Case: 5:21-cv-02141-BYP Doc #: 1 Filed: 11/10/21 1 of 10. PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`Case No.
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`Judge:
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`TALIS BIOMEDICAL CORPORATION,
` 230 Constitution Drive,
` Menlo Park, California 94025,
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`Plaintiff,
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`v.
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`TALIS CLINICAL, LLC,
` 650 Mondial Parkway,
` Streetsboro, Ohio 44241,
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`Defendant.
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`COMPLAINT
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`Plaintiff Talis Biomedical Corporation (“Plaintiff”), by its undersigned attorneys, Cooley
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`LLP and Thompson Hine LLP, for its Complaint against Defendant Talis Clinical, LLC
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`(“Defendant”) allege as follows:
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`THE PARTIES
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`1.
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`Plaintiff is a corporation organized and existing under the laws of Delaware, having
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`its principal place of business at 230 Constitution Drive, Menlo Park, California 94025.
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`2.
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`Defendant is a limited liability company organized under the laws of Delaware. On
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`information and belief Defendant’s principal place of business is located at 650 Mondial Parkway,
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`Streetsboro, Ohio 44241.
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`JURISDICTION AND VENUE
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`3.
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`This Court has jurisdiction over this matter pursuant to Section 21(b) of the U.S.
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`Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C. § 1071(b), which permits a
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`party to challenge a final decision of the Trademark Trial and Appeal Board (“TTAB”) of the
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`United States Patent and Trademark Office (“USPTO”) by filing a Federal District Court action.
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`This Court also has subject matter jurisdiction pursuant to 28 U.S.C. § 1331.
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`4.
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`Plaintiff is informed and believes, and on that basis alleges, that this Court has
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`personal jurisdiction over Defendant because Defendant has its principal place of business in the
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`State of Ohio and within this judicial district, and thus resides in this district. In addition,
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`Defendant has undertaken acts within the State of Ohio and this judicial district that give rise to
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`this action, namely, initiation and litigation of Opposition No. 91245179 (the “Opposition”).
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`5.
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`Venue is proper in this district under 18 U.S.C. § 1391(b) because Defendant
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`resides in this district and regularly conducts business in this district, and a substantial portion of
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`the activities giving rise to this action occurred in this district.
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`FACTUAL BACKGROUND
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`PLAINTIFF AND ITS TALIS TRADEMARK
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`6.
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`Plaintiff is a biomedical company that is developing medical diagnostic instruments
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`for the detection, identification, and assessment of infectious diseases and medical analysis
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`services related thereto.
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`7.
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`Plaintiff was originally named SlipChip Corporation and changed its name to Talis
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`Biomedical, Inc. on or about February 22, 2018. Plaintiff then changed its name from Talis
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`Biomedical, Inc. to Talis Biomedical Corporation on or about February 26, 2018. Plaintiff also
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`obtained the domain name talis.bio on or about February 14, 2018 and published its website under
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`the TALIS trademark shortly thereafter. Plaintiff’s current website located at talisbio.com
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`provides information about its ongoing activities in the field of infectious disease testing.
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`8.
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`In order to protect its TALIS trademark Plaintiff filed applications to register the
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`mark with the USPTO. One of those applications was assigned U.S. Trademark Application Serial
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`No. 87/879,083 (the “’083 Application”). The ’083 Application was filed April 16, 2018 for the
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`TALIS trademark in connection with “[m]edical analysis services in the nature of analyzing
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`clinical data for purposes of providing medical diagnostic information and for guiding patient
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`treatment for overall population health and improved patient outcomes” in Class 44.
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`9.
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`Plaintiff’s services are, by their nature, necessarily targeted to highly sophisticated
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`consumers in the medical field, namely, medical institutions and medical professionals concerned
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`with overall population health and improved patient outcomes.
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`10.
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`Given the nature of Plaintiff’s services, actual and prospective consumers of
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`Plaintiff’s offerings necessarily engage in the utmost care when making decisions to acquire
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`Plaintiff’s services.
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`DEFENDANT AND ITS PUTATIVE TRADEMARK RIGHTS
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`11.
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`On information and belief, Defendant’s predecessor company, RLH Enterprises
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`was formed in 2009 as an initiative to build a medical record documentation system to support
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`anesthesia care.
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`12.
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`On information and belief, Defendant registered in Delaware as Talis Clinical, LLC
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`on November 28, 2012.
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`13.
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`On information and belief, Defendant claims that its offerings evolved from
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`documenting complex anesthesia workflows to selling software for organizing and analyzing
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`patient data and services related thereto. On information and belief, Defendant further alleges that
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`it began using the TALIS mark in connection with such offerings prior to Plaintiff’s filing of the
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`‘083 Application.
