Roche Diagnostics GMBH, and Roche Diagnostics Operations, Inc,v.Minipumps, LLC

Trademark Trial and Appeal BoardSep 9, 2013

No. 91207035 (T.T.A.B. Sep. 9, 2013)

Goodman Mailed: September 9, 2013 Opposition No. 91207035 ROCHE DIAGNOSTICS GMBH, AND ROCHE DIAGNOSTICS OPERATIONS, INC. v. MINIPUMPS, LLC Before Seeherman, Ritchie and Greenbaum, Administrative Trademark Judges. By the Board: Applicant MiniPumps LLC, seeks to register in standard character form MICROPUMP for “Medical apparatus, namely, pump, infusion and injection devices for administering drugs, and accessories used therewith, namely, drug refill consoles, drug refill kits for refilling infusion and injection devices, calibration kits for calibrating infusion and injection devices, programming units, programming consoles, lancet systems consisting primarily of needles and lancets, catheters, drug vials; intraocular and subcutaneous pumps for medical use” in International UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91207035 2 Class 10.1 Opposers, Roche Diagnostic GMBH and Roche Diagnostics Operations, Inc., have opposed registration on the grounds that “micropump” is generic, and if not generic, “micropump” is merely descriptive. Now before the Board is opposers’ motion for summary judgment, filed July 9, 2013, on the genericness ground for opposition.2 The motion is fully briefed.3 In addition to responding on the merits, applicant states that discovery is necessary to respond to the motion for summary judgment. Applicant submits that it has not had an opportunity to gather its own evidence such as survey evidence and third-party use, and that it intends to take discovery on “the limited issue of genericness by focusing on consumer surveys, the use of the term in media publications, use of the term by competitors in the industry and purchaser testimony concerning the term.” To the extent that applicant’s comments could be construed as seeking Rule 56(d) discovery, the motion is denied as moot 1 Application Serial No. 85074797, filed June 30, 2010 under Section 1(b). 2 Opposers filed a motion for summary judgment on December 26, 2012, which was given no consideration because it was filed prior to service of initial disclosures. After service of initial disclosures, opposers refiled the motion for summary judgment. 3 Opposers’ reply brief exceeds the page limits as it is more than 10 pages. See Trademark Rule 2.127(a). Therefore, it has not been considered. Saint-Gobain Corp. v. Minnesota Mining and Manufacturing Co., 66 USPQ2d 1220, 1222 (TTAB 2003). Opposition No. 91207035 3 inasmuch as applicant has responded to the motion for summary judgment on its merits. Opposers’ evidence on summary judgment consists of the declaration of its counsel, Michael Zachary Gordon, and accompanying exhibits. Applicant’s evidence in response to opposers’ motion for summary judgment consists of the declaration of its CEO, Sean Caffey, and the declaration of its counsel, Lawrence T. Stanley, and accompanying exhibits. Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes of material fact, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary judgment has the burden of demonstrating the absence of any genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On summary judgment, the evidence must be viewed in a light favorable to the non-moving party, and “all justifiable inferences are to be drawn” in the nonmovant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). Genericness The test for determining whether a mark is generic involves a two-step inquiry. First, what is the genus Opposition No. 91207035 4 (category or class) of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). With regard to the first part of the genericness inquiry, opposer argues that the genus of goods involved herein is “small pumps.” However, applicant submits that the genus is “not ‘small pumps’ generally, but rather ‘medical apparatus.’” It is undisputed that applicant’s identification of goods includes medical apparatus which incorporates pumps and pumps for medical use. We find that the genus for determining whether applicant’s proposed mark is generic for some of its identified goods is adequately defined by “medical apparatus, namely, pump[s] . . . for administering drugs” and “intraocular and subcutaneous pumps for medical use” listed in applicant’s identification of goods. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). That is, although applicant’s identification lists as its medical apparatus “pump, infusion and injection devices,” pump devices is clearly one of the categories of the apparati and therefore Opposition No. 91207035 5 comprises a narrower category within the broad category. See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010) (lighting fixtures is a generic term for electric candles); In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM is generic for “providing information regarding financial products and services via a global computer network and providing electronic commerce services via a global computer network …” with respect to taxable and tax exempt debt instruments because the services encompass information about bonds). With regard to the second part of the inquiry, opposers have identified the