). The parties’ dispute focuses on independent Claim 8 and dependent
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`7
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 8 of 16
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`Claims 9 and 12 of the ‘865 patent.
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`i. Claim 8:
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`The language of this claim recites:
`
`8. An ear tip adapted for use on a stethoscope having a binaural
`having dual sound-transmitting eartubes adapted to deliver sound
`to a human ear, each eartube having an ear tip connection end
`having a plurality of flanges theron, each ear tip connection end
`defining a longitudinal axis, said ear tip comprising:
`
`a body formed of a non-porous elastomeric material having
`a channel therein having a plurality of separate, individual
`and distinct recesses within said non-porous elastomeric
`material for cooperably engaging the flanges in
`complementary fashion such that the plurality of flanges
`resist longitudinal removal of the ear tip from the
`stethoscope.
`
`3M asserts that the accused device: (1) is adapted for use on a stethoscope with ear tubes
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`“having an ear tip connection end having a plurality of flanges thereon”; (2) is “formed of a non-
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`porous elastomeric material”; (3) has “a channel therein having a plurality of separate, individual
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`and distinct recesses”; and (4) coopearably engages the flanges of a stethoscope ear tube “in
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`complementary fashion such that the plurality of flanges resist longitudinal removal of the ear tip
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`from the stethoscope.” Pls.’ Mot. for Partial Summ. J. at 18-19.
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`(1) “Adapted For Use On A Stethoscope With Ear Tubes Having An Ear Tip Connection
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`End Having A Plurality Of Flanges Thereon”
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`Mohan asserts that the “patent defines two interlocking pieces,” Def.’s Resp. in Opp. to
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`Summ. J. at 13, that is, “ear tips mating with mating flanges” of a stethoscope’s ear tube.
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`Schultz Decl., Ex. 8 at 2. Since the accused device “mate[s] with screw threads (and not
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`flanges),” of an ear tube, Mohan contends that his ear tip does not infringe. Id. 3M responds
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`8
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`EXHIBIT 1
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 9 of 16
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`that claims 8, 9, and 12 relate to the ear tip alone, and that the ear tube is not a required element
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`of those claims. Pls.’ Mot. for Partial Summ. J. at 16. According to 3M, the phrase “adapted for
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`use on a stethoscope” is a mere recitation of purpose and as such only claims the ability of the
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`ear tip to adapt with the ear tube of a stethoscope in a specific manner. Id. at 16-17.
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`3M’s argument is supported by the case law. “[P]reambles describing the use of an
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`invention generally do not limit the claims because the patentability of apparatus or composition
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`claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina
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`Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). The claim language
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`specifically recites “an ear tip adapted for use on a stethoscope . . .” While the language does
`
`claim a stethoscope, the asserted claim does not require a stethoscope and 3M did not rely on this
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`phrase to define its invention. The phrase “adapted for use” means only that the ear tip must be
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`adapted in a particular way, specifically that the ear tip must be capable of engaging with the ear
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`tube of a stethoscope that has a plurality of flanges. 3M’s expert opines that the accused
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`structure is an ear tip capable of engaging with the ear tube of an stethoscope that has a plurality
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`of flanges. Schultz Decl., Ex. 4, Part 1 at 10. Mohan does not appear to dispute this assertion
`
`and presents no evidence to the contrary. Schultz Decl., Ex. 1 (Mohan’s Dep.) at 316 (conceding
`
`that 3M’s expert report includes “no factual errors”). Thus, the accused device infringes this
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`claim.
`
`(2) “A body formed of a non-porous elastomeric material”
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`3M’s expert opines that the accused device is formed of a non-porous elastomeric
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`material, specifically that it is manufactured from silicone rubber. Ex. 4, Part 1 at 12. Mohan
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`does not appear to dispute this assertion. Ex. 1 at 316. Therefore, the accused device infringes
`
`9
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`EXHIBIT 1
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 10 of 16
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`this element of claim 8.
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`(3) “Having a channel therein having a plurality of separate, individual and distinct
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`recesses within said non-porous elastomeric material”
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`3M’s expert explained that the accused device was “cut open and [she] observed at least
`
`two distinct recesses formed into the inner channel of each ear tip.” Ex. 4, Part 1 at 11. Mohan
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`does not appear to dispute this assertion. Ex. 1 at 316. This element of claim 8 is infringed.
