Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA648481
`ESTTA Tracking number:
`01/06/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054171
`Defendant
`VGO Communications, Inc.
`MICHAEL J BEVILACQUA
`WILMER CUTLER ET AL
`60 STATE ST
`BOSTON, MA 02109
`UNITED STATES
`Barbara.Barakat@wilmerhale.com, angela.dyer@wilmerhale.com, Mi-
`chael.Bevilaqua@wilmerhale.com
`Opposition/Response to Motion
`John V. Hobgood
`John.Hobgood@WilmerHale.com
`/John V. Hobgood/
`01/06/2015
`Filing_Correcting_Redaction.PDF(16771 bytes )
`Registrant's_Opposition_to_SJM_(REDACTED).PDF(138885 bytes )
`Exhibits_to_Opposition_to_SJM_(A_-_G).PDF(4329651 bytes )
`Exhibit_to_Opposition_to_SJM_(H).PDF(5149696 bytes )
`Exhibits_to_Opposition_to_SJM_(I_-_N)_(REDACTED).PDF(3328518 bytes )
`
`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Valeritas, Inc.,
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`VGo Communications, Inc.,
`
`__________________________________________
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Registrant.
`__________________________________________)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92054171
`
`REGISTRANT’S CORRECTION OF INADVERTENT FILING OF PROTECTED
`MATERIALS
`
`
`
`On December 15, 2014, Registrant VGo Communications, Inc. submitted its opposition
`
`to Petitioner Valeritas, Inc.’s Motion for Summary Judgment. In its submission, Registrant
`
`supplied a copy of Petitioner’s Second Supplemental Responses to Registrant’s Interrogatories in
`
`Exhibit I that had been marked “Confidential – For Attorneys’ Eyes Only”. Registrant also
`
`included a quote from the third page of Petitioner’s responses in Registrant’s memorandum.
`
`Because the confidential designation did not appear on the third page, but was made only on the
`
`first page of the responses, Registrant inadvertently did not redact this material.
`
`
`
`Upon being made aware of the situation, counsel for Registrant contacted the Trademark
`
`Trial and Appeal Board staff and had the inadvertent disclosure marked confidential, thereby
`
`rendering it unavailable via TTABVue. In this filing, Registrant supplies a copy of its original
`
`December 15, 2014, filing with the appropriate redactions in its memorandum and Exhibit I.
`
`
`
`
`
`ActiveUS 139553351v.1
`
`

`
`
`
`
`
`
`
`
`
`VGo Communications. Inc..
`
`By its attorneys,
`
`
`
`
`
` /John V. Hobgood/
`____________________________________
`Michael J. Bevilacqua
`Barbara A. Barakat
`John V. Hobgood
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`(617) 526-6000
`
`January 6, 2015
`
`
`ActiveUS 139553351v.1
`
`- 2 -
`
`

`
`
`
`
`
`Certificate Of Service
`
`I certify that a true copy of the foregoing Registrant’s Correction of Inadvertent Filing of
`Protected Materials and redacted copy of its December 15, 2014, filing is being served by first-
`class mail, postage-prepaid, this 6th day of January, 2015, upon:
`
`Sheri S. Mason, Esq.
`Thomas F. Dunn, Esq.
`Morse, Barnes-Brown & Pendleton, P.C.
`CityPoint
`230 Third Avenue, 4th Floor
`Waltham, Massachusetts 02451
`
`
`
`
`Date of Deposit:
`
`
`
`
`
`1/6/2015
`
`
`
`Signature:
`
`
`
` /John V. Hobgood/ .
` John V. Hobgood
`
`
`ActiveUS 139553351v.1
`
`- 3 -
`
`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Valeritas, Inc.,
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`VGo Communications, Inc.,
`
`__________________________________________
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Registrant.
`__________________________________________)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92054171
`
`REGISTRANT’S OPPOSITION TO PETITIONER’S MOTION FOR SUMMARY
`JUDGMENT AND MEMORANDUM IN SUPPORT THEREOF
`
`
`
`Registrant VGo Communications, Inc. respectfully submits its opposition to Petitioner
`
`Valeritas, Inc.’s Motion for Summary Judgment, pursuant to Rule 2.116 of the Trademark Rules
`
`of Practice, 37 C.F.R. §2.127(e) of the Federal Rules of Procedure.
`
`I.
`
`PROCEDURAL HISTORY
`
`On March 2, 2010, Registrant filed an application to register its trademark VGO on the
`
`basis of an intention to use the mark in commerce with the following goods, “robotic video and
`
`audio communication hardware; computer software for use in connection with audio and video
`
`communication systems.” A registration was issued from this application on December 21,
`
`2010. Petitioner filed its Petition for Cancellation on June 28, 2011. The parties exchanged
`
`Initial Disclosures in October 2011 and conducted discovery from November 2011 through
`
`November 2014. During the discovery period, the parties attempted on numerous occasions to
`
`settle the matter but were unable to reach agreement. Petitioner served its Motion for Summary
`
`Judgment on November 8, 2014.
`
`
`
`ActiveUS 138679575v.2
`
`

