Roche Diagnostics GMBH, and Roche Diagnostics Operations, Inc,v.Minipumps, LLC

Trademark Trial and Appeal Board

Sep 9, 2013

No. 91207035 (T.T.A.B. Sep. 9, 2013)

Goodman

Mailed: September 9, 2013

Opposition No. 91207035

ROCHE DIAGNOSTICS GMBH, AND
ROCHE DIAGNOSTICS OPERATIONS,
INC.

v.

MINIPUMPS, LLC

Before Seeherman, Ritchie and Greenbaum, Administrative
Trademark Judges.

By the Board:

Applicant MiniPumps LLC, seeks to register in standard
character form MICROPUMP for “Medical apparatus, namely,
pump, infusion and injection devices for administering
drugs, and accessories used therewith, namely, drug refill
consoles, drug refill kits for refilling infusion and
injection devices, calibration kits for calibrating
infusion and injection devices, programming units,
programming consoles, lancet systems consisting primarily
of needles and lancets, catheters, drug vials; intraocular
and subcutaneous pumps for medical use” in International
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT
A PRECEDENT
OF THE TTAB
Opposition No. 91207035

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Class 10.1 Opposers, Roche Diagnostic GMBH and Roche
Diagnostics Operations, Inc., have opposed registration on
the grounds that “micropump” is generic, and if not
generic, “micropump” is merely descriptive.
Now before the Board is opposers’ motion for summary
judgment, filed July 9, 2013, on the genericness ground for
opposition.2 The motion is fully briefed.3
In addition to responding on the merits, applicant
states that discovery is necessary to respond to the motion
for summary judgment. Applicant submits that it has not
had an opportunity to gather its own evidence such as
survey evidence and third-party use, and that it intends to
take discovery on “the limited issue of genericness by
focusing on consumer surveys, the use of the term in media
publications, use of the term by competitors in the
industry and purchaser testimony concerning the term.” To
the extent that applicant’s comments could be construed as
seeking Rule 56(d) discovery, the motion is denied as moot

1 Application Serial No. 85074797, filed June 30, 2010
under Section 1(b).
2 Opposers filed a motion for summary judgment on December 26,
2012, which was given no consideration because it was filed prior
to service of initial disclosures. After service of initial
disclosures, opposers refiled the motion for summary judgment.
3 Opposers’ reply brief exceeds the page limits as it is more
than 10 pages. See Trademark Rule 2.127(a). Therefore, it has
not been considered. Saint-Gobain Corp. v. Minnesota Mining and
Manufacturing Co., 66 USPQ2d 1220, 1222 (TTAB 2003).
Opposition No. 91207035

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inasmuch as applicant has responded to the motion for
summary judgment on its merits.
Opposers’ evidence on summary judgment consists of the
declaration of its counsel, Michael Zachary Gordon, and
accompanying exhibits.
Applicant’s evidence in response to opposers’ motion
for summary judgment consists of the declaration of its
CEO, Sean Caffey, and the declaration of its counsel,
Lawrence T. Stanley, and accompanying exhibits.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes of material
fact, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(a). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine dispute of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On
summary judgment, the evidence must be viewed in a light
favorable to the non-moving party, and “all justifiable
inferences are to be drawn” in the nonmovant's favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993).
Genericness
The test for determining whether a mark is generic
involves a two-step inquiry. First, what is the genus
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(category or class) of goods or services at issue? Second,
is the term sought to be registered understood by the
relevant public primarily to refer to that genus (category
or class) of goods or services? H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986).
With regard to the first part of the genericness
inquiry, opposer argues that the genus of goods involved
herein is “small pumps.” However, applicant submits that
the genus is “not ‘small pumps’ generally, but rather
‘medical apparatus.’”
It is undisputed that applicant’s identification of
goods includes medical apparatus which incorporates pumps
and pumps for medical use. We find that the genus for
determining whether applicant’s proposed mark is generic
for some of its identified goods is adequately defined by
“medical apparatus, namely, pump[s] . . . for
administering drugs” and “intraocular and subcutaneous
pumps for medical use” listed in applicant’s identification
of goods. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991). That is, although
applicant’s identification lists as its medical apparatus
“pump, infusion and injection devices,” pump devices is
clearly one of the categories of the apparati and therefore
Opposition No. 91207035

