Free Affidavit in Opposition to Motion - District Court of California - California

Case 3:08-cv-01493-JM-BLM

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1 AMY W1NTERSHEIMER FINDLEY (BAR NO. 163074) MICHAEL R. ADELE (BAR NO. 13.8339) 2 CHARLENE J. WILSON (BAR NO. 222497) ALLEN MATKINS LECK OAMBLE 3 MALLORY & NATSIS LLP 501 West Broadway, 15th Floor 4 San Diego, California 92101-3541 Phone: (619) 233-1155 5 Fax: (619) 233-1158 E-Mail: [email protected] 6 [email protected] [email protected] 7 Attorneys for Defendant 8 BIoRx, LLC 9 10 11 12 NUTRISHARE, INC., a Califomia corporation,Case No. 2:08-cv-01252-WBS-EFB 13 14
V.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA

Plaintiff,

Complaint filed June4, 2008
DEFENDANT'S OPPOSITION TO MOTION FOR PRELIMINARY INJUNCTION

15 BIoRx, LLC, an Ohio Limited Liability Company, 16 Defendant. 17 18 19 20 21 22 23 24 25 26 27 28
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August 18, 2008 2:00 p.m. Courtroom 5 Hon. William B. Shubb

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DEFENDANT'S OPPOSITION TO MOTION FOR PRELIMINARY INJUNCTION

Case 3:08-cv-01493-JM-BLM

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1 2 3 I. 4 II. 5

TABLE OF CONTENTS

1 INTRODUCTION ............................................................................................................... 3 : .................................................................. FACTUAL BACKGROUND .......................... A. B. C. D. E. F. 3 The Parties ............................................................................................................... ~ 3 Development of NutriThrive ...... ........................................................................... : 4 Unveiling of NutriThrive to the Market .................................................................. 4 Registration of the NutriThrive Mark ..................................................................... Rollout of NutriThrive .....................................................................................5 ....... 6 Accreditation of NutriThrive ...................................................................................

6 7 8 9 10 11 III. 12 IV. 13 14 15

6 PROCEDURAL BACKGROUND ..................................................................................... 6 ARGUMENT OF LAW ...................................................................................................... A. B. A Balancing of the Equities and Hardships Requires that Plaintiff's 6 Motion for Preliminary Injunction be Denied ......................................................... Plaintiff is Not Likely to Succeed on the Merits of its Claims ............................... 7 1. 7 Plaintiff Cannot Establish a Likelihood of Confusion ................................ Even if Plaintiff Could Make a Prima Facie Case of Infringement, BioRx' Affirmative Defenses Preclude 16 Injunctive Relief ........................................................................................

16 2. 17 18 C. 19 D. 20 E. 21
go

17 Plaintiff Will Not Suffer Irreparable Harm ........................................................... 19 A Balance of the Hardships Clearly Favors BioRx ............................................... 20 The Public Interest Would be Harmed if an Injunction is Granted .......................

20 CONCLUSION .................................................................................................................

22 23 24 25 26 27 28
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1 2 3 Cases

TABLE OF AUTHORITIES Page(s)

4 Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 5 6

616 F.2d 440 (9th Cir. 1980) ............................ ~ ................................................................ 11
AMF Ine. v. Sleekcrafl Boats, 599 F.2d 341 (9th Cir. 1993) ...................................................................................7, 11, 15

7 Astra Pharmaceutical Products, Inc. v. Beckman Industries, Inc., 718 F.2d 1201 (1st Cir. 1983) ...........................................................................................14 8 Barre-National, Inc. v. Barr Laboratories, Inc., 773 F. Supp. 735 (D.N.J. 1991) ........................................................................................ 14 10 Beech-Nut, Inc. v. Warner-Lambert Co., 346 F. Supp. 547 (S.D.N.Y. 1972), aff'd, 480 F.2d 801 (2d Cir. 1973) ........................... 10 11 12

Broadcom Corp. v. Qualcomm Inc., 18 2005 WL 5925584, 6 (9th Cir. Oct. 19, 2005) ..................................................................

13 Calmar, Inc. v. Emson Research, Inc., 838 F.Supp. 453 (C.D. Cal. 1993) ........................................... ..........................................18 14 Citibank, N.A. v. Citytrust, 15 756 F.2d 273 (2d Cir 1985) ...............................................................................................19 16 Clear Channel Outdoor, Inc. v. City of Los Angeles, 340 F.3d 810 (9th Cir. 2003) ......................................................; ........................................ 7 17 Cohn v. Petsmart, Inc., 18 281 F.3d 837 (9th Cir. 2002) .............................................................................................13 19 Dreamwerks Productions, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) .............................................................................................7 20 Duluth News-Tribune v. Mesabi Publ. Co., 21 84 F.3d 1093 (8th Cir. 1996) .............................................................................................13 22 Earth Island Inst. v. United States Forestry Service, 351 F.3d 1291 (9th Cir. 2003) .............................................................................................7 23 Entrepreneur Media, Inc. v. Smith, 24 279 F.3d 1135 (9th Cir. 2002) ...........................................................................................13 25 Freeeycle Network, Inc. v. Oey, 505 F.3d 898 (9th Cir. 2007) ...............................................................................................7 26 Gauber, S.P.A. v. Nutri-meties Intern 'l, Inc., 27 1991 U.S. App. LEXIS 10842 (Fed. Cir. 1991) ................................................................12 28 Gidatex S.r.L. v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417 (S.D.N.Y. 1996) .................................................................................16
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1

Page(s)

2 J.B. Williams Co., Inc. v. Lelonte Cosmetics, 523 F.2d 187 (9th Cir. 1975) ............................. .................................................................. 8 3 Magnaflux Corp. v. Louisville Pecan Co., 4 231 F.2d 669 (C.C.P.A. 1956) ...................................................................... . .................... 14 5 Nora Beverages, Inc. v. Pettier Group of America, Inc., 269 F.3d 114 (2d Cir. 2001) ..............................................................................................13 6 Nutri/System, Inc. v. Con-Stan Industries, Inc., 7 809 F.2d 601 (9th Cir. 1993) ............................. ........................................................ 8, 9, 11

8 Oakland Tribune, Inc. v. Chronicle Publishing Co.,
9 10

762 F.2d 1374 (9th Cir. 1985) ...........................................................................................18

Official Airline Guides, Inc. v. Gross, 6 F.3d 1385 (9th Cir. 1993) ...............................................................................................11

11 Pfizer Inc. v. Astra Pharmaceutical Products, Inc., 858 F. Supp. 1305 (S.D.N.Y. 1994) ..................................................................................14 12 Sunbeam Lighting Co. v. Sunbeam Corp., 13 183 F.2d 969 (9th Cir. 1950) ...............................................................: .............................14 14 Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass 'n, 465 F.3d 1102 (9th Cir. 2006) ...........................................................................................16 15 United States v. Timken Roller Bearing Co., 83 F. Supp. 284 (N.D. Ohio 1949) ...................: ................................................................ 17 16 17 Statutes 18 15 U.S.C.A. § 1056 (West 2008) ....................................................................................................9 19 Other Authorities 20 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS A~ID UNFAIR COMPETITION (2008) ............................................................... : ................................................................ 10 21 13 RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 23 cmt. d (1995) .......................................... 22 23 24 25 26 27 28
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1