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`14.
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`On information and belief, to the extent that Defendant has sold software for
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`organizing and analyzing patient data prior to the filing of the ’083 Application, Defendant’s
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`offerings were targeted to institutions making large capital equipment purchases for hospital
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`information technology (IT) departments.
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`15.
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`On information and belief, to the extent that Defendant used the term “TALIS” in
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`connection with its software and related services it did so as an element of the following stylized
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`composite trademark TALIS CLINICAL LLC in combination with a distinctive design (the
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`“TALIS CLINICAL LLC & Design” mark):
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`USPTO PROCEEDINGS AND HISTORY
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`16.
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`On September 19, 2018, the USPTO issued a Notice of Publication for the ‘083
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`Application stating that after the examining process, “[t]he mark of the application identified
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`appears to be entitled to registration.”
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`17.
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`On October 9, 2018 the ‘083 Application was published for opposition in the
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`USPTO Official Gazette.
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`18.
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`On November 5, 2018, Defendant submitted a request to the TTAB for a 30-day
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`extension of time to oppose the ‘083 Application, which was granted. Defendant filed the
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`Opposition and opposed the ‘083 Application on December 7, 2018.
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`19.
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`Defendant’s grounds for opposing were that Defendant allegedly owned prior
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`unregistered common law trademark rights in the trademark TALIS in connection with medical
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`software and services, and that Plaintiff’s use and registration of TALIS in connection with the
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`medical services covered by the ’083 Application was likely to cause consumer confusion with
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`Defendant’s purported TALIS mark.
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`20.
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`On September 8, 2021, the TTAB panel sustained the Opposition on the grounds
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`that Plaintiff’s TALIS mark for the services in the ‘083 Application was likely to cause consumer
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`confusion with Defendant’s “prior common law rights in a TALIS mark for software.”
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`21.
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`The TTAB’s misguided conclusion was based primarily on the testimony of Mr.
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`William Murphy, Vice President in regulatory and quality for Talis Clinical, LLC, who testified
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`that Defendant was using the term TALIS with its software as early as 2015.
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`22.
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`However, documentary evidence of record in the Opposition did not credibly
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`support Mr. Murphy’s testimony nor the TTAB’s conclusion. Defendant’s purported “specimens”
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`of use were acknowledged by Mr. Murphy in his cross-examination to be merely Defendant’s
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`internal screenshots created before Defendant had any actual customer accounts, and a “sales and
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`service” contract Defendant offered as further evidence of use of the TALIS trademark in United
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`States commerce did not actually mention the TALIS trademark anywhere on its face, but instead
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`referred to a different product name that did not include the term TALIS.
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`23.
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`Even if Mr. Murphy’s testimony about how the company used the TALIS mark at
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`various times were deemed credible, the TTAB drew unwarranted and unsupportable factual
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`inferences from the testimony. For example, the TTAB cited to Mr. Murphy’s August 26, 2020
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`testimony and characterization of what goods and services Defendant offered in response to a
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`question where he was asked specifically “what goods do you sell under the Talis trademark
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`today?” (see Opposition, 42 TTABVUE 23, citing 27 TTABVUE 25-26 (Murphy dep. 21:23-22:5
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`and id. at 26 (22:10-15))). The TTAB improperly cited this testimony about use of the mark on
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`August 26, 2020 as the basis for its factual conclusions about the scope of Defendant’s “prior use
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`on software,” notwithstanding the fact that “prior use” in this context necessarily means use prior
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`to Plaintiff’s April 16, 2018 filing of its trademark application (and use prior to any other priority
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`date that Plaintiff could establish by its actual trademark use or use analogous to trademark use).
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`In other words, the TTAB erred by citing to testimony about activity in late 2020 as the basis for
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`its findings about common law trademark rights that purportedly existed in early 2018.
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`24.
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`Indeed, the TTAB ignored Mr. Murphy’s testimony where he agreed that the
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`company was not selling any products or services under the Talis name at the time it was
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`incorporated (21:7-16), and the TTAB ignored Mr. Murphy’s testimony that Defendant’s offerings
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`started in anesthesia before expanding to other offerings (23:18-21).
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`25.
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`In reaching its conclusion that Defendant established prior rights in TALIS, the
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`TTAB panel erroneously dissected Defendant’s alleged use of TALIS CLINICAL LLC & Design.
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`To the extent the “specimens” provided by Defendant could be construed as hypothetical examples
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`of how the mark might have been used, the mark actually shown was the TALIS CLINICAL LLC
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`& Design mark—not TALIS by itself.
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`26.