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comprises a narrower category within the broad category.
See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010)
(lighting fixtures is a generic term for electric candles);
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002)
(BONDS.COM is generic for “providing information regarding
financial products and services via a global computer
network and providing electronic commerce services via a
global computer network …” with respect to taxable and tax
exempt debt instruments because the services encompass
information about bonds).
With regard to the second part of the inquiry,
opposers have identified the relevant public as
“businesses, engineers, researchers, scientists,
manufacturers, suppliers and competitors.” In its
response, applicant does not dispute this.
“A descriptive term may be generic for a designation
ab initio, . . . or it may become generic over time through
common usage.” BellSouth Corp. v. DataNational Corp., 60
F.3d 1565, 35 USPQ2d 1554, 1557 (Fed. Cir. 1995) (citations
omitted). A finding of genericness requires “a substantial
showing . . . that the matter is in fact generic” and that
such showing “must be based on clear evidence of generic
use.” In re Merrill Lynch, Pierce, Fenner, and Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1997).
Opposition No. 91207035

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Evidence of the public's understanding of a particular
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, listings
in dictionaries, trade journals, newspapers, and other
publications. See Magic Wand Inc. v. RDB Inc., 19 USPQ2d
at 1553.
Opposers argue that “the wording ‘micro pump’ is
commonly and frequently used by the general consuming
public as a generic phrase to describe small pumps.”4
Opposers contend that “[t]he record, publications and
advertisements within the relevant market, as well as the
internet in general are replete with evidence demonstrating
that third parties use the wording ‘micro pump’ and/or
‘micropump’ as a generic designation for goods that are
small pumps” and that third parties “use the term to refer
to small pumps including small pumps in the medical field.”
In support of their motion, opposers have provided a
dictionary definition which defines “micropump” as “a tiny
pump implanted under the skin for the timed administration

4 We note that variations in the display of a generic term (in
this case, e.g., “micro pump” “micro-pump” or “micropump”)
typically are legally insignificant and do not avoid a finding of
genericness. In re Noon Hour Food Products Inc., 88 USPQ2d at
1173 n.2 (TTAB 2008) (“Certainly an upper-case letter or the
addition of a hyphen (or a space) cannot obviate the statutory
bar to registration of a generic designation any more than can a
slight misspelling of such a term”).

Opposition No. 91207035

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of medication.” (Dictionary.reference.com, Random House
Dictionary, 2012). Opposers point out that MICRO is
defined as “‘very small or microscopic’” and pump is
defined as “‘1. A machine or device for raising,
compressing or transferring fluids.’” (yourdictionary.com,
American Heritage dictionary, 4th edition).5 Opposers have
provided a Wikipedia entry for “micropump” which states
that “although any kind of small pump is often referred to
as micropump, a more accurate and up-to-date definition
restricts this term to pumps with functional dimensions in
the micrometer range.”
(http://en.wikipedia.org/wiki/Micropump).6
To further establish that “micropump” is generic,
opposers have provided excerpts from “scientific and

5 Opposers refer to the dictionary definitions provided by the
Examining Attorney in the involved application file, and
submitted as an exhibit on summary judgment.
6 Applicant had an opportunity to rebut the Wikipedia evidence in
its response. In re IP Carrier Consulting Group, 84 USPQ2d 1028,
1032 (TTAB 2007). “Our consideration of Wikipedia evidence is
with the recognition of the limitations inherent with Wikipedia
(e.g., that anyone can edit it and submit intentionally false or
erroneous information).” Id. Opposers have also provided a
“Google hits” search for “micropump” which opposers submit shows
that their search results “in significant part refer specifically
to small pumps, many of which are medically related.” However,
we find that the Google hits search provides very little context
for the use of “micropump” on the web pages linked to the search
report and is of little value in assessing the consumer public
perception of the MICROPUMP mark. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir.
2007). We also find that the few web page printouts that relate
to the Google search are for “micropumps” which are not used in
connection with medical apparatus, and therefore are of little
probative value.
Opposition No. 91207035

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scholarly journals and papers that describe small and/or
very small pumps.”
Excerpts of such journals and papers include:
Abhari, Farideh, et al., A Comprehensive Study of
Micropumps Technologies, Int. J. Electrochem. Sci., 7
(October 2012) 9765-9780.

A typical micropump is a MEMS device; it is the
actuation source through which a fluid sample
(drugs and therapeutic agents) is transferred
with precision, accuracy and reliability from a
reservoir to the target. Typical applications
include drug delivery and biomedical
pharmaceutical, environmental monitoring and even
homeland security applications . . . . In such
diagnostic systems, integration and
miniaturization are achieved by combining on a
single chip or package, MEMS micropumps,
biosensors and a controlled drug delivery system.
An appropriate and effective amount of drug can
be precisely calculated by the controller and
released at appropriate time by the micro
actuator mechanism . . . . MEMS definition causes
miniaturized pumping devices fabricated by
micromachining technologies to be called
micropumps. . . . As pump sizes reduce to micro
domains, the effect of centrifugal and inertial
forces are generally limited . . . . The first
step to selecting a micropump technique for a
given application is to determine the pumping
requirements and the usage environment. . . .
This application is expected to grow explosively
owing to increased interest in in-situ medical
treatment of diabetic patients. Insulin delivery
devices generally do not need high flow rates,
still, they should be capable of providing
precisely-metered small doses, their flow rate
capable of operating independently of back
pressure and they should be bio-compatible.