`
`Registrant now responds to Petitioner’s Motion for Summary Judgment.
`
`II. ARGUMENT
`
`A. The Standard for Summary Judgment
`
`Rule 56(a) of the Federal Rules of Civil Procedure, adopted as TBMP §528, allows for
`
`summary judgment when there are no genuine issues of material fact in dispute. Summary
`
`judgment is inappropriate if a dispute about a material fact is genuine, “that is, if the evidence is
`
`such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 248 (1986). Summary judgment will be granted “only where the
`
`moving party is entitled to judgment as a matter of law, where it is quite clear what the truth is, .
`
`. . [and where] no genuine issue remains for trial . . . [for] the purpose of the rule is not to cut
`
`litigants off from the right of trial . . . if they really have issues to try.” Poller v. Columbia
`
`Broadcasting Sys., Inc., 368 U.S. 464,467 (1962) (quoting Sartor v. Arkansas Natural Gas Corp.,
`
`321 U.S. 620, 627 (1944)).
`
`To prevail on its Motion, Petitioner must prove that there are no disputed facts and that
`
`there is an “absence of evidence to support the non-moving party’s case.” TBMP §528.01. “The
`
`burden in a motion for summary judgment is on the moving party to establish prima facie that
`
`there is no genuine issue of material fact . . .” Shalom Children’s Wear Inc. v. ln-Wear A/S, 26
`
`USPQ2d 1516, 1518 (TTAB 1993), and “all inferences to be drawn from the undisputed facts
`
`must be viewed in the light most favorable to the nonmoving party. . .” Moreover, “[a]ll doubts
`
`as to whether or not particular factual issues are genuinely in dispute must be resolved against
`
`the moving party.” Flately v. Trump, 11 USPQ2d 1284, 1287 (TTAB 1989).
`
`
`ActiveUS 138679575v.2
`
`- 2 -
`
`

`
`When all inferences are drawn in favor of Registrant VGo Communications, Inc., this
`
`Cancellation presents genuine issues of material fact which compel denial of Petitioner Valeritas,
`
`Inc.’s Motion for Summary Judgment.
`
`B. Statement of Disputed Factual Issue
`
`The following unresolved issue of material fact precludes Summary Judgment: Whether
`
`there is a likelihood of confusion in view of the differences between the marks, the differences in
`
`the goods upon which the marks are used, the channels of trade in which the marks will be
`
`marketed and sold, the sophistication of the consumers, the lack of any actual confusion, and
`
`other factors distinguishing the marks.
`
`C. The Marks are not likely to be confused
`
`An examination of the factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d
`
`1357 (CCPA 1973), reveals numerous unresolved issues of material fact, precluding Summary
`
`Judgment in Petitioner’s favor. Indeed, a cursory review of the record indicates that the majority
`
`of the factors overall support Registrant’s contention that confusion is unlikely.
`
`1. The Marks Differ in Appearance and Commercial Impression.
`
`Petitioner argues that the similarities in its mark and Registrant’s mark in standard
`
`characters make the marks virtually identical. Petitioner suggests that this alone requires the
`
`Board to determine that the parties marks are confusingly similar. See Petitioner’s Motion for
`
`Summary Judgment at pg. 7. However, as set forth in more detail below, significant differences
`
`in other factors relevant to likelihood of confusion show unresolved genuine issues of material
`
`facts that render summary judgment inappropriate and, in fact, compel a determination that
`
`confusion is unlikely.
`
`
`ActiveUS 138679575v.2
`
`- 3 -
`
`

