Trademark Attorney Morris Turek

Morris E. Turek

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Ridiculous Trademark Opposition of the Week – Carefusion v. Numeritex

My “Ridiculous Trademark Opposition of the Week” series is revived this week after a long hiatus thanks to a company located in San Diego called Carefusion 2200, Inc.  Carefusion is the owner of a federal registration dating back to 1999 for the trademark VERSA-TRAC, which is registered for “lumbar spine retractors used for surgery of the spine.”  According to the registration, Carefusion has been using its VERSA-TRAC mark since at least as early as 1996 in connection with its surgical products.  If you care to learn more about Carefusion’s spine retractor instrumentation (and who wouldn’t?), I invite you to carefully review the 16 page brochure I located on Carefusion’s website.  I’m sure it’s about as riveting as spine surgery itself.

Anyway, on July 23, 2009, a Kentucky company by the name of Numeritex Displays, Inc. applied to register the mark VERSA-TRAC for “light emitting diode (LED) displays.”  A quick review of Numeritex’s official website indicates that it is in the business of designing, manufacturing, and selling LED signage and message boards for restaurants, schools, churches, and just about any other type of business or organization that would want to display advertising messages or other information about its products/services.  On what appears to be a related website, the VERSA-TRAC is described as a “revolutionary new display product, which utilizes the best in LED technology (available in red or amber displays) to offer users the versatility of both a message center and a price display.  You can program a variety of messages including options for time, date, and temperature.”  I don’t think I’m exaggerating when I say that nobody in the entire universe could possibly believe that specialized spinal surgery instruments are related in any manner to LED advertising message boards, or that Numeritex’s products are affiliated or associated with Carefusion, despite the fact that both trademarks are identical in appearance and sound.

Well, that is except for the folks in charge at Carefusion.  Yep, on April 14, 2010, Carefusion filed an opposition against Numeritex’s application for VERSA-TRAC on the basis of priority and likelihood of confusion.  Some of my favorite allegations from the Notice of Opposition are as follows:

Upon information and belief, Opposer and Applicant are competitors in the marketplace for the sale of pharmaceutical, medical devices and products…

Upon information and belief, Applicant’s VERSA-TRAC goods will be advertised, marketed, promoted, and provided through the same channels of trade and will be advertised in the same types of publications as Opposer’s VERSA-TRAC goods, and sold to the same classes of the purchasing public…

The registration of the VERSA-TRAC mark by the Applicant will cause the purchasing public and those who use or who are familiar with Opposer’s goods to assume, erroneously, and to be confused, misled and/or deceived, that the Applicant’s VERSA-TRAC goods are made by or originate with, are licensed by, endorsed or sponsored by, or are in some other way associated or connected with Opposer, all to Opposer’s great injury and irreparable damage.

If you read the Notice of Opposition in its entirety, Carefusion’s argument is basically that Numeritex’s LED displays could be used in medical devices and products such as the ones manufactured by Carefusion.  Um, what?  While it is true that some medical devices incorporate light emitting diodes (but notably not Carefusion’s VERSA-TRAC product), 10 seconds of research on Numeritex unambiguously reveals that it produces and distributes electronic signage and message boards for businesses and organizations.  Unless there’s suddenly a trend of hospitals using EKG machines and digital thermometers to advertise to their patients upcoming events at the local community center or the price of gas at the filling station down the street, I don’t think Carefusion has much to worry about in the way of consumer confusion.

But that’s not all.  Carefusion’s Notice of Opposition is also based on the premise that its VERSA-TRAC mark is “famous” within the meaning of the federal Anti-Dilution Act and that registration of Numeritex’s identical mark will “dilute the distinctive quality” of Carefusion’s famous mark.  Unfortunately, it appears that Carefusion has not recently reviewed the Anti-Dilution Act set forth in 15 U.S.C. 1125(c), which states that a “famous” mark is one that is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”  I have to tell you, when I think about some of the most famous U.S. trademarks, such as WALMART, DISNEY, COCA-COLA, and MCDONALD’S, my humble opinion is that VERSA-TRAC doesn’t just miss the cut, it’s probably not even in the top 10,000.  The fact is that Carefusion’s mark would only be known by a minuscule percentage of the population, namely spinal surgeons.  It may even be “famous” among those wacky spinal surgeons.  But nobody with a straight face could rationally argue that Carefusion’s VERSA-TRAC mark is widely recognized by the general consuming public of the United States.  Again, except for those in charge of making important legal decisions at Carefusion.

You know, I forgot how fun it is to write about these crazy oppositions.  Expect more doozies soon!

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