Tuesday, August 24, 2010

Pink not generic but not strong for mammography supplies

DeSena v. Beekley Corp., --- F.Supp.2d ----, 2010 WL 3064403 (D.Me.), 2010 Markman 3064403

I will ignore the patent claims in this case and focus only on the Lanham Act/false marking counterclaims. At issue: “skin markers that medical practitioners use to demarcate a particular area or feature of concern that will then be highlighted on subsequent x-rays.”

Beekley alleged that Solstice (the plaintiff company) falsely marked its mammography scar markers as patented under its '106 patent. Solstice also referred to this patent on its mammography mole and lesion markers, but because the scope of the patent was hotly contested with respect to those markers, Beekley couldn’t prove intent to deceive there. Solstice admitted that the patent didn’t cover its scar markers, but its webpage advertising scar markers contained a reference to the patent near an image of and information about the scar marker, removed after the counterclaim was filed. The inventor, DeSena, testified that he told the Solstice employee tasked with putting the website together to put the patent number on the pages for the mole and lesion markers, and that its presence on the scar marker page was an oversight. Solstice conceded that the scar markers were falsely marked and that it had no reasonable belief that they were properly marked. But the remaining question, intent to deceive, was a question of fact.

The court expressed skepticism that the claim was worth Beekley’s effort, given a penalty of “not more than $500,” half of which was to go to the US treasury. It was unclear whether Solstice engaged in more than a single act of false marking. Under Bon Tool, the penalty is per article, but the court pointed out that it would be difficult to apply this rule to website ads where, as here, no individual article was marked falsely. The district court has wide discretion, though the Federal Circuit didn’t have much use for time-based calculations (as applied to falsely marked articles).

Beekley also alleged false advertising over Solstice’s claims that its mammography markers were comparable with Beekley’s. Solstice advertised a “Price Challenge,” “Five products, one low price. Inventory made simple!,” and similar statements comparing Solstice markers to Beekley markers. Beekley argued that Solstice falsely claimed (1) equivalence/interchangeability by matching Beekley and Solstice markers; (2) that “a consumer need only purchase five different Solstice mammography markers in lieu of Beekley's inventory of thirty-five ... without any trade-off in product characteristics and performance”; (3) that Solstice had verified equivalence via testing; and (4) that it sold markers in sizes that it in fact didn’t sell. The court disagreed that the ads made those statements; those were Beekley’s view of how consumers would read the ads. The ads were “compare and save” ads, juxtaposing Solstice markers with their “comparable” Markers. “Comparable” was puffery—vague and subjective, not specific and measurable--at least in this context, though not always as a matter of law. Beekley’s arguments about differences between the products might be persuasive in the marketplace, but if used as a legal standard would essentially remove “comparable” from competitors’ advertising vocabulary. (Compare the European approach to comparative advertising, which approaches this result the court found unacceptable.)

Anyway, if the statements weren’t puffery, no jury could find they were literally false. The consumers are highly sophisticated and engage in significant research and sampling before buying. Beekley lacked evidence of consumer confusion.

On to trademark infringement: Solstice sold a two-tone pink skin marker for mammongraphy, which Beekley alleged infringed its registration of the color pink for "identification markers placed on the skin for use in medical imaging, in class 10." The registration says:

The mark consists of the color pink applied to the front face of a pressure-sensitive adhesive backing used for attaching the marker to a patient's skin and forming a part of the goods, and to pink illustrations and representations of the markers applied to the packaging for the goods. The pressure-sensitive adhesive backings bearing the mark take different geometric shapes, and the shapes and borders of the color pink, and the outline of the portion of the goods to which the mark is applied are illustrated in broken lines in the drawing, and do not form part of the mark.