Clemens, A.H., Programmable Open-Loop Micropump Insulin
Delivery System, Diabetes Care Vol. 3 No. 2 March-April
1980, pp. 359-361.

Opposition No. 91207035

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The application of ‘closed-loop’ glucose-
controlled insulin infusion in metabolic research
and in the management of diabetic patients in
acute emergency situations has stimulated the
development of portable insulin infusion devices
for the long-term stabilization of glucose levels
. . . . A micropump has been developed in an
attempt to meet all desirable design features . .
. Miles Laboratories, Inc. is engaged in
developing a programmable open-loop micropump
insulin delivery system, which would overcome
many of the currently known limitations. . . .
Encouraged by the flow rate precision and
programmability attained with the development of
the Biostator infusion pumps, we use the same
peristaltic principle in our micropump as well.
. . . The most critical item in a portable open-
loop insulin delivery device is the pump, because
it has a significant impact on all the
aforementioned design features. We have
therefore attempted to develop a small,
lightweight pump of low power consumption, high
precision, and a wide dynamic range of delivery
flow rates.

Body Heat Fermentation Drive New Drug-Delivery
‘Micropump’,” Purdue University.” Science Daily 11
September 2012,
http://www.sciencedaily.com/releases/2012/09/120911151932.h
tm.

The micropump contains Baker’s yeast and sugar in
a small chamber . . . Such miniature pumps could
make possible drug-delivery patches that use
arrays of microneedles to deliver a wider range
of medications than now possible with
conventional patches. . . . Most pumps for drug-
delivery applications rely on an on-board power
source, which is bulky, costly and requires
complex power-management circuits to conserve
battery life. ‘Our approach is much more simple .
. . It could be a disposable transdermal pump.’”

Opposition No. 91207035

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To further establish generic use of “micropump,”
opposers argue that “over 322 patents and patent
applications” use “micropump” generically.
Opposers have also submitted excerpts of patents and
published patent applications using the term “micropump,”
for goods within the genus identified above, including the
following:
Patent No. US 6,589,198 B1, entitled “Implantable Micro-
pump assembly” which describes the invention and the object
of the invention:

The present invention relates to miniature
implantable pumps. More specifically it relates
to improved miniature implantable pumps which may
be used as bio-compatible medical implants for
controlling diseases such as glaucoma and for
controlled delivery of drugs . . . . Self-
powered, bio-implantable pressure adjustable
minipump systems for medical applications
including body fluid pressure control, drainage
control, and drug delivery systems. . . . to
provide an improved method and apparatus for
controlling glaucoma including a micropump where
pump operation is controlled in accordance with
the disease state of the optic nerve and the
sensed ocular pressure.

Patent No. US 5,919,167 entitled “Disposable
Micropump” which states the field of invention and the
object of the invention:

The invention relates generally to an apparatus
for delivery of a liquid, and more particularly
to a disposable pulsatile micropump for infusion.
The use of a syringe pump for infusion of
medicament is well known. . . . . There exists a
need for an improved apparatus for delivery of
fluid. . . . The back of syringe pump has threads
for connecting to micropump.

Opposition No. 91207035

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U.S. Publication No. 2003/0187384 A1, entitled “Implant
With a Micropump” which describes the invention claimed and
embodiment as:

1. An apparatus for treating glaucoma, said
implant comprising a micropump which provides a
flow of fluid through the implant. . . . In one
embodiment, the seton may include a micropump,
one way valve or semi-permeable membrane if
reflux of red blood cells or serum protein
becomes a clinical problem. . . . In another
exemplary embodiment, the seton implant may have
a one-way flow controlling means of or allowing
one-way aqueous flow. The one-way flow
controlling means may be selected from the group
consisting of a check valve, a slit valve, a
micropump, a semi-permeable membrane, or the
like.