`
`Petitioner compares the mark from Registrant’s specimen of use filed with its application
`
`(Registrant’s Design Mark) to Petitioner’s Mark Reg. No. 4,105,936 (Petitioner’s Design Mark),
`
`but Petitioner ignores material differences in appearance, connotation, and commercial
`
`impression between the marks1. Petitioner’s Certificate of Registration, showing its Design
`
`Mark, and Registrant’s specimen of use, showing its Design Mark, are set forth below and are
`
`also provided in Exhibits A, and B, respectively.
`
`
`
`
`
`
`
`
`
`
`
`As shown above, Petitioner’s Design Mark includes the words “DISPOSABLE INSULIN
`
`DELIVERY” in dark green below the “GO” component of the mark. Meanwhile, Registrant’s
`
`Design Mark has no other letter or word components aside from the letters “VGO” comprising
`
`the majority of the mark. The marks differ significantly in color scheme; the letters “VGO” of
`
`Registrant’s Design Mark are a single color, while those of Petitioner’s Design Mark are two-
`
`tone with the “V” in dark green and the “GO” in lime green. The font and letter layout of the
`
`marks differ as well. The letters “G” and “O” of Registrant’s Design Mark have a rounded
`
`square shape, the “G” overlaps with the “V”, and the letters “GO” fall roughly in the middle of
`
`the “V” from a vertical standpoint. The letters “G” and “O” of Petitioner’s Design Mark have a
`
`
`1 Petitioner cites Phillips Petroleum Company v. C.J. Webb, Inc., 170 U.S.P.Q. 35 (C.C.P.A. 1971) to support its
`comparison of its Design Mark to Registrant’s specimen of record. Petitioner discusses only the portion of Phillips
`in which that court found a high degree of similarity between the opposer’s and applicant’s marks and states, “As a
`result the court found a likelihood of confusion and reversed the TTAB’s decision dismissing the opposition.” See
`Petitioner’s Motion of Summary Judgment at pgs. 4-5. However, the Phillips Court did not decide likelihood of
`confusion based on a similarity of the marks alone. That court also found that Phillips’s mark was old and well
`known for petroleum products (dating back to Nov. 22, 1949) and that applicant’s and Phillips’s products were
`sufficiently similar. These later two factors are absent in the present cancellation, as is a sufficient similarity of the
`marks.
`
`
`ActiveUS 138679575v.2
`
`- 4 -
`
`

