2011 Thomson Reuters. No Claim to Orig. US Gov. Works

2009 WL 1890128 (E.D.Pa.) / Page XXX

For Dockets See 2:09cv01955

United States District Court, E.D. Pennsylvania.

DRUMMOND SCIENTIFIC COMPANY, Plaintiff,

GILSON, INC., Defendant.

No. 09CV01955.

May 7, 2009.

Plaintiff's Memorandum of Law in Support of Motion for Preliminary Injunction

Respectfully submitted, Joseph M. Konieczny, P.C., /s/ Joseph M. Konieczny, Sr. (Pa. 59,724), Meetinghouse Business Center, 2260 Butler Pike, Suite 100, Plymouth Meeting, PA 19462, Telephone: 610-940-1962, Facsimile: 610-940-1963, , Attorneys for Drummond Scientific Company.

Plaintiff, Drummond Scientific Company, respectfully submits this memorandum of law in support of its Motion for Preliminary Injunction pursuant to Fed. R.Civ.P. 65 and 15 U.S.C. section 1116.

TABLE OF CONTENTS

TABLE OF AUTHORITIES ... iii

I. INTRODUCTION ... 1

II. STATEMENT OF FACTS ... 1

A. Background of Plaintiff Drummond Scientific Company ... 1

B. Drummond Scientific's Famous Trademark PIPET-AID ... 2

C. Defendant's Infringing Activities ... 4

III. THE LEGAL STANDARD FOR PRELIMINARY INJUNCTIVE RELIEF IN TRADEMARK CASES ... 6

A. Drummond Scientific Is Likely To Succeed On The Merits of Its Counts For Federal Statutory Trademark Infringement and False Designation of Origin, and Common Law Trademark Infringement ... 7

1. The ‘459 Registration Is Incontestable, Prima Facie Evidence of Drummond Scientific's Ownership, and Prima Facie Evidence of Drummond Scientific's Exclusive Right to Use the Mark PIPET-AID in Connection With Pipet Guns ... 8

2. Defendant's Use of the Marks PIPETTING AID and/or GILSON PIPETTING AID and/or Terms “Pipet-Aid”, “Pipet Aid”, and/or “Pipetting Aid” Creates Confusion as to the Source or Sponsorship of Its Pipet Guns ... 9

a. Factor 1 - Similarity of the Marks ... 10

b. Factor 2 - The Mark PIPET-AID Is Strong and Entitled to Broad Protection Since It Is Inherently Distinctive ... 14

c. Factor 3 - Pipet Guns Are Inexpensive and Purchasers Are Not Likely to Carefully Investigate the Source of Such Goods ... 16

d. Factor 4 - Defendant's Use of Its Infringing Trademarks Began Only Recently ... 17

e. Factor 5 - Defendant Intended to Divert Business from Drummond Scientific ... 18

f. Factor 6 - Drummond Scientific Can Establish Initial Interest Confusion ... 19

g. Factors 7 and 8 - Drummond Scientific and Defendant Market Their Goods Through the Same Trade Channels and Target the Exact Same Customers ... 20

h. Factor 9 - Drummond Scientific's and Defendant's Goods Are Unique and Therefore Associated Together in the Minds of the Public ... 20

i. Non-exclusive Factors Which Lead to the Conclusion That Defendant's Acts Create A Likelihood of Confusion ... 21

B. Drummond Scientific Will Suffer Irreparable Harm Unless Defendant's Use of the Term “Pipetting Aid”, and Use of The Marks PIPETTING AID and GILSON PIPETTING AID Are Enjoined ... 22

C. The Balancing of Equities Favors Injunctive Relief Where Defendant is Infringing Drummond Scientific's Trademark ... 24

1. Defendant's Intentionally Adopted Marks That Are Confusingly Similar to Drummond Scientific's Mark PIPET-AID ... 24

2. Drummond Scientific Seeks Only Limited Equitable Relief ... 25

3. Potential Injury to Defendant Is Subservient to Protection of the Public Interest and the Trademark Rights of Drummond Scientific ... 25