Defendant BioRx, LLC ("BioRx") hereby submits this memorandum in opposition to the

2 Motion ("Motion") of PlaintiffNutrishare, Inc. ("Plaintiff" or "Nutrishare") for a Preliminary 3 Injunction. 4 I. 5 INTRODUCTION The Court should deny Nutrishare's motion because Nutrishare is no__[t likely to succeed on

6 the merits of its case, it cannot overcome BioRx's affirmative defenses and the balance of 7 hardships tips in favor of BioRx. Nutrishare would have this Court believe that well-educated 8 consumers such as doctors and healthcare professionals, as well as patients advised by doctors and 9 healthcare professionals, are likely to be confused by the trademarks "Nutrishare" and 10 "NutriThrive" - despite the bevy of other companies and products.in the market that also share the 11 "Nutri" prefix. The premise itself is borderline frivolous. 12 There is no likelihood of confusion here and Nutrishare knows it - or it would have

13 contacted BioRx and objected to the NutriThrive name over a year ago when, at a major trade 14 show in which both companies participated, BioRx announced its use of the NutriThrive name. 15 Both companies then went head to head marketing their products in the same trade publications 16 for nearly a year without any claim by Nutrishare that the NutriThrive trademark would confuse 17 the public. BioRx applied for and obtained a registered trademark for the "NutriThrive" name, 18 without any concerns at all from either the trademark once or Nutrishare. Not until BioRx began 19 making inroads into a market dominated by Nutrishare did Nutrishare file this action in a belated 20 ~ittempt to stifle its competition. This case is not about likelihood of confusion, but about the 21 misuse of a registered trademark to try to cripple a new competitor. Since tl~ere is no real 22 likelihood of confusion here, Nutrishare is not likely to succeed on the merits in this action. 23 Even ifNutrishare had a legitimate trademark case (which it does not), it is even less likely

24 to prevail on the merits because it cannot prevail against BioRx's laches defense. Nutrishare 25 admits that it was present at the Oley tradeshow when BioRx rolled out the NutriThrive name. It 26 admits that NutriThrive has been advertising in the same trade publications as Nutrishare for 27 nearly a year. Now, after allowing NutriThrive to advertise the name without so much as an 28 objection for nearly a year, and after allowing NutriThrive to register the trademark and begin
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1 gaining traction in the marketplace, Nutrishare cannot equitably obtain a preliminary injunction 2 preventing BioRx's use of the NutriThrive name. Such an injunction would halt the sale of all 3 NutriThrive products until final resolution of this action, would destroy BioRx's momentum in the 4 market and would result in the loss of countless sales. Indeed, BioRx's new entry into the market 5 would make it impossible to quantify adequately the full nature and scope of damages it would 6 suffer in the event an injunction issues. Nutrishare, by contrast, has not shown the loss of a single 7 sale or customer as a result of purported confusion over the Nutrishare and NutriThrive 8 trademarks. But then this case is not really about unfair competition through trademark confusion; 9 it is about stopping legitimate and healthy competition resulting from a new entrant into the 10 market. 11 The declaration of Nutrishare's president and co-founder, Rodney Okamoto, speaks

12 volumes about Nutrishare's misuse of the trademark laws and this lawsuit to shut down a nascent 13 competitor. Mr. Okamoto testifies: 14 15 16 17 18 19 2O The purpose of the trademark laws are to prevent consumer confusion and protect a company's 21 reputation and goodwill. The trademark laws are no____~t a legitimate vehicle for stifling competition 22 and~ indeed, misuse of a trademark for monopolistic advantage is an affirmative defense to a claim 23 of trademark infringement - an affirmative defense that NutriThrive intends to assert here. For 24 this reason too, Nutrishare is even less likely to prevail on the merits. 25 In short, when weighing Nutrishare's failure to establish a likelihood of success on the "Until last year, Nutrishare was the only company in the nation that focused exclusively on providing Home TPN products and services .... Now, there are two companies - Nutrishare and BioRx's NutriThrive division - that focus on in-Home TPN products and services." Declaration of Rodney Okamoto in Supp. of Mot. for Preliminary Injunction ("Okamoto Deck") (Doe. 7), ¶ 21. "Within the past six months, NutriThrive has begun encroaching on Nutrishare's sales territory, and actually has solicited Nutrishare's customers and physician's colleague .... " Okamoto Decl. (Doe. 7), ¶ 16.

26 merits, the irreparable injury BioRx would suffer if an injunction issues, the lack of any 27 appreciable hardship to Nutrishare if an injunction does not issue and Nutrishare's delay in 28 /////
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1 bringing this action, this is not even a close call: the Motion for Preliminary injunction must be 2 denied. 3 II. 4 5 FACTUAL BACKGROUND A. The Parties

Plaintiff is a California company that is dedicated exclusively to providing TPN-related

6 products and services to long-term TPN consumers in their homes. (Okamoto Decl. (Doc. 7), 7 2). 7 TPN (or, total parenteral nutrition) is the provision of services to patients that have clinical 8 nutritional deficiencies that require the infusion of nutritional formulas that bypass the normal 9 processes of eating and digestion. (Declaration ofPhillip Rielly in Supp. of Mot. to Dismiss 10 ("Rielly Decl.") (Doe. 27-3), 77 4-5). According to Plaintiff, until 2007, it was the only company 11 in the nation that focused exclusively on providing Home TPN products and service. (Okamoto 12 Decl. (Doe. 7), 7 21). 13 BioRx is an Ohio limited liability company, with its principal place of business in Ohio.

14 (Rielly Decl., 7 2). BioRx is a national provider and distributor of specialty pharmaceuticals, 15 related supplies, and clinical and reimbursement support services. Currently BioRx has four 16 product offerings: 1) in-home hemophilia care, or the provision of hemophilia clotting factors and 17 highly customized support services, 2) in-home Immunoglobulin G (IgG) infusion; 3) in-office 18 infusion suite management services, primarily targeted at neurology and immunology practices, ' 19 and 4) TPN and enteral nutrition therapies. (Id., 7 3). This last product line was launched in July, 20 2007, and is provided under the trade name, "NutriThrive." (ld., 7 4). 21 The TPN products supplied by Plaintiff and BioRx are prescribed by physicians. The

22 ~rescriptions are f!lled by licensed pharmacists and then provided to the ultimate consumers. The 23 company supplying the product then bills the relevant insurer. (Declaration of Deborah Pfister in 24 Supp. of Opp. to Mot. for Preliminary Injunction ("Pfister Decl."), 7 12). 25 26 B. Development of NutriThrive

BioRx began developing its TPN and enteral nutrition products in 2007. BioRx hired three

27 independent graphic designers to produce names and logos that portrayed health, wellness and 28 vibrancy within the context of home nutrition support. Fifty possible names were narrowed down
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1 to eight names which were presented to a focus group of nutrition professionals. This group rated 2 the eight names and logos and overwhelmingly preferred "NutriThrive" due to the "THRIVE" 3 component and its ability to convey wellness and positive energy. (Id., 74). 4 5 C. Unveiling of NutriThrive to the Market