relevant public as “businesses, engineers, researchers, scientists, manufacturers, suppliers and competitors.” In its response, applicant does not dispute this. “A descriptive term may be generic for a designation ab initio, . . . or it may become generic over time through common usage.” BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1557 (Fed. Cir. 1995) (citations omitted). A finding of genericness requires “a substantial showing . . . that the matter is in fact generic” and that such showing “must be based on clear evidence of generic use.” In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1997). Opposition No. 91207035 6 Evidence of the public's understanding of a particular term may be obtained from any competent source, including direct testimony of consumers, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications. See Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1553. Opposers argue that “the wording ‘micro pump’ is commonly and frequently used by the general consuming public as a generic phrase to describe small pumps.”4 Opposers contend that “[t]he record, publications and advertisements within the relevant market, as well as the internet in general are replete with evidence demonstrating that third parties use the wording ‘micro pump’ and/or ‘micropump’ as a generic designation for goods that are small pumps” and that third parties “use the term to refer to small pumps including small pumps in the medical field.” In support of their motion, opposers have provided a dictionary definition which defines “micropump” as “a tiny pump implanted under the skin for the timed administration 4 We note that variations in the display of a generic term (in this case, e.g., “micro pump” “micro-pump” or “micropump”) typically are legally insignificant and do not avoid a finding of genericness. In re Noon Hour Food Products Inc., 88 USPQ2d at 1173 n.2 (TTAB 2008) (“Certainly an upper-case letter or the addition of a hyphen (or a space) cannot obviate the statutory bar to registration of a generic designation any more than can a slight misspelling of such a term”). Opposition No. 91207035 7 of medication.” (Dictionary.reference.com, Random House Dictionary, 2012). Opposers point out that MICRO is defined as “‘very small or microscopic’” and pump is defined as “‘1. A machine or device for raising, compressing or transferring fluids.’” (yourdictionary.com, American Heritage dictionary, 4th edition).5 Opposers have provided a Wikipedia entry for “micropump” which states that “although any kind of small pump is often referred to as micropump, a more accurate and up-to-date definition restricts this term to pumps with functional dimensions in the micrometer range.” (http://en.wikipedia.org/wiki/Micropump).6 To further establish that “micropump” is generic, opposers have provided excerpts from “scientific and 5 Opposers refer to the dictionary definitions provided by the Examining Attorney in the involved application file, and submitted as an exhibit on summary judgment. 6 Applicant had an opportunity to rebut the Wikipedia evidence in its response. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007). “Our consideration of Wikipedia evidence is with the recognition of the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit intentionally false or erroneous information).” Id. Opposers have also provided a “Google hits” search for “micropump” which opposers submit shows that their search results “in significant part refer specifically to small pumps, many of which are medically related.” However, we find that the Google hits search provides very little context for the use of “micropump” on the web pages linked to the search report and is of little value in assessing the consumer public perception of the MICROPUMP mark. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007). We also find that the few web page printouts that relate to the Google search are for “micropumps” which are not used in connection with medical apparatus, and therefore are of little probative value. Opposition No. 91207035 8 scholarly journals and papers that describe small and/or very small pumps.” Excerpts of such journals and papers include: Abhari, Farideh, et al., A Comprehensive Study of Micropumps Technologies, Int. J. Electrochem. Sci., 7 (October 2012) 9765-9780. A typical micropump is a MEMS device; it is the actuation source through which a fluid sample (drugs and therapeutic agents) is transferred with precision, accuracy and reliability from a reservoir to the target. Typical applications include drug delivery and biomedical pharmaceutical, environmental monitoring and even homeland security applications . . . . In such diagnostic systems, integration and miniaturization are achieved by combining on a single chip or package, MEMS micropumps, biosensors and a controlled drug delivery system. An appropriate and effective amount of drug can be precisely calculated by the controller and released at appropriate time by the micro actuator mechanism . . . . MEMS definition causes miniaturized pumping devices fabricated by micromachining technologies to be called micropumps. . . . As pump sizes reduce to micro domains, the effect of centrifugal and inertial forces are generally limited . . . . The first step to selecting a micropump technique for a given application is to determine the pumping requirements and the usage environment. . . . This application is expected to grow explosively owing to increased interest in in-situ medical treatment of diabetic patients. Insulin delivery devices generally do not need high flow rates, still, they should be capable of providing precisely-metered small doses, their flow rate capable of operating independently of back pressure and they should be bio-compatible. Clemens, A.H., Programmable Open-Loop Micropump Insulin Delivery System, Diabetes Care Vol. 3 No. 2 March-April 1980, pp. 359-361. Opposition No. 91207035 9 The application of ‘closed-loop’ glucose- controlled insulin infusion in metabolic research and in the management of diabetic patients in acute emergency situations has stimulated the development of portable insulin infusion devices for the long-term stabilization of glucose levels . . . . A micropump has been developed in an attempt to meet all desirable design features . . . Miles Laboratories, Inc. is engaged in developing a programmable open-loop micropump insulin delivery system, which would overcome many of the currently known limitations. . . . Encouraged by the flow rate precision and programmability attained with the development of the Biostator infusion pumps, we use the same peristaltic principle in our micropump as well. . . . The most critical item in a portable open- loop insulin delivery device is the pump, because it has a significant impact on all the aforementioned design features. We have therefore attempted to develop a small, lightweight pump of low power consumption, high precision, and a wide dynamic range of delivery flow rates. Body Heat Fermentation Drive New Drug-Delivery ‘Micropump’,” Purdue University.” Science Daily 11 September 2012, http://www.sciencedaily.com/releases/2012/09/120911151932.h tm. The micropump contains Baker’s yeast and sugar in a small chamber . . . Such miniature pumps could make possible drug-delivery patches that use arrays of microneedles to deliver a wider range of medications than now possible with conventional patches. . . . Most pumps for drug- delivery applications rely on an on-board power source, which is bulky, costly and requires complex power-management circuits to conserve battery life. ‘Our approach is much more simple . . . It could be a disposable transdermal pump.’” Opposition No. 91207035 10 To further establish generic use of “micropump,” opposers argue that “over 322 patents and patent applications” use “micropump” generically. Opposers have also submitted excerpts of patents and published patent applications using the term “micropump,” for goods within the genus identified above, including the following: Patent No. US 6,589,198 B1, entitled “Implantable Micro- pump assembly” which describes the invention and the object of the invention: The present invention relates to miniature implantable pumps. More specifically it relates to improved miniature implantable pumps which may be used as bio-compatible medical implants for controlling diseases such as glaucoma and for controlled delivery of drugs . . . . Self- powered, bio-implantable pressure adjustable minipump systems for medical applications including body fluid pressure control, drainage control, and drug delivery systems. . . . to provide an improved method and apparatus for controlling glaucoma including a micropump where pump operation is controlled in accordance with the disease state of the optic nerve and the sensed ocular pressure. Patent No. US 5,919,167 entitled “Disposable Micropump” which states the field of invention and the object of the invention: The invention relates generally to an apparatus for delivery of a liquid, and more particularly to a disposable pulsatile micropump for infusion. The use of a syringe pump for infusion of medicament is well known. . . . . There exists a need for an improved apparatus for delivery of fluid. . . . The back of syringe pump has threads for connecting to micropump. Opposition No. 91207035 11 U.S. Publication No. 2003/0187384 A1, entitled “Implant With a Micropump” which describes the invention claimed and embodiment as: 1. An apparatus for treating glaucoma, said implant comprising a micropump which provides a flow of fluid through the implant. . . . In one embodiment, the seton may include a micropump, one way valve or semi-permeable membrane if reflux of red blood cells or serum protein becomes a clinical problem. . . . In another exemplary embodiment, the seton implant may have a one-way flow controlling means of or allowing one-way aqueous flow. The one-way flow controlling means may be selected from the group consisting of a check valve, a slit valve, a micropump, a semi-permeable membrane, or the like. U.S. Publication No. 2009/0292245 A1 entitled “Micropump- operated Drug Dosing System” which makes reference to micropumps: This invention relates to a device for injecting a substance into the human body. Many pharmaceuticals must be injected into the body. . . . EP 1045146 discloses a medical metering pump in which a pump is attached between a container for a liquid medicament to be administered and a removal line. . . . A medical