Acacia, Inc. v. NeoMed, Inc., 2012 WL 3019948 (C.D. Cal.)
The parties produce neonatal feeding systems. Errors in tubing and misconnection with
devices not intended for enteral (feeding) use can seriously harm
patients. As a result, companies have
used color-coded tubing and connections to diminish the risks of error, though
the parties disputed whether this is necessary given current designs. NeoMed uses orange for “enteral use only”
devices, as do several other companies including Acacia and Utah Medical
products, which chose orange as a safety measure.
NeoMed’s predecessor applied for a trademark in 2007 for
orange used for gradation markings and text/text box on a clear barrel for oral
syringes. The PTO allowed registration
on the supplemental register. NeoMed
sent Acacia a C&D for its use of orange on syringes, including for
gradation markings and text. Acacia sued
for declaratory relief and cancellation of the registration. NeoMed counterclaimed. Acacia moved for partial summary judgment on
functionality, which it received. Since
the mark was only on the supplemental register and not the principal register,
NeoMed retained the burden of proving the nonfunctionality of its trade dress
(query: given this rule, should the PTO consider functionality as a bar to
registration on the supplemental register as thoroughly as it does for the
principal register? I would think yes, given the potential deterrent effect of
even a supplemental registration, not to mention things like import
controls).
Functionality exists when a feature is essential to the use
or purpose of the article or whe it affects the cost or quality of the
article. Color can be an essential
product feature if it serves a significant nontrademark function.
Less than a month after the PTO put NeoMed’s claimed mark on
the supplemental register, NeoMed’s counsel sent letters to three manufacturers
of neonatal enteral devices saying, in part,
NeoMed is working to create a
coalition of manufacturers of enteral products to establish orange as the color
representing enteral safety, and would be happy for you to join that coalition.
However, the use of orange specifically for gradation [sic] markings and text
represents only our own products.
NeoMed has advertised that “orange signals enteral safety,”
“NeoMed Oral Dispensers feature orange lettering and precise gradient marking
that signify ‘enteral or oral’ designed to connect with other compliant
devices,” and “[o]range lettering and graduation marking identify as enteral
only.” NeoMed’s president testified
similarly. Acacia presented evidence
from executives of other device manufacturers, medical device sales
representatives, and a nurse that orange is used to signal to hospital staff
that a particular device is for enteral use, and to coordinate different
enteral only devices, including syringes. (Purple and amber are apparently the other key
colors for enteral-only devices.) The
court found this case indistinguishable from Inwood: color is an aid to hospital staff in identifying particular
types of devices by sight.
NeoMed’s primary argument was that its claims were limited to
orange gradation markings and text on the barrels of syringes. Orange, it admitted, was functional; but it
claimed that its use of orange
wasn’t. But a product feature can’t be
nonfunctional when it’s nothing other than a collection of functional
parts. NeoMed argued, at most, that its
product was visually distinguishable from competing products, but that’s not
sufficient.
NeoMed argued that color had become nonfunctional because “[s]pecially-designed
enteral-only syringes, physically incapable of being connected to IV tubes,
have become universal in the neonatal environment [ ]and will be mandated by
law in California as of January 1, 2013[ ].”
But its evidence was not strong enough to support the factual claim that
orange was now anachronistic. That would
raise an interesting issue if the facts were there! It seems possible that functional could
become nonfunctional under a rather unusual set of circumstances (as Tom Lehrer
might say); could someone now attempt to trademark the rotary dial?
NeoMed argued that it tried to put together a coalition to
promote orange, but that its efforts failed.
Thus, orange was intended to be functional, but became source
identifying. The court ruled that the fact that orange wasn’t functioning well didn’t make it nonfunctional. In Inwood,
the Supreme Court noted only that “some” patients commingled their pills and
used color to distinguish them; others wouldn’t do so. “Therefore, under Inwood, a design feature does not have
to achieve perfect functionality to be functional as a matter of law.” If NeoMed hadn't tried to game the system, maybe the court would have been more sympathetic, but no dice.
Thus, the court granted Acacia’s motion and directed the PTO
to cancel NeoMed’s registration.
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