BioRx first used the NutriThrive mark in an enteral focus group in Boston, Massachusetts

6 on June 18, 2007. BioRx unveiled NutriThrive to the public during an Oley conference held in 7 Cape Cod, Massachusetts from June 27-30, 2007. (Id., ¶ 6; RJelly Decl. (Doc. 27-3), ¶ 8). 8 The Oley Foundation is a national non-profit organization that supports patients having the

9 clinical deficiencies that require the services that NutriThrive provides: The Oley Foundation 10 sponsors a national conference for consumers and providers every summer. BioRx and 11 Nutrishare, among many other infusion providers, attended this June, 2007 conference, during 12 which BioRx announced to Nutrishare and to the world that it was establishing NutriThrive and 13 that it would provide the TPN and enteral services described above. (Nelly Decl. (Doc. 27-3), ¶ 14 8). BioRx attended as a "Gold Medallion" sponsor. (Pfister Decl., ¶ 7). Plaintiff and BioRx were 15 both recognized with awards for sponsorship at the conference, and representatives from both 16 companies shared the podium to receive these awards. (Id.). 17 Plaintiff's President acknowledges that he attended the June, 2007 Oley Foundation

18 Conference in Cape Cod and that he learned at that time of BioRx's announcement and its plans to 19 establish a partially competing service known as NutriThrive. (Okamoto Decl. (Doc. 7), ¶ i 3). 20 Plaintiff raised no objection at that time. 21 During the June, 2007 Oley conference, Craig Peterson and another employee of Plaintiff

22 who identified himself as Plaintiff's Vice President of Marketing spoke with BioRx 23 representatives about NutriThrive. Neither of these individuals made any reference or complaint 24 about confusion or similarity of the marks. (Pfister Decl., ¶ 7). 25 26 D. Registration of the NutriThrive Mark Following the June, 2007 Oley conference and the unveiling of the NutriThrive product

27 and name, BioRx appliedfor registration of two marks with the U.S. Patent and Trademark Office. 28 Application Serial No. 77/229275 for "medical services, namely, administration of nutritional
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1 products for enteral therapy and total parenteral nutrition" was filed on July 17, 2007 and was 2 published for opposition on January 1, 2008. The U.S. PTO has completed its review of the mark 3 by an Examining Attorney, with no citation to the Nutrishare mark as being confusingly similar, 4 and without opposition by Plaintiff or any other party, and the mark is expected to be registered in 5 due course. Application Serial No. 77/229266 for "pharmaceutical preparations for enteral 6 therapy and total parenteral nutrition" was filed on July 17, 2007 and was published for opposition 7 on January 15~ 2008. The U.S. PTO completed its review of the mark by an Examining Attorney, 8 with no citation to the Nutrishare mark as being confusingly similar, and a Notice of Allowance 9 was issued on April 8, 2008. (Declaration of Steven C. Coffaro in Supp. of Opp. to Mot. for 10 Preliminary Injunction ("Coffaro Decl."), ¶7 3-4, Exhibit B). 11 12 E. Rollout of NutriThrive

BioRx began providing services under the NutriThrive name in June, 2007. As Plaintiff

13 admits, BioRx began advertising its NutriThrive products and services extensively soon thereafter. 14 (Okamoto Decl. (Doc. 7), 77 14-15). NutriThrive advertisements have appeared in the Oley 15 newsletter for the past year. (Pfister Decl., ¶ 8). From July 28-29, 2007, BioRx participated in a 16 conference of the Association of Gastric Motility Disorders (AGMD) in Burlington, 17 Massachusetts. Its NutriThrive exhibit was located directly across from Plaintiff's Nutrishare 18 exhibit. Reid Nishikawa, a Nutrishare representative, was stationed at Plaintiff's booth during the 19 conference. He did not express any concerns or make any comments about the NutriThrive name 20 or any alleged confusion caused by its use. (Id., 7 9). 21 On February 8, 2008, at an Oley regional conference in Chicago, Illinois, bothNutriThrive

22 and Nutrishare displayed side-by-side exhibits discussing their respective products and services. 23 Further, from February 9-13, 2008, both Plaintiff's Nutrishare and BioRx's NutriThrive products 24 were exhibited at an American Society of Parenteral and Enteral Nutrition (ASPEN) conference 25 attended by physicians and nurses in Chicago, Illinois. (Id., 7¶ 10-11). 26 At present, a total of 36 customers receive NutriThrive products and services from BioRx.

27 Of those customers, 29 of them receive only enteral (feeding tube) services, as opposed to the TPN 28 services that Plaintiff exclusively provides. (Id., 7 13).
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1 2

F.

Accreditation of NutriThrive

BioRx has received written confirmation from the Accreditation Commission for Health

3 Care (ACHC) that confirms that NutriThfive is accredited by ACHC to provide parenteral and 4 enteral nutrition therapies and has permission to use the ACHC logo in conjunction with the 5 company business. (Id., ¶ 15, Exhibit C). 6 III. 7 PROCEDURAL BACKGROUND Plaintiff filed its Complaint in this action on June 4, 2008. (Doe. 1). It did not serve the

8 Summons and Complaint until June 26, 2008, while Plaintiff and BioRx were attending the 2008 9 Oley conference in San Diego, California. (Doc. 12). Plaintiff filed its Motion for Preliminary 10 Injunction on June 24, 2008. (Doc. 6). BioRx filed a motion to dismiss or to transfer for lack of 11 personal jurisdiction on July 16, 2008. (Doc. 27). 12 IV. 13 14 15 ARGUMENT OF LAW A. A Balancing of the Equities and Hardships Requires that Plaintiff's Motion for Preliminary Injunction be Denied Plaintiff concedes that it took no action, and did not even raise a complaint, with respect to

16 BioRx's NutriThrive name and products until approximately a year had passed after Plaintiff 17 learned of their existence. Mr. Okamoto further admits that the impetus for the filing of this action 18 was Plaintiff's realization that NutriThrive has been encroaching on Plaintiff's sales territory 19 "within the past six months." (Okamoto Decl. (Doe. 7), ¶ 16). Mr. Okamoto's testimony reveals 20 that this action was filed not as a legitimate effort to prevent confusion and trademark 21 infringement, but instead to inhibit lawful competition and preserve Plaintiff's monopoly status as 22 "the only company in the nation that focuses[es]" on providing TPN services. The Court should 23 not countenance these unlawful objectives. 24 Plaintiff seeks a broadly worded preliminary injunction that would prevent BioRx from:

25 (1) using the "NutriThrive" name, or in fact any variation of the root "nuN;" (2) using the 26 www.nutrithrive.com website or any other domain name using the root "nutri;" (3) make any 27 reference to NutriThrive on any website; and (4) causing likelihood of confusion or mistake as to 28
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1 the source, nature or quality of Defendant's products or services. (Pltfs Memo. ofPs & As in 2 Supp. of Mot. for Preliminary Injunction ("Pltfs Ps & As") (Doc. 6-1), p. 2). 3 In order to warrant the sweeping injunctive relief that it seeks, Plaintiff has the burden of

4 proving (under the "traditional" standard): (1) a strong likelihood of success on the merits; (2) the 5 possibility of irreparable injury if preliminary relief is not granted; (3) a balance of the hardships 6 favoring Plaintiff; and (4) advancement of the public interest. Freecycle Network, Inc. v. Oey, 505 7 F.3d 898, 902 (9th Cir. 2007) (quoting Earth Island Inst. v. United States Forestry Service, 351 8 F.3d 1291, 1297 (9th Cir. 2003)). Alternatively, the Court may grant the injunction if Plaintiff 9 demonstrates either a combination of probable success on the merits and the possibility of 10 irreparable injury or that serious questions are raised and the balance of hardships tips shingly in 11 its fagor. Id. Under either standard, an injunction may not issue where the plaintiff fails even to 12 raise serious questions about its likelihood of success. Id. A district court abuses its discretion in .13 granting an injunction if its decision is based on clearly erroneous factual findings. Id. (quoting. 14 Clear Channel Outdoor, Inc. v. City of Los Angeles, 340 F.3d 810, 813 (9th Cir. 2003)). 15 16 17 B. Plaintiff is Not Likely to Succeed on the Merits of its Claims 1. Plaintiff Cannot Establish a Likelihood of Confusion.

