Water Pik, Inc. v. Med-Systems, Inc.
848 F. Supp. 2d 1262
D. Colo.2012Background
- Water Pik filed a declaratory judgment action against Med-Systems over Water Pik’s SinuSense mark, opposing Med-Systems’ TTAB registration and seeking various declarations of non-infringement and right to use the mark.
- Med-Systems counterclaimed for federal trademark infringement, trade dress infringement, unfair competition, dilution, and injunctive relief.
- Water Pik moved for summary judgment on counterclaims; Med-Systems moved to supplement the record.
- Med-Systems asserted its SinuCleanse trade dress is inherently distinctive or has acquired secondary meaning and its mark is famous.
- Water Pik developed its SinuSense line after failed negotiations to purchase Med-Systems’ SinuCleanse line; Water Pik registered SinuSense with USPTO and sold products nationwide.
- The court granted the record supplementation and granted Water Pik summary judgment on Med-Systems’ counterclaims, with declaratory-judgment claims deemed moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion between SinuSense and SinuCleanse marks | Water Pik argues no likelihood of confusion | Med-Systems argues there is likelihood of confusion | No genuine issue; Water Pik granted summary judgment in its favor on this counterclaim |
| Trade dress distinctiveness and secondary meaning | Water Pik contends Med-Systems’ trade dress is not inherently distinctive and lacks secondary meaning | Med-Systems contends trade dress is distinctive and has acquired secondary meaning | Water Pik granted summary judgment; trade dress not inherently distinctive and lacking secondary meaning |
| Trademark dilution claim viability | Water Pik argues dilution claim fails without famous mark | Med-Systems argues SinuCleanse is famous | Water Pik granted summary judgment; dilution claim dismissed |
Key Cases Cited
- Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) (similarity of marks central to likelihood of confusion; factors weighed as a whole)
- King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084 (10th Cir. 1999) (likelihood of confusion factors; similarity of marks is highly important)
- Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527 (10th Cir. 1994) (multifactor test for likelihood of confusion; context matters)
- Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920 (10th Cir. 1986) (similarity and likelihood of confusion considerations in packaging/mark analysis)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (conceptual strength and inherent distinctiveness framework for marks)