`
`circular shape, there is no overlap between the letters, and the letters “GO” are top justified with
`
`the letter “V”.
`
`Registrant’s Design Mark has a wheel symbol comprised of two arcs trailed by two
`
`pointed lines, which underline all three letters “VGO”. Petitioner has no such underline, but
`
`instead points to a hyphen that crosses the word “GO” to find a similarity between the marks.
`
`Petitioner states that Registrant’s rolling wheel element and Petitioner’s hyphen element suggest
`
`movement from left to right. However, in its Registration, Petitioner states, “The hyphen is a
`
`stylized design intended to represent a finger prick used to drawing [sic] blood for testing.” See
`
`Exhibit A. Moreover, when asked during her deposition what the hyphen element represented,
`
`Ms. Tara Charvat, Vice President Marketing and Marketing Operations for Petitioner, answered,
`
`“The needle button on the V-Go device.” See Deposition of Tara L. Charvat, attached as Exhibit
`
`C at 78:1-4. Thus, Petitioner has suggested three different impressions this element alone would
`
`make on the consumer. Which of these three impressions is appropriate, how that impression
`
`contributes to the overall connotation and commercial impression of the entire mark, and how
`
`that impression contrasts with the overall impression of Registrant’s Design Mark is, by itself,
`
`but one unresolved issue of material fact. See J. Thomas McCarthy, 4 McCarthy on Trademarks
`
`and Unfair Competition § 23:26 (“[T]he ‘psychological imagery evoked by the respective marks’
`
`may overpower the respective similarities or difference in appearance and sound.”); see also
`
`Lever Bros. Co. v. Babson Bros. Co., 197 F.2d 531 (C.C.P.A. 1952). That the other differences
`
`between the design marks set forth above must be weighed with any similarities shows that the
`
`dissimilarity of the marks in their entireties is a genuine issue of material fact that renders
`
`summary judgment inappropriate.
`
`
`ActiveUS 138679575v.2
`
`- 5 -
`
`

`
`Because of all these differences, Petitioner’s Design Mark and Registrant’s Design Mark
`
`create substantially different overall appearances, connotations and commercial impressions. It
`
`is clear that genuine issues of material facts exist which compel denial of Petitioner’s Motion for
`
`Summary Judgment.
`
`
`
`
`
`2.
`
`The goods are distinct.
`
`The Petitioner’s goods are listed as “medical apparatus, namely, infusion and injection
`
`devices for administering drugs” in class 10. Petitioner’s Vice President of Marketing described
`
`the product as “A disposable insulin delivery device,” that “delivers insulin over a 24-hour
`
`period which you can take off and remove after that 24 hours and throw out.” See Exhibit C at
`
`10:20-12:5. Petitioner’s Chief Executive Officer explains that its core product is designed for
`
`Type 2 diabetics, and, in use, “You insert it with insulin and then the patient puts it on their
`
`body, on the abdomen, and they click a couple of buttons and they deliver insulin on a
`
`continuous 24-hour basis. And then they click other buttons which will deliver insulin at
`
`mealtime.” See Deposition of Kristen Peterson, CEO of Petitioner, attached as Exhibit D at
`
`13:13-19.
`
`
`
`The Registrant’s goods are identified as “robotic video and audio communication
`
`hardware; computer software for use in connection with audio and video communication
`
`systems” in class 9. See Certificate of Registration No. 3,895,432, attached as Exhibit E. In the
`
`Rule 30(b)(6) Deposition of VGo Communications, Inc., attached as Exhibit F, Registrant
`
`describes its product as “a robotic telepresence system [that] is a robot with two-way audiovisual
`
`communications.” See Exhibit F at 36:11-14. Registrant explained the meaning of “robotic
`
`telepresence” as “a physical avatar … that has communication on a mobile platform that [one]
`
`
`ActiveUS 138679575v.2
`
`- 6 -
`
`

`
`can control remotely … [One] can drive the robot and go and meet people and interact with
`
`people remotely.” See id. at 36:15-37:2. In other words, Registrant’s goods are like a video
`
`phone on wheels.
`
`
`
`Registrant’s goods are not infusion and injection devices for administering drugs and are
`
`not medical apparatus and, thus, do not fall within the range of the goods identified in the
`
`Petitioner’s registration. Registrant’s goods are clearly not disposable insulin delivery devices
`
`that continuously deliver insulin over a 24-hour period, and, indeed, do not deliver insulin or any
`
`other drug in any form or manner. Moreover, Registrant’s goods do not treat or diagnose
`
`diabetes or any other type of medical condition. Further still, Registrant’s products do not touch
`
`a patient, do not in and of themselves monitor or assess a patient for diagnosis or treatment, and
`
`do not administer any medication. Registrant’s product is a telepresence robot that provides two-
`
`way audiovisual communications that enables its user to communicate (including by video
`
`conference) with others remote from the user. It is difficult to believe that anyone would think
`
`that a remote communication robot would deliver a continuous supply of insulin over a 24-hour
`
`period or that such a robot and an insulin delivery device would be provided by the same source.
`
`Illustrative images of Registrant’s and Petitioner’s goods in use follow below. The
`
`source documents of these images are a Product Brochure describing Registrant’s products
`
`(produced at VGO000001-002), attached as Exhibit G, and a Patient Instruction Manual for
`
`Petitioner’s products (produced as VAL000672-698), attached as Exhibit H.
`
`
`ActiveUS 138679575v.2
`
`- 7 -
`
`