D. The Public Interest Favors Injunctive Relief Where Defendant Are Infringing the Mark PIPET-AID ... 26

1. Protecting Public Safety Serves the Public Interest ... 26

2. Protecting Consumer Confusion Serves the Public Interest ... 26

IV. Conclusion ... 27

TABLE OF AUTHORITIES

Cases

A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) ... 7, 9, 10, 11, 13, 14, 18

American Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421 (3d Cir.1994) ... 27

AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ... 19

Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983) ... 25

Basic Fun, Inc. v. X-Concepts, LLC., 157 F.Supp. 2d 449 ( E.D.Pa. 2001) ... 22

Blumenfeld Development Corp. v. Carnival Cruise Lines, Inc., 669 F.Supp. 1297 (E.D. Pa. 1987) ... 7, 10, 12, 24

Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001) ... 17, 18, 19, 20, 21

Jos. S. Cohen & Sons, Co., Inc. v. Hearst Magazines, Inc., 220 F.2d 763 (C.C.P.A.1955) ... 11

Dominion Bank Shares Corp. v. Devon Holding Company, Inc., 690 F.Supp. 338 (E.D. Pa. 1988) ... 13

Engineered Mech. Svs., Inc. v. Applied Mech. Tech., Inc., 584 F.Supp. 1149 (M.D.La. 1984) ... 11

First American Marketing Corp. v. Canella, 2004 WL 250537 (E.D.Pa. 2004) ... 7, 13

Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) ... 8, 9, 14, 18

Ford Motor Co. v. Summit Motor Prod., Inc., 930 F. 2d 277 (3d Cir. 1991) ... 17

The Gideons Int'l, Inc. v. Gideon 300 Ministries, Inc., 94 F.Supp.2d 566 (E.D.Pa. 1999) ... 7

Horizon Financial, FA. v. Horizon Bancorp., 2 U.S.P.Q.2d 1696 (E.D. Pa. 1987) ... 10, 23, 27

Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) ... 9, 10, 13, 22

Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.2d 700 (3d Cir. 2004) ... 6, 9, 10, 16, 17, 18, 20, 22, 24, 26

Lambert Pharm. Co. v. Listererated Co., 24 F.2d 122 (S.D.Texas 1928) ... 11

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578 (3d Cir. 2002) ... 24, 25

Opticians Assoc. of Am. v. Indep. Opticians of Am., 920 F.2d 187 (3d Cir.1990) ... 6, 7, 10, 13, 22, 23, 24, 26

Pappan Enter., Inc. v. Hardee's Food Sys., Inc., 143 F.3d 800 (3d Cir.1998) ... 22, 25

In re Rexel, Inc., 223 U.S.P.Q. 830 (T.T.A.B. 1984) ... 12

SK&F Co., v. Premo Pharm. Lab., 625 F.2d 1055 (3d Cir. 1980) ... 26

Scott Fetzer Co. v. Gehring, 288 F.Supp.2d 696 (E.D.Pa. 2003) ... 7

S&R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371 (3d Cir. 1992) ... 6, 22, 24, 26

United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134 (3d Cir. 1981) ... 12, 24, 25

Statutes

15 U.S.C. § 1065 ... 8

15 U.S.C. § 1114 ... 22

15 U.S.C. § 1115 ... 8, 15

15 U.S.C. § 1116 ... 6

Other Authorities

Callman on Unfair Competition, Trademarks & Monopolies, §21:10 ... 16

3 J. McCarthy on Trademarks and Unfair Competition, §23:6 ... 19

3 J. McCarthy on Trademarks and Unfair Competition, §23:50 ... 12

I. INTRODUCTION

Drummond Scientific Company (“Drummond Scientific”) is a well-known and reputable manufacturer of scientific liquid handling equipment including pipet dispensers. Drummond Scientific also owns numerous patents and federal trademark registrations for its products including Registration No. 1,074,459 for the mark PIPET-AID. Drummond Scientific recently discovered that Gilson, Inc. (“defendant”), a direct competitor of Drummond Scientific, is selling a competing pipet dispenser using trademarks that are confusingly similar to Drummond Scientific's incontestable, federally-registered trademark PIPET-AID. Drummond Scientific moves this court for an Order enjoining defendant from infringing and/or diluting Drummond Scientific's registered trademark PIPET-AID. Drummond Scientific has no adequate remedy at law.