metering pump is configured for delivering a medicament in soluble form continuously over a prolonged period . . . . Microfluid systems are employed in medical technology, biochemistry, chemical engineering and analysis and microreaction technology. These microsystems may have dimensions in the millimeter and centimeter range . . . . New approaches are therefore necessary for the design, production and characterization of microfluidic components, e.g., micropumps and sensors . . . . Micro pumps have the task of metering very small amounts of liquid with at the same time low production costs and small external dimensions. Opposition No. 91207035 12 To counter the dictionary evidence, applicant has submitted definitions for the term MICRO and argues that MICRO has many different meanings including “‘minute quantities or variations,’ ‘microwave oven,’ ‘microcomputer,’ ‘microprocessor,’ ‘of or pertaining to microeconomics’ and ‘one millionth part of a unit’. . . .” Applicant submits that MICROPUMP is suggestive and not descriptive in view of these “multiple possible meanings.” However, we find applicant’s arguments as to multiple meanings of the term MICRO insufficient to raise a genuine dispute. The issue of genericness is determined in relation to the goods in the application. The fact that the term MICRO has multiple meanings in different contexts is not controlling. Cf. In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007) (descriptiveness determined in relation to services identified in application; the fact that a term has multiple meanings is not controlling or relevant to the analysis as the term may be merely descriptive if one of the meanings of the word is descriptive). Applicant also argues that the U.S. patents and patent applications as well as the scientific journals “confirm that the mark is not generic for medical apparatus” (emphasis supplied) because the evidence shows use of Opposition No. 91207035 13 “micropump” “in a broad range of industries . . . including without limitation electronics, automotive, medical and general industry.” However, we find this argument insufficient to raise a genuine dispute. Whether or not MICROPUMP is used in connection with non-medical apparatus, there is no question that the evidence shows use of “micropump” in a generic manner in connection with medical devices. Applicant further contends that opposers’ evidence is not persuasive and is insufficient to establish genericness for a type of medical apparatus because opposers provided no survey evidence and produced no testimony from purchasers. However, while evidence of the public’s understanding of the term may be obtained from purchaser testimony and consumer surveys, they are not the only sources for such proof. Evidence of purchaser understanding may also be obtained from listings in dictionaries, trade journals, newspapers and other publications. In re Merrill Lynch, Pierce, Fenner and Smith Inc., 4 USPQ2d at 1143. Applicant’s assertions regarding the lack of survey evidence or purchaser testimony fail to raise a genuine dispute in view of the dictionary definitions, patents and patent applications and scientific journal evidence which Opposition No. 91207035 14 show generic use of the term “micropump” for pumps for administering drugs and intraocular and subcutaneous pumps for medical use. Applicant further argues that MICROPUMP is not generic because it is “a coined term” which functions “solely as a trademark.” Applicant submits that any third-party use is “either permissibly descriptive or improper trademark use in violation of MiniPump’s trademark rights” and that opposers fail to provide any evidence of applicant “using MICROPUMP in a generic manner.” However, proper trademark use by applicant does not raise a genuine dispute about genericness in view of the wide use of the term “micropump” in a generic manner for medical pump apparatus. See e.g., In re International Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006) (proper trademark use by applicant does not overcome significant evidence of generic use). Additionally, to the extent that applicant claims third-party use of “micropump” is permissibly descriptive (i.e., fair use of “micropump” in a descriptive sense) and therefore does not impinge on its right to register MICROPUMP, we find this assertion unavailing and insufficient to raise a genuine dispute. The examples of use of “micropump” by third parties support the conclusion Opposition No. 91207035 15 that MICROPUMP is a generic term in connection with medical pump apparatus. With regard to applicant’s assertions of infringing third-party use, applicant has provided no evidence of policing with respect to this allegedly infringing third-party use so as to raise a genuine dispute. Applicant also argues that because “not all of MiniPump’s MICROPUMP devices are ‘small’ pumps,” MICROPUMP is not generic, and is at most a descriptive term. According to the declaration of Sean Caffey, applicant’s goods are a “‘smart device’ that is programmable to dispense precise nanoliter-sized or micro-liter sized doses (a volume sensor gives closed-loop feedback) of drugs every hour, day or month as needed. An essential feature of MiniPump’s MICROPUMP device is that it can be