`
`
`
`The picture on the left shows a user of Registrant’s telepresence robot participating in a
`
`meeting with colleagues. The picture on the top right is a rendering of Petitioner’s disposable
`
`insulin delivery device. The picture on the bottom right is a rendering of Petitioner’s product in
`
`use by a patient.
`
`Registrant’s telepresence robot is approximately 48 inches tall by 13 inches wide by 15
`
`inches deep and weighs between 18-22 pounds. The telepresence robot has a motorized wheel
`
`base that enables the user to move the robot from place-to-place as well as obstacle and stair
`
`detection sensors to prevent collisions and damage while in motion. The robot also includes a
`
`six inch LCD display, a camera, speakers, and a microphone array that enable its user to conduct
`
`audio-video communications. See Exhibit G at VGO000002.
`
`
`ActiveUS 138679575v.2
`
`- 8 -
`
`

`
`Petitioner’s disposable insulin delivery device is 2.4 inches long by 1.3 inches wide by
`
`0.5 inches thick and weighs between 0.7-1.8 ounces. The insulin delivery device has an insulin
`
`capacity reservoir between 0.56 – 0.76 mL. The device has an adhesive patch that holds the
`
`device to the patient’s skin, e.g., the patient’s abdomen, as shown above. The device also
`
`includes a needle that subcutaneously delivers insulin to the patient through the action of a
`
`mechanically driven syringe. See Exhibit H at VGO000683, 000690.
`
`Holding the evidence presented to date in the light most favorable to Registrant, there is a
`
`question of material fact as to whether Registrant’s goods would be related to Petitioner’s goods
`
`as they travel in commerce.
`
`3.
`
`There is no similarity between the Petitioner’s established, likely-to-continue
`
`trade channels and Registrant’s established, likely-to-continue trade channels.
`
`
`
`Petitioner’s product is used by individuals that have diabetes. See Exhibit D at 13:13-19.
`
`Petitioner states that its product “
`
`
`
`” See Petitioner’s Second Supplemental Responses to
`
`Registrant’s Interrogatories, No. 16, attached as Exhibit I. Thus, Petitioner’s product must be
`
`prescribed by a physician. See Exhibit C at 14:10-15. As a result, Petitioner sells its goods
`
`“through all prescription based product channels.” See Petitioner’s Response to Registrant’s
`
`First Set of Interrogatories, No. 6, attached as Exhibit J. Importantly, because the FDA requires
`
`a prescription for Petitioner’s product, the individual end user of the product must consult a
`
`health care professional before being able to obtain the product from a pharmacy of any kind.
`
`
`
`Registrant’s product does not require a prescription – it is a telepresence robot – and does
`
`not require an FDA-clearance. Thus, Registrant does not sell its products through pharmacies,
`
`
`ActiveUS 138679575v.2
`
`- 9 -
`
`