U.S. Publication No. 2009/0292245 A1 entitled “Micropump-
operated Drug Dosing System” which makes reference to
micropumps:

This invention relates to a device for injecting
a substance into the human body. Many
pharmaceuticals must be injected into the body. .
. . EP 1045146 discloses a medical metering pump
in which a pump is attached between a container
for a liquid medicament to be administered and a
removal line. . . . A medical metering pump is
configured for delivering a medicament in soluble
form continuously over a prolonged period . . . .
Microfluid systems are employed in medical
technology, biochemistry, chemical engineering
and analysis and microreaction technology. These
microsystems may have dimensions in the
millimeter and centimeter range . . . . New
approaches are therefore necessary for the
design, production and characterization of
microfluidic components, e.g., micropumps and
sensors . . . . Micro pumps have the task of
metering very small amounts of liquid with at the
same time low production costs and small external
dimensions.

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To counter the dictionary evidence, applicant has
submitted definitions for the term MICRO and argues that
MICRO has many different meanings including “‘minute
quantities or variations,’ ‘microwave oven,’
‘microcomputer,’ ‘microprocessor,’ ‘of or pertaining to
microeconomics’ and ‘one millionth part of a unit’. . . .”
Applicant submits that MICROPUMP is suggestive and not
descriptive in view of these “multiple possible meanings.”
However, we find applicant’s arguments as to multiple
meanings of the term MICRO insufficient to raise a genuine
dispute. The issue of genericness is determined in
relation to the goods in the application. The fact that
the term MICRO has multiple meanings in different contexts
is not controlling. Cf. In re IP Carrier Consulting Group,
84 USPQ2d 1028, 1034 (TTAB 2007) (descriptiveness
determined in relation to services identified in
application; the fact that a term has multiple meanings is
not controlling or relevant to the analysis as the term may
be merely descriptive if one of the meanings of the word is
descriptive).
Applicant also argues that the U.S. patents and patent
applications as well as the scientific journals “confirm
that the mark is not generic for medical apparatus”
(emphasis supplied) because the evidence shows use of
Opposition No. 91207035

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“micropump” “in a broad range of industries . . . including
without limitation electronics, automotive, medical and
general industry.”
However, we find this argument insufficient to raise a
genuine dispute. Whether or not MICROPUMP is used in
connection with non-medical apparatus, there is no question
that the evidence shows use of “micropump” in a generic
manner in connection with medical devices.
Applicant further contends that opposers’ evidence is
not persuasive and is insufficient to establish genericness
for a type of medical apparatus because opposers provided
no survey evidence and produced no testimony from
purchasers.
However, while evidence of the public’s understanding
of the term may be obtained from purchaser testimony and
consumer surveys, they are not the only sources for such
proof. Evidence of purchaser understanding may also be
obtained from listings in dictionaries, trade journals,
newspapers and other publications. In re Merrill Lynch,
Pierce, Fenner and Smith Inc., 4 USPQ2d at 1143.
Applicant’s assertions regarding the lack of survey
evidence or purchaser testimony fail to raise a genuine
dispute in view of the dictionary definitions, patents and
patent applications and scientific journal evidence which
Opposition No. 91207035

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show generic use of the term “micropump” for pumps for
administering drugs and intraocular and subcutaneous pumps
for medical use.
Applicant further argues that MICROPUMP is not generic
because it is “a coined term” which functions “solely as a
trademark.” Applicant submits that any third-party use is
“either permissibly descriptive or improper trademark use
in violation of MiniPump’s trademark rights” and that
opposers fail to provide any evidence of applicant “using
MICROPUMP in a generic manner.”
However, proper trademark use by applicant does not
raise a genuine dispute about genericness in view of the
wide use of the term “micropump” in a generic manner for
medical pump apparatus. See e.g., In re International
Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006) (proper
trademark use by applicant does not overcome significant
evidence of generic use).
Additionally, to the extent that applicant claims
third-party use of “micropump” is permissibly descriptive
(i.e., fair use of “micropump” in a descriptive sense) and
therefore does not impinge on its right to register
MICROPUMP, we find this assertion unavailing and
insufficient to raise a genuine dispute. The examples of
use of “micropump” by third parties support the conclusion
Opposition No. 91207035

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that MICROPUMP is a generic term in connection with medical
pump apparatus. With regard to applicant’s assertions of
infringing third-party use, applicant has provided no
evidence of policing with respect to this allegedly
infringing third-party use so as to raise a genuine
dispute.
Applicant also argues that because “not all of
MiniPump’s MICROPUMP devices are ‘small’ pumps,” MICROPUMP
is not generic, and is at most a descriptive term.
According to the declaration of Sean Caffey, applicant’s
goods are a “‘smart device’ that is programmable to
dispense precise nanoliter-sized or micro-liter sized doses
(a volume sensor gives closed-loop feedback) of drugs every
hour, day or month as needed. An essential feature of
MiniPump’s MICROPUMP device is that it can be programmed to
dose accurate volumes of drug [sic]. The reservoir on
MiniPumps MICROPUMP device can range from 60 uL to 10mL
(i.e., large enough to store several months’ worth of
drugs.)” ¶¶ 3-4. Applicant’s website describes its goods as
a “small, refillable, implantable ocular drug pump.”
Opposers’ exhibit A-9.
It is settled law that genericness may be found for a
term that is generic of a category or class of products
where some but not all of the goods identified fall within
Opposition No. 91207035