II. STATEMENT OF FACTS

A. Background of Plaintiff Drummond Scientific Company

Drummond Scientific Company was established in 1948 by L. E. Drummond and his two sons R. J. Drummond and E. L. Drummond. Drummond decl., ¶2. Since 1948, Drummond Scientific has been in the business of designing, manufacturing and selling laboratory and scientific liquid handling equipment such as capillary tubes, centrifuge tubes, hematocrit tubing, laboratory syringes, pipet dispensers and pipet dispenser accessories. Id. Drummond Scientific's current products catalogue is attached hereto as exhibit 1. Id. Since 1948, Drummond Scientific has grown steadily and now has about 65 employees and annual sales in excess of 10 million dollars. Drummond decl., ¶3. Over the past 61 years, Drummond Scientific has developed a reputation for designing, manufacturing and selling only the highest quality scientific liquid handling products. Id

In the early 1970's, Drummond Scientific designed and developed the first “pipet gun” type[FN1] of pipettor. Drummond decl. ¶4. On September 10, 1974, Drummond Scientific was awarded its first pipet gun patent, U.S. Patent No. 3,834,240 entitled Apparatus for Drawings Liquids Into, and Expelling Liquids from a Pipet or the Like. Id. Since the early 1970's, Drummond Scientific has steadily improved its pipet gun as evidenced by the numerous U.S. patents it has been awarded by the United States Patent & Trademark Office (U.S.P.T.O.). Drummond decl., ¶5. For example, Drummond Scientific is the owner of the following patents relating to pipet guns:

FN1. The term “pipet gun” is used to describe a particular type of hand-held liquid handling device used for drawing liquids into and expelling liquids from a pipet. The various types of said liquid handling device are generally known as “pipettors” or “pipet dispensers” in the laboratory equipment industry. In contrast with other types of “pipet dispensers”, the profile of a pipet gun resembles a hand gun with a receptacle on the end of the barrel for connection with the pipet. See, for example, ex. 2.

Issue Date / Patent No. / Title
04/01/97 / 5,616,871 / Pipet Gun Assembly
03/15/94 / 5,294,405 / Adjustable Valve for Pipette Gun
06/01/93 / 5,214,968 / Pipet Filling and Discharge Device
02/25/92 / 5,090,255 / Programmable Pipet Apparatus
11/25/86 / 4,624,147 / Pipet Gun for Drawing Liquid Into and Expelling
It From a Pipet
06/15/76 / 3,963,061 / Apparatus for Drawing Liquids Into and Expelling
Liquids From a Pipette
12/14/76 / D242,729 / Automatic Pipette or the Like
09/10/74 / 3,834,240 / Apparatus for Drawing Liquids Into and Expelling
Liquids From, a Pipette or the Like

A copy of the cover page and abstract of each of the above-listed patents is attached hereto as exhibit 2.

B. Drummond Scientific's Famous Trademark PIPET-AID

Since at least as early as October 25, 1974, Drummond Scientific has used the trademark PIPET-AID in commerce to advertise, promote and sell its pipet guns and accessories, and to identify and distinguish its goods from the goods of other companies. Drummond decl., ¶6. On October 4, 1997, Drummond Scientific was awarded U.S. Trademark Registration No. 1,074,459 (“the ‘459 Registration”), which grants Drummond Scientific the exclusive right to use the mark PIPET-AID, or any confusingly similar mark (colorable imitation), in connection with “electrically driven push button milliliter pipet filler for drawing liquids into and expelling liquids from, pipets or the like” and in connection with related goods. The ‘459 Registration covers the type of pipet guns sold by Drummond Scientific and defendant.