programmed to dose accurate volumes of drug [sic]. The reservoir on MiniPumps MICROPUMP device can range from 60 uL to 10mL (i.e., large enough to store several months’ worth of drugs.)” ¶¶ 3-4. Applicant’s website describes its goods as a “small, refillable, implantable ocular drug pump.” Opposers’ exhibit A-9. It is settled law that genericness may be found for a term that is generic of a category or class of products where some but not all of the goods identified fall within Opposition No. 91207035 16 that category. See In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) (ANALOG DEVICES found to be generic for at least some of the category of goods in the identification). Thus, the fact that MICROPUMP is generic for a subset of the goods as described in applicant’s application means that the term can be generic. Haas Outdoors Inc. v. Jordan Outdoor Enterprises Ltd., 72 USPQ2d 1282 (TTAB 2004). Accordingly, the fact that applicant’s goods include both small and big pumps does not raise a genuine dispute. Applicant also argues that the lack of Internet evidence that the term “micropump” is in common use in medical fields, as well as the lack of evidence of use of the term “micropump” by applicant’s competitors, shows that MICROPUMP is not generic. Applicant submits that competitors can use “many adequate alternative terms to describe their goods” and applicant’s use of MICROPUMP does not prevent competitors from describing their products. However, even if an applicant is the first or only user of a generic term or phrase, that does not entitle an applicant to register such a term or phrase as a mark. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1019, 1020 (TTAB 1983). While the competitive need to use Opposition No. 91207035 17 a term may be probative of whether the term is generic, the correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009). Applicant also points to third-party registrations on the Principal Register for MICRO formative marks which have neither disclaimers of MICRO nor claims of acquired distinctiveness. Applicant submits that “[i]t is clear, therefore, that the combination of the term ‘MICRO’ with other descriptive terms can, and does, create a trademark that is suggestive and therefore registrable on the Principal Register.” However, the third-party registrations submitted by applicant are of very limited probative value and fail to raise a genuine dispute. None of the third-party registrations includes PUMP in their mark, and therefore whether or not marks such as MICRO-COLANDER, MICROCUFF or MICROPOINT were registered has no bearing on whether MICROPUMP is generic. Certainly, in light of the evidence of generic usage of “micropump,” as detailed herein, these registrations for MICRO marks are not sufficient to raise a genuine dispute. Opposition No. 91207035 18 In view of the foregoing, we conclude that opposers have demonstrated that MICROPUMP is a generic term for “medical apparatus, namely, pump[s] . . . for administering drugs” and “intraocular and subcutaneous pumps for medical use” and that the evidence and arguments submitted by applicant have not raised a genuine dispute of material fact with regard to the genericness of the term “micropump.” Thus, and provided the matter below is resolved in opposers’ favor, opposers would be entitled to summary judgment in their favor on the issue of genericness. Standing In order to prevail in this proceeding, opposers must establish not only a valid ground for opposition, in this case that applicant's mark is generic, but also that they have standing to oppose. Opposers have alleged in the notice of opposition that they provide insulin pump products and are developing small insulin delivery systems which they generically refer to as “micropumps.” Opposers have also alleged in the notice of opposition that they and their affiliate describe their goods using the generic term “micropump.” Although these allegations would establish Opposition No. 91207035 19 opposers’ standing if proven, opposers have not yet introduced any evidence supporting these allegations.7 Accordingly, opposers are allowed until THIRTY DAYS from the mailing date of this order to submit evidence establishing that there is no genuine dispute as to any material fact related to opposers’ standing, and that they are entitled to summary judgment on the issue of standing as a matter of law. Applicant is allowed until SIXTY DAYS from the mailing date of this order to file a response to any evidence and argument opposers submit, if applicant desires to do so. In the event opposers’ showing establishes their entitlement to summary judgment on the issue of standing, the opposition will be sustained. In the event opposers’ showing is insufficient, this case shall proceed to trial on the issue of standing only. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (setting forth this procedure under analogous circumstances); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1776 (TTAB 1994)(same). Proceedings herein remain otherwise suspended. 7 Opposers have put into evidence a one page printout from their website which merely queries “What is Biotechnology?”

Roche Diagnostics GMBH, and Roche Diagnostics Operations, Inc, v. Minipumps, LLC