Solstice argued that pink was functional because it was compatible with Caucasian skin tone. The court refused to grant summary judgment on this argument, because “[b]lending mammography markers with patients' skin has not been a goal or consideration in Beekley's design. In fact, the color pink is not visible on a mammogram and plays no role in the functioning of the marker.” Unlike pink bandages (found functional by the TTAB), imaging markers are only applied temporarily, during a mammogram. Solstice didn’t show that Beekley’s pink markers blended with any skin color. (Wouldn’t it also suffice to show that Solstice’s did?) There was no evidence that competitors used pink to blend; instead, it showed that competitors didn’t use pink or any other color for blending purposes: they used animal prints, blue patterns, etc.

Solstice also argued genericism because the color pink has become generic for goods and services in breast cancer-related fields. Again, Solstice didn’t have sufficient evidence to win on summary judgment. Solstice had to (1) identify the class of products to which its argument applied; (2) identify the relevant purchasing public; and (3) prove that the primary significance of pink to the relevant public is to identify the class of products. The relevant class here was the class stated in the registration: identification markers placed on the skin, not breast cancer-related goods and services. (I don’t see why this is so—consumer perception is the key issue, and consumers are, to put it mildly, unlikely to be aware of the class of goods (and this is even true of sophisticated purchasers). If Solstice proved that consumers would encounter the goods in the context of breast cancer detection/screening, then that should suffice for (1). This seems especially so where the goods are specialized: they’re all widgets to me, but on my first encounter I can still get signals about their general use.)

Anyway, Solstice couldn’t establish that the primary significance of the color pink, when applied to mammography-related identification markers for skin, is to identify that class of products, rather than Beekley as a source. “Although Solstice offers examples of many uses of pink in connection with breast cancer treatment, prevention and related activities, Solstice has offered no evidence that consumers have come to view pink as a generic indicator that goods or services marked with that color are related to those activities, or that imaging markers of that color would be seen as necessarily mammography-related.”

Beekley, however, failed to show likely confusion. Beekley’s registration was for the color pink, with no particular shape, making it somewhat difficult to compare the marks, but Solstice’s nipple marker has a two-tone pink color: darker in the shape of a semicircle and lighter in the shape of a rectangle. None of the Beekley products in the record had the same shape, and the marker also clearly bore Solstice’s own Xact® trademark. A reasonable jury would have to find that the total effect was very different from any Beekley use of pink in the record, making the marks not similar.

The goods, channels of trade, advertising, and prospective purchasers were the same, though the court noted that the purchase decision “typically involves multiple phone calls, product sampling, and feedback from technicians and radiologists,” making confusion unlikely. Solstice had sold the markers since 2005, and Beekley had no evidence of actual confusion, creating a strong presumption against likely confusion.

There were issues of fact on Solstice’s intent, which the court weighed in Beekley’s favor for purposes of the motion for summary judgment.

As for mark strength, Beekley is the market leader in mammography skin markers, but offers them in a variety of colors. Beekley’s two biggest competitors in mammography markers don’t use pink on their markers, but others do use pink in connection with breast cancer, and Beekley doesn’t use pink consistently across its mammography line; it uses various colors including multicolor floral designs. A factfinder “could not find pink to be either a strong or a weak mark.”

Overall, the likelihood of confusion was “nil.” Intent, the fact that the mark was not weak, and direct competition were not enough to create a fact issue for the jury given the products’ dissimilarity, the mark’s lack of strength, purchaser sophistication and extended prepurchase scrutiny, and lack of evidence of confusion.

Finally, the only remaining claim under Maine’s UDTPA was based on false patent marking. Solstice argued conflict preemption. The Federal Circuit has held that a false patent marking claim can proceed under state unfair competition law if, and only if, there is bad faith even if the state law in general does not require bad faith. Fact issues precluded summary judgment on intent, but there was no case or controversy because the UDTPA is limited to equitable relief and the offending website reference is gone. On its own, voluntary discontinuance might be insufficient, but Solstice went farther by admitting that the patent didn’t cover the scar markers, leaving no controversy between the parties.

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