The Ninth Circuit has identified eight factors relevant in determining likelihood of

18 confusion in a Lanham Act claim. AMFInc. v. SleekcrafiBoats, 599 F.2d 341,348-49 (9th Cir. 19 1993). These factors are: 1) strength of plaintiff's mark; 2) relatedness or proximity of goods; 3) .20 similarity of the marks; 4) evidence of actual confusion; 5) marketing channels use; 6) type of 21 goods and likely degree of purchaser care; 7) defendant's intent in selecting the mark; and 8) 22 likelihood of expansion of product lines. Id. Plaintiff cannot succeed in establishing the existence 23 of a likelihood of confusion with BioRx's NutriThrive mark according to this standard. While, as .24 ?laintiff argues, each factor itself need "not be rigidly weighed," Dreamwerks Productions, Inc. v. 25 SKG Studio, 142 F.3d 1127 (9th Cir. 1998)~ an analysis of the Sleekcraft factors relevant in this 26 case overwhelmingly favors a finding of no likelihood of confusion. 27 28
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1 2

(a) Strength of Plaintiff's Mark Plaintiff stakes its entire case on a claim to exclusive use of the word/prefix "nuN" for

3 totaI parenteral nutrition products. Total Parenteral Nutrition is the TPN service that both parties 4 here provide - and it is the only service that Plaintiff provides. Plaintiff asks this Court not only to 5 bar BioRx's use of its NutriThrive trademark, but also to bar any use "of the term 'nutri' as a 6 source identifier" for NUTRITION products. (Pltfs Complaint (Doc. 1), Section l(a) of the 7 Prayer for Relief, p. 10). Plaintiff makes no suggestion that the use of a "thrive" formative 8 trademark infringes its established trademarks. In fact, "thrive" and "share" are so dissimilar that, 9 as a matter of law, there can be no likelihood of confusion between the two terms. The focus of 10 Plaintiff's claim, then, is solely defendant's use of"nutri" for total parenteral nutrition products. 11 Plaintiff took a name that contained a descriptive or even generic component and now asks the 12 Court to put a fence around this prefix to assist it in foreclosing competition. Descriptive marks 13 are weak and are entitled to little trademark protection. See, J.B. Williams Co., Inc. v. Lelonte 14 Cosmetics, 523 F.2d 187, 192 (9th Cir. 1975). 15 Plaintiff's reliance on Nutri/System, Inc. v. Con-Stan Industries, Inc., 809 F.2d 601 (9th

16 Cir. 1993) for the contention that "nutri" is a strong mark is misplaced. In that case, the Ninth 17 Circuit held that the "nutri" term "suggests, but falls short of explicitly describing, health and 18 weight loss," and was weak. Id. at 605. The strength of a mark determines, in large part, the 19 ability of the mark's owner to prevent others from using similar marks. See RESTATEMENT . 20 (TI-IIRD) Or UNFAIR COMPETITION § 21, cmt 1 (1995). Even though the Ninth Circuit held that 21 "nutri" was suggestive in the context of health and weight loss, it still ultimately held that a finding 22 of weakness was correct and that the marks "Nutri/System" and "Nutri-Trim" could co-exist for 23 directly Competitive products. Id. at 605, 607. If the "nutri" prefix is weak for diet food and 24 health products, it is far weaker (if not generic) for actual nutrition products. 25 Evidence of the weakness of "nutri" as a mark can also be found on the Principal Register.

26 Attached as Exhibit A to the Declaration of Steven Coffaro is a listing of trademarks in which the 27 Trademark Office required a disclaimer of"nutri/nutra" in connection with the identified goods. 28 (Coffaro Decl., ¶ 2, Exhibit A). A disclaimer is required by the Trademark Office for any words
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1 that are merely descriptive, and which should be available to all users. 15 U.S.C.A. § 1056 (West 2 2008). When a disclaimer is entered into the trademark register, the owner disclaims any 3 exclusive rights in those words, leaving them available for use by others. This list of disclaimed 4 Nutri~utra marks is further evidence that "nutri" is a weak source identifier for nutrition 5 products. The Trademark Office did not require a disclaimer of"nutri" in Plaintiff's mark or 6 BioRx's mark, likely because of the stylistic nature of each mark (i.e., both marks are presented as 7 a single word). However, the fact remains that "nutri" must be considered very weak when used 8 in connection with nutrition products. 9 Further, Plaintiff's implication that their seventeen-year use of the "Nutrishare" mark

10 somehow transforms the "nutri" portion of their mark into a stronger mark, is false and 11 misleading. As the Ninth Circuit in the Nutri/System case noted, ten years of use and "extensive 12 advertising" did not transform a suggestive mark into a "strong or arbitrary one." Nutri/System, 13 809 F.2d at 605. Moreover, Plaintiff's statement that "no other existing TPN provider ...uses the 14 term 'nutri' to identify its offerings" (Pltt~s Ps & As (Doe. 6-1), section III.A.3, p. 16) is incorrect. 15 While Nutrishare offers in-home TPN Services, the Principal Register discloses a number of other 16 entities offering parenteral nutrition-related products and services that currently use a "nutri" 17 prefix or which coexisted in the past with Nutrishare. For example, the following relevant 18 trademarks appear on the Trademark Register: 19 20 21 22 23 24 25 26 NUTRI-FLO (U.S. Reg. No. 1,188,533; registered in 1988 and cancelled in 2002) for "enteral and parenteral nutrition sets"; NUTRILYTE (U.S. Reg. No. 1,806,998) for "Multi-electrolyte concentrates for use in preparing parenteral nutrition solutions"; and NUTRIFORUM (U.S. Reg. No. 2,453,892; registered in 2000 and cancelled in 2008) for "computer services, namely, providing an online database with information about parenteral nutrition products for use by healthcare professionals."