`
`other prescription based product channels, or retail outlets. Rather, Registrant sells its goods
`
`directly or through Value Added Resellers. See Registrant’s Responses to Petitioner’s First Set
`
`of Interrogatories, No. 5, attached as Exhibit K. Moreover, Registrant seeks to “[provide] its
`
`products to companies within the enterprise, education, and health care markets.” See id. at No.
`
`4.
`
`
`
`The Petitioner claims the parties’ products are closely related merely because Registrant
`
`sells its products into the health care market. However, Registrant’s products are sold to the
`
`enterprise and education markets as well. See Exhibit F at 42:12-15. Petitioner makes no claim
`
`that it targets these later two markets. Although Petitioner ignores this issue, Petitioner’s own
`
`exhibits to its Motion for Summary Judgment are replete with examples of Registrant’s
`
`marketing efforts and the use of its products in the enterprise and education markets. See
`
`Petitioner’s Motion for Summary Judgment, Exhibit I (VGO001327: schools use Registrant’s
`
`products to enable home bound students to participate in class; VGO001329-1330: Registrant’s
`
`products sold to Cisco, Intel, Ericsson, Massachusetts Institute of Technology, and Baylor
`
`University; VGO001354: Automobile maker Audi uses Registrant’s products to enable technical
`
`assistance consultants to remotely diagnose vehicle problems.)
`
`
`
`Registrant markets and sells its products to the enterprise market, which includes, e.g.,
`
`large enterprise, manufacturing, and small business consumers. Registrant’s products help its
`
`enterprise consumers overcome distance, manage remote teams, and maintain a virtual presence
`
`at many geographically distant locations at once. For example, Registrant’s products also enable
`
`remote engineers and remote project team leaders to engage in processes and keep visually
`
`involved in engineering, product development, and manufacturing projects. In another
`
`illustrative application, Registrant’s products were used by a telecommunications company to
`
`
`ActiveUS 138679575v.2
`
`- 10 -
`
`

`
`virtually attend the 2012 Consumer Electronics Show (CES). Registrant’s telepresence robot
`
`enabled the company’s representative to interact with others in the company’s booth at CES as
`
`well as move about the conference and interact with other vendors. See Registrant Solution
`
`Examples, attached as Exhibit L.
`
`
`
`Registrant also markets and sells its products to the educational market. Registrant’s
`
`products enable students with disabilities and immune-deficiencies to attend classes virtually via
`
`the products’ audio-video communication link to the telepresence robot. Students who are
`
`unable to physically attend school due to their illness or condition are able to move between
`
`classrooms independently and socialize with their friends via Registrant’s products. See
`
`Registrant Solution Examples, attached as Exhibit M.
`
`Moreover, in the health care market, Registrant does not specifically target individuals
`
`for sale of its products, but rather targets “the chief information officer, the IT department, [or]
`
`the chief innovation officer of heath care institutions.” See Exhibit F at 50:11-19; 60:14-19. To
`
`the extent Registrant advertises to individual health care providers, e.g., individual physicians, it
`
`does so to identify possible needs to those in IT departments. See Exhibit F at 92:2-94:7. In
`
`other words, Registrant does not target the patient segment of the health care market, but rather
`
`the information technology segment of the health care market. It is appropriate for the Board to
`
`consider whom within the health care market makes the buying decisions when determining
`
`whether a likelihood of confusion exists. In Astra Pharm. Prods., Inc. v. Beckman Instruments.,
`
`Inc. 718 F.2d 1201 (1st Cir.1983), the court found no likelihood of confusion between two uses
`
`of the identical mark “ASTRA”. In Astra, the plaintiff, appellant sold mainly local anesthetics,
`
`cardiovascular medicines, and prefilled syringes. Id. at 1205. Meanwhile, the defendant,
`
`
`ActiveUS 138679575v.2
`
`- 11 -
`
`