`
`(4) “For cooperably engaging the flanges in complementary fashion such that the plurality
`
`of flanges resist longitudinal removal of the ear tip from the stethoscope”
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`3M’s expert stated that she attached the accused device to a stethoscope that had a
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`binaural with two sound-transmitting ear tubes, the connection end of each having a plurality of
`
`flanges. Ex. 4, Part 1 at 12. As she performed her testing, she felt each of the at least two
`
`recesses of the accused device cooperably engage in complementary fashion with the flanges of
`
`the stethoscope ear tubes. Id. Again, Mohan does not appear to dispute this assertion. Ex. 1 at
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`316. Thus, the accused device meets this element of claim 8.
`
`ii. Dependent Claims 9 and 12
`
`Claim 9 recites:
`
`An ear tip according to claim 8 wherein each of the recesses have a
`diameter, and one of said recesses has a diameter that is larger than
`the diameter of the other recesses.
`
`Claim 12 recites:
`
`An ear tip according to claim 8 wherein said ear tip is fabricated from
`a material selected from the group consisting of vulcanized natural
`rubber, vinyl elastomers, elastomeric polyurethanes, silicone rubbers,
`nitrile rubbers, and thermoplastic rubbers.
`
`10
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 11 of 16
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`In her report, 3M’s expert concludes “to a reasonable degree of professional certainty
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`that” the accused device meets the limitations of claims 9 and 12. Ex. 4, Part 1 at 13-14. Mohan
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`does not appear to dispute this conclusion. Ex. 1 at 316. Thus, the accused device also infringes
`
`these claims.
`
`2. Tortious Interference With Contract
`
`3M seeks summary judgment on Mohan’s counterclaim for tortious interference with
`
`contract. To state a claim for tortious interference with contractual relations, Mohan must show
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`that “(1) a contract existed; (2) the alleged wrongdoer had knowledge of the contract; (3) the
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`alleged wrongdoer intentionally interfered with the contract; (4) the alleged wrongdoer’s actions
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`were not justified; and (5) damages were sustained as a result.” Guiness Import Co. v. Mark VII
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`Distrib., Inc., 153 F.3d 607, 613 (8th Cir. 1998) (citing Sip-Top, Inc. v. Ekco Group, Inc., 86
`
`F.3d 827, 832 (8th Cir. 1996) (applying Minnesota law)); see also Kjesbo v. Ricks, 517 N.W.2d
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`585, 588 (Minn. 1994).
`
`Mohan asserts that 3M caused eBay to suspend Mohan’s eBay account, which amounts
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`to tortious interference with contract because there were willing buyers for his product. Mohan
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`appears to argue that 3M’s primary motive was improper because it was not protecting its
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`legitimate trademark interests but rather attempting to “caus[e] hardship and unfair hurdles to a
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`small company” and “suppress competition.” Def’s. Am. Resp. at 25-26. Mohan further
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`contends that 3M “intended to suppress, harass, intimidate” him by “threatening costly
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`litigation.” Id. at 25. 3M responds that it invoked eBay’s Verified Rights Owner (“VeRO”)
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`program when it learned that Mohan was using 3M’s trademarks to sell his products.
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`Enforcing a trademark may sometimes appear to involve coercion or monopolization.
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 12 of 16
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`James Burrough Ltd. v. Lesher, 309 F.Supp. 1154, 1161-62 (S.D. Ind. 1969). The very
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`requirement of registration, however, results in such monopolies. La Maur, Inc., v. Alberto-
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`Culver Co., 179 U.S.P.Q. 607, 615 (D. Minn. 1973). Thus, “[a] trademark owner is entitled to
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`advise others of his trademark rights, to warn others that they or others are or may be infringing
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`his rights, to inform others that he is seeking to enforce his rights through legal proceedings, and
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`to threaten accused infringers and their customers with suit.” Leopold v. Henry I. Siegel Co.,
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`1987 WL 5373 (S.D.N.Y. 1987); see also La Maur, 179 U.S.P.Q. at 615 (trademark owner can
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`use negotiation and litigation to enforce its registered rights). A trademark holder may legally
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`take action if it believes that its trademarks are being infringed. Mohan has not shown that 3M
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`did anything more than protect its legitimate trademarks interests, thus this claim is rejected. See
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`Dudnikov v. MGA Entn’t, Inc., 410 F.Supp.2d 1010, 1019 (D. Colo. 2005) (affirming grant of
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`summary judgment against eBay seller on tortious interference claim where rights holder acted
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`within its rights by utilizing the VeRO program stating that this “could not, as a matter of law, be
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`improper interference.”); see also Eastern R. Presidents Conference v. Noerr Motor Freight, Inc.,
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`365 U.S. 127, 140 (U.S. 1961) (concluding that the act of filing a lawsuit is immune from
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`antitrust or tort liability unless it is found to be a mere sham intended to disguise tortious or anti-
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`competitive liability).
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`3. Deceptive Trade Practices
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`3M next seeks summary judgment on Mohan’s counterclaim for deceptive trade
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`practices. Minn. Stat. § 325D.44, subd. 1, states in relevant part:
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`A person engages in a deceptive trade practice when, in the course
`of business, vocation or, or occupation, the person: (8) disparages
`the goods, services, or business of another by false or misleading
`representation of fact; . . . or (13) engages in any other conduct
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`Case 0:09-cv-01413-ADM-FLN Document 151 Filed 08/09/10 Page 13 of 16
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`which similarly creates a likelihood of confusion or of
`misunderstanding.
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`Mohan alleges that “[3M]’s actions are deceptive trade practices,” Def’s. Am. Resp. at
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`27, but he fails to identify the specific conduct that constitutes the basis of his claim. There is no
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`evidence that 3M engaged in any deception or made any false or misleading representation of
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`fact that would disparage the goods, services, or business of Mohan. Further, there is no
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`evidence that 3M created any confusion or misunderstanding regarding Mohan’s goods or
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`services. Accordingly, summary judgment is granted on this claim.
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`C. Mohan’s Motion for Partial Summary Judgment
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`3M asserts that it is entitled to summary judgment on the validity of its trademarks. A
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`district court “has the power to ‘enter summary judgments sua sponte, so long as the losing party
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`was on notice that [he] had to come forward with all of [his] evidence.’” Lerohl v. Friends of
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`Minn. Sinfonia, 322 F.3d 486, 492 (8th Cir. 2003) (quoting Celotex, 477 U.S. at 326).
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`1. Ownership of a Valid and Distinctive Trademark
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`Registration of a trademark is prima facie evidence of the validity of the mark. See 15
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`U.S.C. § 1057. In addition, registered trademarks “are presumed to be distinctive.” Aromatique,
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`Inc. v. Golden Seal, Inc., 28 F.3d 863, 869 (8th 1994).
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`2. Whether the Marks are Generic, Merely Descriptive, or Suggestive
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`In order for 3M to possess valid trademarks, it must prove that it used the marks in actual
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`commerce to identify goods, was the first to do so, and the marks were valid. Frosty Treats Inc.
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`v. Sony Computer Entm’t Am. Inc., 426 F.3d 1001, 1003 (8th Cir. 2005); Aveda Corp. v. Evita
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`Mktg., Inc., 706 F.Supp. 1419, 1427 (D. Minn. 1989). The parties do not dispute that 3M used
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`the MASTER CARDIOLOGY and CARDIOLOGY III marks first and in actual commerce to
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`identify goods. They disagree regarding whether the mark is valid.
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`A term for which trademark protection is claimed will fall in one of
`four categories: (1) generic, (2) descriptive, (3) suggestive, or (4)
`arbitrary or fanciful. A generic mark refers to the common name or
`nature of an article, and is therefore not entitled to trademark
`protection. A term is descriptive if it conveys an immediate idea of
`the ingredients, qualities or characteristics of the goods, and is
`protectible only if shown to have acquired a secondary meaning.
`Suggestive marks, which require imagination, thought, and
`perception to reach a conclusion as to the nature of the goods, and
`arbitrary or fanciful marks, are entitled to protection regardless of
`whether they have acquired secondary meaning.
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`Frosty Treats Inc., 426 F.3d at 1004-05 (citations omitted).