27 In addition, the marketplace includes other providers of nutritional therapies with similar names. 28 These include Nutrepletion Resources (www.nutrepletion.com) which provides nutritional support
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1 therapies to end stage renal disease patients, and Nutricia (.www.nutricia..om), which produces 2 enteral nutrition products. (Pfister Deck, ¶ 18). This evidence conclusively shows that, contrary 3 to Plaintiff's assertions, their use of"nuN" for parenteral nutrition-related products is neither. 4 unique nor uncommon. 5 Plaintiff ignores the above cited marks, and also ignores the opinion of the US Patent and

6 Trademark Office, which examined the applications for NutriThrive filed by Defendant, and found 7 no likelihood of confusion with the Nutrishare marks already on the register. 8 The descriptive nature of the prefix "nutri" for nutrition-related products and the existence

9 of so many other users of the "nutri" prefix demonstrates that this portion of the mark is very weak 10 and is entitled to little, if any, protection. The Trademark Office clearly recognized these facts in 11 allowing the NutriThrive marks to be published for opposition, and never citing as a potential 12 block to registration the Nutrishare marks of Plaintiff. 13 As McCarthy has noted, "[i]f a common portion of the' two conflicting marks is a public

14 domain generic name, the emphasis of enquiry should be upon the confusing similarity of the non15 generic portion, with the ultimate issue determined by the confusing similarity of the total

16 impression of both marks" 4 J. THOMAS MCCARTHY, McCARTHY ON TRADEMARKS AND UN 17 COMt'I~TITION § 23:49 (2008) (citing Beech-Nut, Inc. v. Warner-Lambert Co., 346 F. Supp. 547 18 (S.D.N.Y. 1972), aff'd, 480 F.2d 801 (2d Cir. 1973)). Here, as "nutri" is likely generic for 19 nutrition products, the focus should be on the non-generic "thrive" and "share" portions of the 20 respective marks. Plaintiff does not even suggest that these portions are confusingly similar. 21 22 (b) Similarity of the Marks The weakness of the mark is a vital consideration in the similarity analysis as well. As

23 MCCARTHY has noted: 24 25 26 [i]f the common element of conflicting marks is a word that is "weak" then this reduces the likelihood of confusion. A portion of a mark may be "weak" in the sense that such portion is descriptive, highly suggestive, or is in common use by many other sellers in the market.

27 MCCARTHY, supra § 23:48 (2008). 28
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1

Plaintiff correctly observes that marks should not be dissected but rather should be viewed

2 as a whole to determine similarity. OfficialAirline Guides, Inc. v. Gross, 6 F.3d 1385,1392 (9th .3 Cir. 1993). However, Plaintiff proceeds to dissect the marks anyway, and focuses on the "nutri" 4 prefix alone. Plaintiff asks this court to engage in this same disfavored dissection, examine only . 5 the "nutri" portion, and ignore the fact that "thrive" and "share" are so different that, as a matter of 6 law, there can be no likelihood of confusion. 7 It is important to consider the similarity of sight, sound and meaning of the marks in

8 question. Sleekcraft 599 F.2d at 351. When considered as a whole, the marks are clearly very 9 different. They sound very different when spoken. They have very different meanings. Unlike 10 the Trademark Office, which examines the marks based on the words before it, here the Court has 11 the added advantage of being able to see how the marks are actually presented in the marketplace 12 The Court can block use as well as registration if it finds that as USED the marks are too similar. 13 This generally happens when competitors use similar fonts, colors, or designs in their marketplace 14 presentation. Here, a side-by-side comparison shows that the two marks appear very differently 15 and their colors, stylizations and designs are very distinguishable. (Pfister Decl., Exhibit B). 16 When viewed as a whole, there is no doubt that the marks are quite dissimilar. 17 Plaintiff ignores directly analogous and binding case law on the similarity of two different

18 marks with a "nutri" prefix. In Nutri/System, supra, the Ninth Circuit affirmed the District Court's 19 determination that the marks in question, Nutri/System and Nutri-Trim, were not confusingly 20 similar, despite offering competitive products and services to consumers seeking weight-loss 21 solutions. The plaintiff argued that a side-by-side comparison of the marks as whole was 22 improper since the "nuN" prefix was identical for each mark. 809 F.2d 601,605. The Ninth 23 Circuit, however, held that the "determination of 'similarity' involves consideration of 'the marks 24 and names in their entirety as they appear in the marketplace..." and thus the district court's 25 finding of dissimilarity was proper. Id. at 605-06 (citing Alpha Industries, lnc. v. Alpha Steel Tube 26 & Shapes, Inc., 616 F.2d 440, 444 (9th Cir. 1980) (holding that the common "alpha" prefix alone 27 was not sufficient to prove similarity)). 28
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1

Plaintiff cites only one unreported case that held that "Nutromed" and "Nutri-metrics" were

2 confusingly similar. Gauber, S.P.A.v. Nutri-meties Intern 7, Inc., 1991 U.S. App. LEXIS 10842 3 (Fed. Cir. 1991). In that case, however (which is not binding authority in this Court), the court

4 considered the marks in their entireties and refused to dissect the mark to consider only the "nuN" 5 portion of the mark. Id. at *5. The similarity of the prefix was only one factor in the CouWs 6 finding of confusion, and the meanings of the two marks were the same. Id. 7 8 (c) Evidence of Actual Confusion

In the year that both Nutrishare and NutriThrive have been in the marketplace, Plaintiff has

9 been unable to gather any evidence that suggests actual confusion between the two marks. 10 Instead, Plaintiff relies upon declarations from various parties stating that they raised "questions" ¯ 11 as to whether Plaintiff and Defendant are connected. (Okamoto Decl. (Doe. 7), 7 16; Nishikawa 12 Decl. (Doe. 11), 7 4; Wallin Decl. (Doe. 9), 7 4; Messina Decl. (Doc. 34), 77 3-4). Even to the 13 extent that these declarations do not constitute inadmissible hearsay, they actually show that there 14 has been no Confusion between the two marks, and that the third parties have actually recognized a 15 difference between them. For example, Mr. Nishikawa (who failed to raise any objection to 16 BioRx at the July, 2007 AGMD conference), details three instances in which three customers 17 asked him to clarify the relationship, if any, between NutriThrive and Nutrishare. (Nishikawa 18 Decl. (Doe. 11), 7 4). Additionally, Mr. Okamoto reports that a third party had told him that 19 coexistence of the two marks "could cause confusion." (Okamoto Decl. (Doe. 7), 7 16). While 20 Mr. Okamoto states that this is evidence that a third party had "actually become confused," the 21 language of the Declaration itself dispels the notion that any actual confusion resulted. 22 The Messina Declaration is even more telling because the declarant immediately discerned

23 that NutriThrive isa "new company," and stated only that she was "curious" about this "new 24 company." (Messina Decl. (Doe. 34), 77 3-4). Clearly, if Ms. Messina recognized NutriThrive as 25 a new company, there was no confusion. Her Declaration only proves that consumers are NOT 26 confused. Further, the Wallin Declaration shows that an unnamed discharge planner at an Illinois 27 hospital may or may not have been confused, may have misheard an order, or may simply be 28 insolent. (Wallin Decl. (Doc. 9), 7 4). The Wallin Declaration is certainly not evidence of actual
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1 confusion. In addition, Plaintiffs suggestion that the "owner" of Sullivan's Pharmacy expressed 2 confusion with regard to the NutriThrive name (Pltfs Ps & As (Doc. 6-1), p. 9) is dubious, to say 3 the least. (Declaration of Timothy Fensky in Supp. of Opp. to Mot. for Preliminary Injunction 4 ("Fensky Decl."), ¶¶ 2-4). 5 Federal courts have observed that the types of questions raised by these declarants actually