Since its introduction in 1974, Drummond Scientific has sold in excess of 15,000 units of its PIPET-AID pipet gun. Drummond decl., ¶7. Today, a significant percentage of Drummond Scientific's sales relates to pipet guns and pipet gun accessories sold under the mark PIPET-AID. Id. Drummond Scientific sells several different pipet gun models using a family of PIPET-AID marks including:

1) PROGRAMMABLE PIPET-AID ELITE 400

2) PORTABLE PIPET-AID XL

3) PORTABLE PIPET-AID XP

4) PIPET-AID HOODMATE

5) THE ORIGINAL PORTABLE PIPET-AID

6) THE ORIGINAL PIPET-AID

Id.; See ex. 1, pp. 2-8. Drummond Scientific also sells a filtration unit for use with its PIPET-AID guns using the PIPET-AID mark. Id.; See ex. 1, p. 9.

Drummond Scientific's PIPET-AID pipette guns are sold throughout the entire United States and in dozens of foreign countries including Japan, Korea, Australia, Singapore, Canada, Italy, France, United Kingdom, Germany, Sweden, Denmark, Switzerland, and South Africa. Drummond decl., ¶8. Drummond Scientific advertises its PIPET-AID pipette guns at national and international trade shows, and in national and international trade journals. Id. Drummond Scientific sells its liquid handling products through most, if not all, national laboratory supply companies. Id. True and correct samples of Drummond Scientific's past national trade journal advertisements are shown in exhibit 4. Id. True and correct copies of samples of Drummond Scientific's past product catalogs are shown in exhibit 5. Id. True and correct copies of samples of Drummond Scientific's product listings in The VWR Catalog are shown in exhibit 6. Id.

For the past 35 years, Drummond Scientific has continuously used and heavily promoted and advertised the mark PIPET-AID to the scientific community and in the liquid handling equipment industry. Drummond decl., ¶7. Through Drummond Scientific's substantial marketing and advertising efforts, the mark PIPET-AID has become famous in the industry and recognized throughout the United States as a trademark of Drummond Scientific. Id. The mark PIPET-AID, and the extensive recognition and goodwill symbolized by the mark PIPET-AID, are extremely valuable assets of Drummond Scientific. Id. The mark PIPET-AID represents, among other things, Drummond Scientific's reputation as a producer of top quality scientific liquid handling equipment. Id.

C. Defendant's Infringing Activities

Recently, Drummond Scientific discovered that defendant is advertising, offering for sale, and selling in the United States a pipet gun using the marks PIPETTING AID and GILSON PIPETTING AID, instead of using its usual PIPETMAN family of marks that identify all of defendant's other pipettors in its pipettor line. Drummond decl., ¶10. Both of defendant's marks are colorable imitations of, and confusingly similar to, Drummond Scientific's famous trademark PIPET-AID. Id. For example, defendant is advertising and selling its pipet gun on its Internet Web sites, www.gilson.com, www.gilson1.com and www.pipetman.com using the marks PIPETTING AID and GILSON PIPETTING AID. Id. Screenshots of defendant's Internet Web sites are attached hereto as exhibits. 7-9. Id.

Defendant is also advertising and selling its pipet gun using the infringing marks through direct mail solicitations and general advertising brochures such as shown in exhibits 10 and 11. For example, the brochure of exhibit 11 was included as an outsert to the April 2009 issue, vol. 23, no. 4 of “The Scientist”, an industry trade publication. Drummond decl., ¶10. The Scientist has a circulation of about 42,000. Id.

Defendant is also using the terms “pipet aid” and “pipetting aid” in the HTML code of its Web sites as a metatag or searchable text so that web portals, search engines and/or directories will direct Web traffic to defendant's Web sites. Drummond decl., ¶10. The associated HTML code from the screenshots of defendant's Web sites showing use of the marks and terms “pipet aid” and “pipetting aid” as a metatag or searchable text is also attached as exhibits 7-9. Id. Defendant's specific use of the terms “pipet aid” and “pipetting aid” in the attached HTML code is identified below: