IP Law Daily, TRADEMARK NEWS: Theranos seeks ruling that NANOTAINER for blood collection tubes does not infringe BD’s MICROTAINER mark, (Nov 4, 2014)

By Cheryl Beise, J.D.

Medical lab services company Theranos, Inc. yesterday filed suit in the federal district court in San Francisco, seeking a declaration that its use of the mark NANOTAINER for blood collection tubes do not infringe the previously registered marks MICROTAINER and BD MICROTAINER, owned by medical supply giant Becton, Dickinson and Company (“BD”). Theranos also seeks cancellation of BD’s MICROTAINER mark on the ground that the mark has become generic for the type of blood collection containers marketed by BD.

Theranos provides laboratory and blood testing services, including through Theranos Wellness Centers and in Walgreens stores in California and Arizona. Theranos performs common blood tests though an innovative method that uses only a few drops of an individual’s blood, which is collected in NANOTAINER blood collection tube.

In April 2012, Theranos filed an intent-to-use trademark application with the USPTO to register NANOTAINER in International Classes 1, 5, 9, 10, 35, 36, 39, 42 and 44. In April 2014, BD filed an opposition to Theranos’s application, alleging likelihood of confusion with BD’s mark MICROTAINER, registered in connection with “container for use in the collection of blood samples for later analysis.” BD also alleged likelihood of confusion with two additional marks, consisting of BD MICROTAINER and design, registered in International Class 10 for “Medical devices, namely tubes” and for “Containers for use in sample collection, namely medical specimen tubes.” BD has demanded that Theranos withdraw its trademark application and cease use of the NANOTAINER mark, according to the complaint.

Theranos alleges that MICROTAINER has become a generic term and cannot serve to indicate a unique source for blood collection tubes and related products. Because a generic term can never function as a trademark to indicate origin, BD’s registration for MICROTAINER is invalid and unenforceable. Theranos asks the court to issue an order declaring that BD’s MICROTAINER registration is invalid and should be cancelled and that BD’s other two registrations be amended to disclaim the term MICROTAINER.

Theranos also seeks a declaration that its use and registration of its NANOTAINER trademark does not infringe upon any trademark rights of BD under 15 U.S.C. § 1114 or the common law, and does not constitute false designation of origin under 15 U.S.C. § 1125(a). Theranos alleges that the parties’ marks are not similar and that the parties’ respective goods and services are sold in different commercial markets, in different channels of trade, and to customers exercising a high degree of care. Theranos is not aware of any actual or potential confusion between the parties’ trademarks.

Theranos also seeks an award of attorney’s fees for an exceptional case under the Lanham Act.

The case is No. 3:14-cv-04880.

Attorneys: Jedediah Wakefield, Sean S. Wikner, and Angel Chiang (Fenwick & West LLP) for Theranos, Inc.

Companies: Theranos, Inc.; Becton, Dickinson and Company.

News: Trademark CaliforniaNews