6 "indicate[] a distinction in the mind of the questioner, rather than confusion." Duluth News7 Tribune v. Mesabi Publ. Co., 84 F.3d 1093, 1098 (Sth Cir. 1996). The Second Circuit has 8 observed that: 9 10 11 12 Nora Beverages, Inc. v. Perrier Group of AmeriCa, lnc., 269 F.3d 114, 124 (2d Cir. 2001). See 13 also RESTATEMENT (THIRD) OF UNt~AIR COMPETITION § 23 cmt. c (1995) ("Evidence of inquiries 14 by customers as to whether the plaintiff and the defendant are associated, however, may not 15 establish the existence of actual confusion if the nature of the inquiries indicates that consumers 16 perceive a difference between the designations and are skeptical of the existence of a connection 17 between the users."). The Ninth Circuit has made similar observations. See Cohn v. Petsmart, 18 Inc., 281 F.3d 837 (9th Cir. 2002) (citing McCarthy, supra § 23:16; Entrepreneur Media, lnc. v. 19 Smith, 279 F.3d 1135 (9th Cir. 2002). 20 The evidence proffered by Plaintiff shows that these third parties actually distinguished [i]nquiries about the relationship between an owner of a mark and an alleged infringer do not amount to actual confusion. Indeed, such inquires are arguably premised upon a lack of confusion between the products such as to inspire the inquiry itself.

21 Nutrishare and NutriThrive. Plaintiff has presented no instances of any third party actually 22 becoming confused about Plaintiff's sponsorship, approval or relationship with the sale of 23 NutriThrive products. The lack of actual confusion is significant because, as Plaintiff argues, the 24 field of TPN is not a crowded one. (Pltf's Ps & As (Doc. 6-1), section III.A.3, p. 16). This fact

25 makes the lack of confusion more relevant than it would otherwise might be. See RESTATEMEN 26 (TrtIaD) O1~ UNVAIR COMPETITION § 23 cmt. d (1995) ("[W]hen the parties have made significant 27 use of their respective designations in the same geographic market for a substantial period of time, 28
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1 the absence of any evidence of actual confusion may in some cases justify an inference that the 2 actor's use does not create a likelihood of confusion."). 3 4 (d) Types of Goods and Likely Degree of Purchaser Care The products and services offered by Plaintiff and BioRx are prescribed by physicians, and

5 pharmacists fill the orders. (Pfister Decl., ¶ 12). These are expensive, life-saving products and 6 confusion is less likely where goods or services are expensive and would only be "purchased after 7 careful consideration." Magnaflux Corp. v. Louisville Pecan Co., 231 F.2d 669, 671 (C.C.P.A. 8 1956). TPN products and services are not fungible products, and decisions to purchase this type 9 of product would logically not be made on the basis of trademarks alone. On the contrary, 10 expensive goods would 0nlY be purchased after careful consideration, and even more 11 consideration will be given for products that are medically necessary. 12 Moreover, these products are purchased by careful, professional buyers (doctors and

13 pharmacists) that are providing a-medically-important service to their patients. In numerous cases, 14 doctors and pharmacists have been deemed "professional" buyers and thus more sophisticated than 15 the average consumer. See, e.g., Astra Pharmaceutical Products, Inc. v. Beckman Industries, Inc., 16 718 F.2d 1201, 1209 (lst Cir. 1983); Barre-National, Inc. v. BarrLaboratories, Inc., 773 F. Supp. 17 735, 742 (D. N.J. 1991) (pharmacists as "professional" buyers). In fact, one federal court called 18 doctors "as sophisticated a group as one could imagine." Pfizer Inc. v. Astra Pharmaceutical 19 Products, Inc., 858 F. Supp. 1305, 1328 (S.D.N.Y. 1994). Where buyers are professional and 20 sophisticat, ed, confusion is less likely. Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 21 973 (9th Cir. 1950). The Court of Appeals for the First Circuit has held that the "most critical 22 factor" in finding no likelihood confusion for identical marks was the sophistication of the 23 purchasers. Beckman, 718 F.2d at 1206. 24 In this case, doctors are ordering and pharmacists are filling products that are intended to

25 complement a patient's medical care. Not only are doctors and pharmacists professional, 26 sophisticated, and thus less likely to be confused, they can also be expected to use great care in 27 selecting such products for patients and are unlikely to make a decision on the basis of trademarks 28
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alone. Moreover, the expense of the products will cause any buyer to carefully consider prior to
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1 spending so much money for such ,an important and medically-necessary product. For similar 2 reasons, physicians are able to discern the difference between "Walmart" and "Walgreens," despite 3 the fact that these brands both provide pharmacy products and are often located literally across the 4 street from one another. Likewise, BioRx competes with other specialty pharmacy companies, 5 such as BioScripts, Biofusion and BioPartners. 6 7 (e) Defendant's Intent in Selecting the Mark Plaintiff has presented no evidence whatsoever to suggest that BioRx had any intent to

8 infringe Plaintiff's trademark rights. Plaintiff argues that BioRx's mere adoption of a mark 9 containing a "Nutri" component, while having actual or constructive knowledge of Plaintiff's 10 mark, constitutes intent to deceive. To the contrary, however, the marks are so dissimilar, save for 11 the generic "nutri" portion of the mark, that no intent to deceive can logically be inferred. If every 12 entity that uses "nutri-" or "nutrition" for nutrition products were deemed to be bad faith 13 infringers, then Plaintiff has a case against hundreds, if not thousands of other trademark owners. 14 As detailed in the Declaration of Deborah Pfister, the NutriThrive name was chosen as a result of a 15 process thatdid not even reference Nutrishare as a competitor to the parties hired to develop the 16 company name and logo. (Pfister Decl., ¶ 4). 17 Moreover, BioRx has never directly solicited Plaintiff's customers as spokespersons, and

18 has only used customers that have come to BioRx for services not provided by Plaintiff. (Id., ¶ 19 14). Additionally, Plaintiff and BioRx have both advertised extensively in the same newsletters. 20 and publications. These publications themselves show that certain words and phrases are very 21 common in the TPN field, and they provide a side-by-side comparison of the advertisement and 22 logo designs used by Plaintiff and BioRx. This comparison shows that BioRx had no intent to 23 deceive. This is not a case where BioRx carefully copied the colors, designs, look and feel of a 24 competitor's marks to play on the goodwill owned by that competitor. Here NutriThrive set out to 25 create its own distinctive look and presence in the marketplace, and it has done so. 26 Considering all of the Sleekeraf! factors on balance, Plaintiff has failed to show a strong

27 likelihood of success on the merits of its claims. Plaintiff has not even raised serious questions 28 about its claims. Accordingly, its request for preliminary injunctive relief should be denied.
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2. 2 3 4

Even if PlaintiffCould Make a Prima Facie Case of Infringement~ BioRx' Affirmative Defenses Preclude Injunctive Relief. (a) Estoppel by Laches

Even if Plaintiff could establish infringement based on the foregoing factors, which, as