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that category. See In re Analog Devices, Inc., 6 USPQ2d
1808, 1810 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d
1879 (Fed. Cir. 1989) (unpublished) (ANALOG DEVICES found
to be generic for at least some of the category of goods in
the identification). Thus, the fact that MICROPUMP is
generic for a subset of the goods as described in
applicant’s application means that the term can be generic.
Haas Outdoors Inc. v. Jordan Outdoor Enterprises Ltd., 72
USPQ2d 1282 (TTAB 2004). Accordingly, the fact that
applicant’s goods include both small and big pumps does not
raise a genuine dispute.
Applicant also argues that the lack of Internet
evidence that the term “micropump” is in common use in
medical fields, as well as the lack of evidence of use of
the term “micropump” by applicant’s competitors, shows that
MICROPUMP is not generic. Applicant submits that
competitors can use “many adequate alternative terms to
describe their goods” and applicant’s use of MICROPUMP does
not prevent competitors from describing their products.
However, even if an applicant is the first or only
user of a generic term or phrase, that does not entitle an
applicant to register such a term or phrase as a mark. See
In re National Shooting Sports Foundation, Inc., 219 USPQ
1019, 1020 (TTAB 1983). While the competitive need to use
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a term may be probative of whether the term is generic, the
correct inquiry is whether the relevant public would
understand the term to be generic. In re 1800Mattress.com
IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir.
2009).
Applicant also points to third-party registrations on
the Principal Register for MICRO formative marks which have
neither disclaimers of MICRO nor claims of acquired
distinctiveness. Applicant submits that “[i]t is clear,
therefore, that the combination of the term ‘MICRO’ with
other descriptive terms can, and does, create a trademark
that is suggestive and therefore registrable on the
Principal Register.”
However, the third-party registrations submitted by
applicant are of very limited probative value and fail to
raise a genuine dispute. None of the third-party
registrations includes PUMP in their mark, and therefore
whether or not marks such as MICRO-COLANDER, MICROCUFF or
MICROPOINT were registered has no bearing on whether
MICROPUMP is generic. Certainly, in light of the evidence
of generic usage of “micropump,” as detailed herein, these
registrations for MICRO marks are not sufficient to raise a
genuine dispute.
Opposition No. 91207035

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In view of the foregoing, we conclude that opposers
have demonstrated that MICROPUMP is a generic term for
“medical apparatus, namely, pump[s] . . . for
administering drugs” and “intraocular and subcutaneous
pumps for medical use” and that the evidence and arguments
submitted by applicant have not raised a genuine dispute of
material fact with regard to the genericness of the term
“micropump.” Thus, and provided the matter below is
resolved in opposers’ favor, opposers would be entitled to
summary judgment in their favor on the issue of
genericness.
Standing

In order to prevail in this proceeding, opposers must
establish not only a valid ground for opposition, in this
case that applicant's mark is generic, but also that they
have standing to oppose. Opposers have alleged in the
notice of opposition that they provide insulin pump
products and are developing small insulin delivery systems
which they generically refer to as “micropumps.” Opposers
have also alleged in the notice of opposition that they and
their affiliate describe their goods using the generic term
“micropump.” Although these allegations would establish
Opposition No. 91207035

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opposers’ standing if proven, opposers have not yet
introduced any evidence supporting these allegations.7
Accordingly, opposers are allowed until THIRTY DAYS
from the mailing date of this order to submit evidence
establishing that there is no genuine dispute as to any
material fact related to opposers’ standing, and that they
are entitled to summary judgment on the issue of standing
as a matter of law.
Applicant is allowed until SIXTY DAYS from the mailing
date of this order to file a response to any evidence and
argument opposers submit, if applicant desires to do so.
In the event opposers’ showing establishes their
entitlement to summary judgment on the issue of standing,
the opposition will be sustained. In the event opposers’
showing is insufficient, this case shall proceed to trial
on the issue of standing only. Sinclair Oil Corp. v.
Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (setting forth
this procedure under analogous circumstances); Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1776 (TTAB
1994)(same).
Proceedings herein remain otherwise suspended.

7 Opposers have put into evidence a one page printout from their
website which merely queries “What is Biotechnology?”