`
`appellee sold a computerized instrument that measured the quantities of various substances in a
`
`patient’s blood. Id. at 1203-04.
`
`The Astra court recognized that the products in question were all marketed to, sold to,
`
`and used in hospitals. See Astra, 718 F.2d at 1206-07. However, the decision to purchase
`
`appellant’s products was made through the hospital pharmacy, while the appellee’s blood
`
`analyzer was marketed to the hospital chemistry lab. Id. at 1206. In recognizing this difference
`
`as important to finding no likelihood of confusion, the court stated, “The ‘hospital community’ is
`
`not a homogeneous whole, but is composed of separate departments with diverse purchasing
`
`requirements, which, in effect, constitute different markets for the parties’ respective products.”
`
`Id. at 1207.
`
`
`
`Because of the differences in the nature of the products, the manner in which they will
`
`come to be used, the markets into which they are sold, and the market segments to which they
`
`are marketed, it is clear that genuine issues of material facts as to the similarity of the channels of
`
`trade for these products exist which compel denial of Petitioner’s Motion for Summary
`
`Judgment.
`
`4.
`
`The Conditions under which and Buyers to whom sales are made prevent
`
`confusion.
`
`
`
`The goods of both the Petitioner and the Registrant are not impulse purchases. In the
`
`case of the Petitioner, a consumer will have diabetes, the consumer must see a health care
`
`professional to have it diagnosed, the health care profession will offer a prescription for the
`
`treatment, and the consumer must then go to another party to purchase the goods for the
`
`treatment. Indeed, an individual purchasing Petitioner’s product does so out of medical necessity
`
`
`ActiveUS 138679575v.2
`
`- 12 -
`
`

`
`and not on a whim. Thus, necessarily, health care professionals are involved in the purchasing
`
`decisions and dispensing of Petitioner’s goods. These health care professionals are sophisticated,
`
`having necessarily been educated about the benefits, side effects, and dosages of drugs and drug
`
`delivery systems. They are therefore likely to exercise more than the normal degree of care in
`
`determining whether to prescribe the Petitioner’s products. See Astra, 718 F.2d at 1206-07
`
`(health care provider “must be extremely cautious about what medicines it administers to its
`
`patients, as well as their source.”). It goes without saying that a telepresence robot cannot be
`
`used in place of an insulin delivery device for the treatment of diabetes. As a result, a health care
`
`professional would not believe there is any connection between Petitioner’s and Registrant’s
`
`products. Therefore, the required involvement of an educated health care professional assisting
`
`in the selection of Petitioner’s products and educating the consumer about use of the products
`
`ensures that there will be no likelihood of confusion.
`
`
`
`Although for different reasons, consumers of Registrant’s products also carefully
`
`consider the purchase of Registrant’s products. First, these consumers will most often be a
`
`company, school, health care institution, or other large entity rather than an individual. Second,
`
`the purchasing decision will be made by the chief information officer, member of the
`
`information technology department, or member of the videoconferencing department of the
`
`company, institution, or school. See Exhibit F at 42:12-15; 50:11-19; 60:14-19. Third, the cost
`
`of Registrant’s products is $6,000-$7,000 for a single telepresence robot. See id. at 38:15-23.
`
`Thus, the consumers of Registrant’s products will be sophisticated buyers purchasing relatively
`
`expensive products, which ensures that there will be no likelihood of confusion. See Astra, 718
`
`F.2d at 1206 (“[T]here is always less likelihood of confusion where goods are expensive and
`
`purchased after careful consideration.”).
`
`
`ActiveUS 138679575v.2
`
`- 13 -
`
`

`
`
`
`Because of the differences in the conditions under which sales are made, the differences
`
`in the buyers to whom the sales are made, and the relatively high degree of care exercised in the
`
`buying process, it is clear that genuine issues of material facts exist which compel denial of
`
`Petitioner’s Motion for Summary Judgment.
`
`
`
`5.
`
`The record lacks evidence of actual confusion.
`
`Petitioner first used its Design Mark in commerce on January 3, 2012. Meanwhile,
`
`Registrant has continuously used its Design Mark in commerce since July 29, 2010. Registrant
`
`is not aware of any instances of actual confusion between Registrant and/ Registrant’s Design
`
`Mark on the one hand and Petitioner and/or Petitioner’s Design Mark on the other hand. See
`
`Exhibit K at No. 3. Nor is Registrant aware of any instance in which any person has claimed to
`
`be deceived, mistaken, or confused regarding the source of Registrant’s goods or services offered
`
`under or in connection with Registrant’s Design Mark based on confusion with Petitioner and/or
`
`Petitioner’s Design Mark. See id. at No. 8.
`
`In its Responses to Registrant’s Interrogatories, Petitioner has identified only one
`
`instance of what it claims to be actual confusion as to the identity of the parties herein or their
`
`respective products or services.2 However, the evidence in the record concerning this lone
`
`instance shows that the individual was not, in fact, confused as to the identity of the parties or
`
`their products. Specifically, Petitioner states:
`
`Dr. Richard E. Pratley notified Petitioner that he received
`information from [Registrant] referring to the V-GO mark. Dr.
`Pratley is Director of the Florida Hospital Diabetes Institute and
`
`
`2 Registrant’s Interrogatory No. 8 of its First Set of Interrogatories states, “Describe each instance you know of
`wherein any person has been confused, mistaken or deceived as to the identity of the parties herein or their
`respective products or services.”
`
`
`ActiveUS 138679575v.2
`
`- 14 -
`
`

`
`Senior Scientist and Professor at the Florida Hospital
`Sanford/Burnham Translational Research Institute. Dr. Pratley
`informed Petitioner, “Hey – somebody stole your name…..”
`See Exhibit J at No. 8.; Electronic mail from Dr. Richard Pratley, VAL000720-722, attached as
`
`Exhibit N.
`
`Holding the evidence of record in the light most favorable to Registrant, there is a
`
`question of material fact as to whether Petitioner’s example shows an instance of actual
`
`confusion. Specifically, there is a question as to whether Dr. Pratley was confused as to the
`
`source of information he received from Registrant or whether Dr. Pratley’s reference to
`
`“somebody” shows that he knew a party other that Petitioner was using a V-GO mark.
`
`6.
`
`Petitioner has failed to present evidence for other factors relevant to the lack of a
`
`likelihood of confusion.
`
`Petitioner has provided no evidence related to (i) the fame of the prior mark, (ii) the
`
`number and nature of similar marks in use on similar goods, (iii) the variety of goods on which a
`
`mark is or is not used, (iv) and the extent of potential confusion, i.e., whether de minimis or
`
`substantial. Genuine issues of material facts relevant to these omitted factors exist which compel
`
`denial of Petitioner’s Motion for Summary Judgment.
`
`
`
`Upon an examination of the various factors which would establish a likelihood of
`
`confusion, it is clear Petitioner has submitted no evidence to support his case for a majority of
`
`the factors. For those few factors for which Petitioner has submitted evidence or argument,
`
`genuine issues of material facts exist which compel denial of Petitioner’s Motion for Summary
`
`Judgment. See Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 39 U.S.P.Q.2d
`
`1511 (2d Cir. 1996) (where five of the eight Polaroid factors weighed in favor of plaintiff and
`
`
`ActiveUS 138679575v.2
`
`- 15 -
`
`

`
`three in favor of defendant, the court held that it was error for the district court to dismiss the
`
`case on summary judgment.)
`
`IV. CONCLUSION
`
`VGo Communications, Inc.’s Opposition to Valeritas, Inc.’s Motion for Summary
`
`Judgment has raised several contested issues of material fact. The unresolved facts relating to
`
`likelihood of confusion confirms that Petitioner’s Motion for Summary Judgment should be
`
`denied.
`
`
`
`
`
`
`
`
`
`
`
`VGo Communications. Inc..
`
`By its attorneys,
`
` /John V. Hobgood/
`____________________________________
`Michael J. Bevilacqua
`Barbara A. Barakat
`John V. Hobgood
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`(617) 526-6000
`
`December 15, 2010
`
`
`ActiveUS 138679575v.2
`
`- 16 -
`
`

`
`
`
`Certificate Of Service
`
`I certify that a true copy of the foregoing Registrant’s Opposition to Petitioner’s Motion
`for Summary Judgment and Memorandum in Support Thereof is being served by first-class mail,
`postage-prepaid, this 15th day of December, 2014,