5 noted above, is unlikely, Plaintiff's inexcusable delay in filing this action will be fatal to Plaintiff's 6 likelihood of success. The equitable defense of laches is proper in, and applicable to, trademark 7 infifngement suits. See Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass 'n, 8 465 F.3d 1102, 1108-11 (9th Cir. 2006). It is abundantly clear in this case that Plaintiff 9 intentionally delayed filing a suit when it had numerous opportunities, at a very early stage, to 10 object to BioRx's use of the NutriThrive trademark. Plaintiff could have objected to BioRx's use 11 before BioRx had any customers, performed any marketing, and attended various conferences 12 promoting NutriThrive - all conferences that Plaintiff attended as well. Plaintiff could have filed 13 an opposition to registration of the NutriThrive marks with the U.S. PTO. Instead, Plaintiff waited 14 a full year after learning of BioRx's intentions in June, 2007 to object to the use of the NutriThrive 15 name. Plaintiff even failed to send a cease and desist letter to BioRx until after Plaintiff filed suit. 16 (See Declaration of Michael J. Thomas in Supp. of Mot. for Preliminary Injunction ("Thomas 17 Decl.") (Doe. 8), ¶ 2, Exhibit A). 18 These facts demonstrate that Plaintiff has no genuine belief that BioRx is infringing upon

19 its marks. If it did, it would have taken action immediately, rather than sitting back and allowing 20 BioRx to invest time, money and effort in NutriThrive before raising any inkling of an objection. 21 "A finding of inexcusable delay in trademark cases is most likely when the circumstances of the 22 case permit an inference that the owner of the mark has timed the request for injunctive relief so as 23 to inhibit competition." Gidatex S.r.L.v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417 24 (S.D.N.¥. 1996). This is precisely what occurred here, as reflected in Mr. Okamoto's Declaration 25 and the fact that Plaintiff timed the suit to coincide with BioRx's planned sponsorship and 26 participation at the San Diego Oley conference in June, 2008. 27 28
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1 2

(b) Improper Use of a Trademark Even if Plaintiff were to succeed in proving infringement and overcome its inexcusable

3 delay, Plaintiff is not likely to succeed on the merits because of its improper use of a trademark.~ 4 By Plaintiff's own admission, Plaintiff enjoyed a monopoly on in-home TPN services prior to the 5 entry of NutriThrive in the market. (Okamoto Decl. (Doe. 7), ¶¶ 16, 21). Plaintiff asks this Court 6 to prohibit BioRx (and presumably any other party) from using the "nutri" prefix in connection 7 with nutrition products. Plaintiff's requests and admissions leave no doubt that Plaintiff is 8 attempting to maintain its monopoly by prohibiting use of the "nutri" term in connection with total 9 parenteral nutrition products. This use is improper. As one court has stated: 10 11 12 [t]he trademark may become a detrimental weapon if it isused to serve a harmful or injurious purpose. If it becomes a tool to circumvent free enterprise and unbridled competition, public policy dictates that the rights enjoyed by its ownership be kept within their proper bounds.

13 United States v. Tirnken Roller Bearing Co., 83 F. Supp. 284 (N.D. Ohio 1949). Here, Plaintiff's 14 attempt to monopolize use of a very likely generic term for nutrition products constitutes improper 15 use of a trademark, and further inhibits Plaintiff's ability to succeed on the merits. 16 17 C. Plaintiff Will Not Suffer Irreparable Harm Plaintiff contends that it is entitled to a presumption of irreparable harm. It then proceeds

18 to malign BioRx's products and services and goes so far as to suggest - without any basis 19 whatsoever - that BioRx is posing a risk to the health and safety of consumers. (Pltfs Ps & As 20 (Doe. 6-1), p. 19). The Court should pause to inquire why, if BioRx is so prone to "failings," is 21 Plaintiff seeking the Court's protection to maintain its monopoly and to prevent BioRx from 22 profiting from its NutriThrive products and services? The answer is that BioRx has already 23 generated its own goodwill and, as Plaintiff concedes, has started to ~aake inroads into Plaintiff's 24 monopolized market share. (Okamoto Decl. (Doe. 7), ¶¶ 16, 21). Plaintiff even suggests that 25 BioRx should be enjoined from providing enteral care and other infusion products and services 26 despite Plaintiff's earlier acknowledgement that it provides exclusively TPN products and does 27 not compete with BioRx in these other areas. 28
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1

Plaintiff simply has failed to make a showing that it will suffer irreparable harm in the

2 absence of the sweeping injunction that it seeks. If there is any validity to Plaintiff's contention 3 that BioRx is unlawfully eroding its market share, Plaintiff's losses are capable of being redressed 4 though an award of the profits that Plaintiff proves it has lost as a result of any wrongdoing on the 5 part of BioRx. 6
Perhaps the most compelling reason that Plaintiff's motion should be denied, however, is

7 the lengthy delay between Plaintiff's discovery of the operative facts forming the basis for its 8 alleged claims and its commencement of this action. Plaintiff admits - and it could not possibly 9 deny - that it learned no later than June, 2007 of BioRx's intention to launch a TPN service known lO as NutriThrive. Yet, Plaintiff raised no complaint or even a suggestion that this name was 11 confusing or improper. Plaintiff then attended numerous exhibitions between June, 2007 and 12 June, 2008 where BioRx advertised and promoted its NutriThrive service. Again, Plaintiff took no 13 action. Plaintiff failed to raise any objection with the Patent and Trademark Office when BioRx 14 applied for trademark registrations in July, 2007 and when those applications were published in
15 January, 2008. 16 In sum, Plaintiff sat back for a full year and knowingly allowed BioRx to spend over

17 $500,000 in the development of NutriThrive, in its promotion of it, and in actually committing to 18 provide the service to numerous customers. Having laid in the weeds for so long while raising not 19 the slightest hint of an objection, Plaintiff is estopped from now asserting that it is being 20 irreparably harmed by BioRx's use of the NutriThrive mark. See, e.g. Calmar, Inc. v. Emson 21 Research, Inc., 838 F.Supp. 453,456 (C.D. Cal. 1993) (significant delay in applying for injunctive 22 relief tends to undercut an assertion of irreparable harm and can justify denial of preliminary 23 injunctive relief); Oakland Tribune, Inc. v. Chronicle Publishing Co., 762 F.2d 1374, 1377 (9th 24 Cir. 1985) (plaintiff's long delay before seeking a preliminary injunction implies a lack of urgency 25 and irreparable harm); Broadeom Corp. v. Qualeomm Inc., 2005 WL 5925584, 6 (9th Cir. Oct. 19, 26 2005) (request for injunctive relief is barred by laches where moving party lacked diligence in 27 pursuing claim and opposing party incurred prejudice).1 28
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This Court's own local rules authorize the Court to deny injunctive relief based upon laches
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1

Further, as McCarthy has noted, most courts will deny a motion for a preliminary

2 injunction if more than a year has passed. McCarthy, supra at §31:31. One study of federal 3 circuit courts of appeal suggested that any ~elay of greater than six months brought a "significant