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`Mohan argues that the marks are generic because “doctors have come to refer to all
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`Cardiology quality single head stethoscopes as master cardiology” and “all Cardiology quality
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`dual head stethoscopes as cardiology iii.” Def.’s Mot. for Partial Summ. J. at 9. However, he
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`provides no survey evidence of consumer understanding, or letters, testimony or affidavits from
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`consumers showing generic use or understanding of the terms. See Magic Wand, Inc. v. RDB,
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`Inc., 940 F.2d 638, 641 (Fed. Cir. 1991). Mohan further contends that the marks have a common
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`meaning that simply describes the products.
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`3M responds that the terms are suggestive and entitled to broad protection. 3M contends
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`that, although the term “‘cardiology’ signifies a relation to the science of the heart, neither
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`trademark gives a direct reference to a stethoscope product[,]” both marks subtly indicate
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`something about the products, but require a mental leap to draw any conclusions about the nature
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`of the product. Pls.’ Mem. in Opposition to Def.’s Mot. for Partial Summ. J. at 13. 3M has also
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`presented survey evidence of consumer confusion and intentional copying to show that its marks
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`are distinctive and recognized in the relevant consuming market.
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`Mohan has produced precious scant evidence that the terms are generic or merely
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`descriptive. The marks do not describe a stethoscope, nor does it convey any information about
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`the stethoscope’s characteristics, design, or qualities, other than, possibly, that MASTER
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`CARDIOLOGY, is a top-of-the-line product. The marks bear some relationship to the product
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`in the sense that the device relates to the heart but no evidence has been adduced that would
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`support a finding that an ordinary consumer would immediately associate the marks with a
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`stethoscope. See Lemme v. Nat’l Broad. Co., Inc., 472 F.Supp. 2d 433, 444 (E.D.N.Y. 2007)
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`(citing McCarthy on Trademarks § 11.67 at 11-129-11-130 (“If the mental leap between the
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`word and the products’s attributes is not almost instantaneous, this strongly indicates
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`suggestiveness, not direct descriptiveness.”)). 3M has presented evidence that the terms do not
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`literally describe the device, but instead require some imagination to connect them to the
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`stethoscope. Under these circumstances and because Mohan has presented virtually no evidence
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`to the contrary, the Court concludes that the terms are suggestive.
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`3. Abandonment
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`Mohan claims 3M’s rights to the marks-in-suit should be canceled because 3M has
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`abandoned their use. A mark is abandoned “[w]hen its use has been discontinued with intent not
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`to resume such use” or “[w]hen any course of conduct of the owner, including acts of omission
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`as well as commission, causes the mark to lose its significance as a mark.” 15 U.S.C. § 1127.
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`Mohan has the burden of proving abandonment by clear and convincing evidence. See 3 J.
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`McCarthy, Trademarks and Unfair Competition § 17:12 (4th ed. 2008).
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`Mohan argues that 3M’s inconsistent notice of registration is evidence of abandonment.
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`However, 15 U.S.C. § 1111 provides: “[A] registrant of a mark registered in the Patent and
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`Trademark Office, may give notice that his mark is registered by displaying with the mark the
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`words ‘Registered in U.S. Patent and Trademark Office’ or ‘Reg. U.S. Pat. & Tm. Off.’ or the
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`letter R enclosed within a circle, thus ® . . .” (Emphasis added). Indeed, courts have expressly
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`stated “[t]he failure to give notice that a mark has been registered by the United States Patent
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`Office is not an act of omission which can cause a mark to lose its significance as an indication
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`of origin.” Luvera v. Pepperidge Farm Inc., 186 U.S.P.Q. 302, 304 (T.T.A.B. 1975); Bambu
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`Sales, Inc. v. Sultana Crackers, Inc., 683 F.Supp. 899, 911 (E.D.N.Y. 1988). Mohan presents no
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`genuine issue of abandonment and, therefore, fails to meet his burden to demonstrate that 3M has
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`abandoned the marks.
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`IV. CONCLUSION
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`Based upon the foregoing, and all the files, records, and proceedings herein, IT IS
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`HEREBY ORDERED that:
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`1. Plaintiffs’ Motion for Partial