4 risk" that preliminary injunctive relief would be denied. Id. The theory behind such holdings is 5 that delay directly correlates to a lack of irreparable harm. As the Second Circuit has held, a delay 6 "tends to neutralize any presumption that infringement alone will cause irreparable harm pending 7 trial." Citibank, N.A.v. Citytrust, 756 F.2d 273 (2d Cir 1985). Here, Plaintiff's delay, and its 8 many opportunities to object to BioRx's use of NutriThrive, neutralizes any claim of irreparable 9 harm. 10 The record and the evidence are clearly sufficient to overcome any presumption of

11 irreparable harm to which Plaintiff claims that it is entitled. 12 13 D. A Balance of the Hardships Clearly Favors BioRx While the harm to Plaintiff in denying the motion for preliminary injunction would be

14 minimal, aninjunction would be devastating and cause irreparable harm to BioRx. An injunction 15 would accomplish exactly what Plaintiff set out to do, which is to eliminate NutriThrive as a 16 legitimate competitor and reinforce Plaintiff's monopoly power. BioRx would be required to shut 17 down NutriThrive, to shut down the www.nutrithrive website, to terminate the employment of 18 seven employees and one independent contractor who are dedicated to NutriThrive, and to cease 19 providing its products and services to the enteral and TPN patients who have come to rely upon it. 20 The devastating impact of granting the requested injunction at this late stage further highlights the 21 inequitable nature of Plaintiff's conduct in failing to raise an objection to the NutriThrive name 22 much sooner, despite having numerous opportunities to do so. 23 In addition to the impacts upon BioRx's employees and patients, an injunction would have

24 a tremendous economic impact upon BioRx. The company has spent more than $500,000 to date 25 in developing and promoting NutriThrive, all with the knowledge of Plaintiff. Moreover, 26 NutriThrive is still in its relative infancy, and it would ~be extremely difficult at trial for BioRx to 27 28
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where a delay in seeking injunctive relief contradicts the applicant's allegations of irreparable injury. (See L.R. Rule 65-231.(b)).
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1 prove with the requisite certainty the profits that it will have lost if it prevails on the merits of 2 Plaintiff's claims, such that injunctive relief should not have been granted. Further, BioRx would 3 be faced with the task of getting NutriThrive and its enteral and TPN therapies re-established in 4 the marketplace, and would have to overcome the damage to its goodwill done by Plaintiff;s 5 wrongful actions in bringing this action. 6 7

In summary, a balance of the hardships shows that BioRx would be irreparably injured if the Court were to grant the requested injunctive relief, while Plaintiff will incur little or no harm if

8 the injunction is not granted. For this reason, the injunction should be denied. 9 10

E. The Public Interest Would be Harmed if an. Injunction is Granted As discussed above, the requested injunction would be harmful to the enteral and TPN

11 patients who currently use NutriThrive products and services and have come to rely upon them. 12 These patients could face a life-threatening situation if they are abruptly forced to search for 13 alternative therapies. It would be nearly impossible to prevent physicians from writing 14 NutriThrive prescriptions for their patients, under the mistaken assumption that they will be able

15 to o~tain NutriThrive as they have come to expect and as BioRx has represented to them. 16 In addition, the requested injunction would significantly eliminate competition and the

17 choices available to healthcare providers who prescribe enteral and TPN therapies for their 18 patients. Plaintiff admits in the declarations filed in this case that it enjoyed a monopoly in the in19 home TPN market prior to the entry of NutriThrive into the marketplace. An injunction would 20 return the market to this anticompetitive state of affairs and would significantly harm competition 21 and the public interest. 22 Contrary to Plaintiff's unsubstantiated allegation, there is no reason to believe that "dire"

23 consequences could result from the use of NutriThrive instead of Nutrishare. The Court should 24 not be misled into believing that NutriThrive is somehow a dangerous or unproven product. 25 NutriThrive is an accredited product and its effectiveness and safety are not in question. 26 V. 27 CONCLUSION For all of the foregoing reasons, Defendant, BioRx respectfully requests that this Court

28 deny Plaintiff's motion for a preliminary injunction in all respects. In the event that the Court is
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1 inclined to grant Plaintiff's motion in any part, then BioRx requests that Plaintiffpost a bond in 2 the amount of $10 million in light of the substantial harm that BioRx will incur as a result of 3 compliance with such an order. Given the detailed briefing and the exhibits presented, BioRx 4 does not request nor require oral testimony at the hearing, and anticipates the time necessary for 5 oral argument to be no more than fifteen minutes. 6 7 Dated: August 4, 2008 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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ALLEN MATKINS LECK GAMBLE MALLORY & NATSIS LLP
By:

s/Amy Wintersheimer Findley AMY WINTERSHEIMER FINDLEY MICHAEL R. ADELE CHARLENE J. WILSON Attorneys for.Defendant BIORX, LLC

702239.01/SD

-21DEFENDANT'S OPPOSITION TO MOTION FOR PRELIMINARY INJUNCTION

Case 3:08-cv-01493-JM-BLM

Document 41-2

Filed 08/04/2008

Page 1 of 2

l AMY W1NTERSHEIMER FINDLEY 0~AR NO. 163074) MICHAEL R. ADELE (BAR NO. 138339) CHARLENE J. WILSON (BAR NO, 222497) . ALLEN MATKINS LECK GAMBLE MALLORY & NATSIS LLP 501 West Broadway, 15th Floor 4 San Diego, California 92101-3541 Phon¢: (619) 233-1155 5 Fax: (619) 233-1158 E-Mail: awintemheimer(~allenmatkinsocom madele~all~nnatkins, corn [email protected] Attorneys 'for D~fendant BzoRx, ULC UNITED STATES DISTRICT COURT
EASTERN D~ST~CT OF CALIFOR2qlA

II |2 13
V.

NUTRISHAI~E, INC., a C'~tbmla corporatmn, Case No. 2:08-cv-01252-WBS-EFB Plaintiff, Complaint filed June 4, 2008 DECLARATION OF TIMOTHY FENSKY IN OPPOSITION TO PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION DATE: TIME: CRTRM: JUDGE: August 18, 2008 2:00 P,M, Hon. William B. Shubb

BIoRX, LLC, an Ohio Limited Liability Company, Defendant.

1, Timothy Fensky, hereby declaro: I. Massachus~ts. 2. I have reviewed statements in a Declaration from Rodney Okamoto of Nutrishare, I am the Director of Pharmacy Operations for Sul!ivan's Pharmacy in Boston,

Inc. in which he attn~butes to me the state, ment that thr names '~utrlshm-e" mud "NutriThrive" could cause confusion. I have also reviewed a filing by Nutrishare in which it states that the "owner" of Sullivan's Pharmacy reported that the names would cause confusion.

DECLARATION OF TIMOTHY FENSKY ]N SUPPORT OF DF~ENDANT'S MOTION

Case 3:08-cv-01493-JM-BLM

Document 41-2

Filed 08/04/2008

Page 2 of 2

I do recall m~t~g with Mr, Okamoto and Iris associates earH~ this year. Prior to

the meeting, 8ullivan's already had an e~tablished business relationship with BioRx and iN utriThrive. I had never heard of Nutrishare before~ and Sultiva~-a's has no track reeo,~! or relationship with Nutris "1~. I was not ~onfused by Bi0Rx's use of the name NutriThrive. 4. I am confident that the "owner" of Sullivan's did not meet wit