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`Even accepting arguendo that Defendant could have established prior rights in
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`TALIS, the TTAB panel’s findings reflect errors in the likelihood of confusion analysis. Without
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`admitting that Defendant has prior common law trademark rights, Plaintiff submits that the
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`following are among the factors that indicate arguendo that confusion between the marks would
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`not be likely:
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`a. Dissimilarity of the marks in their entireties as to appearance, sound,
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`connotation, and commercial impression. When viewing the marks in their
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`entirety, there are notable elements in Defendant’s mark that do not appear in
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`Plaintiff’s mark, namely the prominent design and terms “CLINICAL LLC.”
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`Properly viewed as a whole, the marks are distinguishable and confusion between
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`the two is not likely.
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`b. The Services are dissimilar. The services in Plaintiff’s trademark application are
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`“medical analysis services in the nature of analyzing clinical data for purposes of
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`providing medical diagnostic information and for guiding patient treatment for
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`overall population health and improved patient outcomes” in Class 44. Contrary to
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`Mr. Murphy’s self-serving characterization in his testimony regarding Defendant’s
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`services, as of April 2018 (i.e., the relevant time in relation to any claim Defendant
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`may make regarding prior trademark rights that would be based on trademark use
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`prior to Plaintiff’s trademark application date), Defendant’s website indicated
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`that they were “The Perioperative Surgical Home” and that they were focused on
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`“Advanced Clinical Guidance
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`to support patient-centered perioperative
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`care” at that
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`time.
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` Defendant’s homepage specifically promoted “The
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`Evolution of Anesthesia
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`Information Management
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`Systems.”
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`See
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`https://web.archive.org/web/20180420211940/http://www.talisclinical.com/.
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`Plaintiff’s services do not overlap with perioperative surgical solutions nor
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`anesthesia information management systems, nor do Plaintiff’s services overlap
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`with any other medical records and IT services that are within the natural zone of
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`expansion of those services.
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`c. The Parties’ Customers are Sophisticated Purchasers. Healthcare professionals
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`and healthcare organizations are sophisticated purchasers. Mr. Murphy testified
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`that “large organizations make the business decision to purchase [Defendant’s]
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`product.” To the extent that Defendant is marketing to senior management in
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`hospitals and institutional purchasers, the prolonged purchasing process would
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`make the source of services clear and mitigate confusion.
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`d. Defendant’s mark is not famous. The lack of fame or marketplace strength in
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`Defendant’s mark mitigates confusion.
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`27.
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`For at least the foregoing reasons, even if Defendant has prior common law
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`trademark rights that predate Plaintiff’s trademark rights and Plaintiff’s trademark application
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`date, confusion among the relevant consumers would not be likely.
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`CLAIM FOR RELIEF
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`Appeal From Decision Of The Trademark Trial And Appeal Board
`Pursuant To 15 U.S.C. § 1071(b)
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`28.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 27, inclusive,
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`as if fully set forth herein.
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`29.
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`Plaintiff appeals the erroneous September 8, 2021 decision of the TTAB in the
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`matter of Talis Clinical, LLC v. Talis Biomedical Corporation, Opposition No. 91245179.
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`30.
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`The September 8, 2021 TTAB decision is a final decision subject to review under
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`Section 21 of the Lanham Act, 15 U.S.C. § 1071.
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`31.
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`The TTAB’s determination of Defendant’s scope of common law trademark rights
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`was not supported by the record.
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`32.
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`The TTAB’s determination of a likelihood of confusion between the parties’
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`respective marks was not supported by the record.
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`33.
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`The TTAB panel’s conclusions of law are incorrect and its findings of fact in its
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`September 8, 2021 decision are not supported by substantial evidence to warrant sustaining the
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`opposition and refusal of the ’083 Application.
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`34.
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`Defendant has not appealed the September 8, 2021 decision to the United States
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`Court of Appeals for the Federal Circuit.
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`35.
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`Plaintiff seeks a de novo review and reversal of the TTAB’s September 8, 2021
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`decision by civil action under 15 U.S.C. § 1071.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully prays that this Court enter judgment:
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`A.
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`Reversing the September 8, 2021 decision of the TTAB in the matter of Talis
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`Clinical, LLC v. Talis Biomedical Corporation, Opposition No. 91245179 referenced
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`herein, and dismissing the opposition with prejudice, pursuant to 15 U.S.C. § 1071(b);
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`B.
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`Adjudging that Plaintiff is entitled to register the ‘083 Application on the Principal
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`Register;
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`C.
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`Ordering the USPTO to issue a Notice of Allowance for the ‘083 Application
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`pursuant to 15 U.S.C. § 1063(b)(2); and
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`D.
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`An award to Plaintiff of such further relief at law or in equity as the Court deems
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`just and proper.
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`Dated: November 10, 2021
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`/s/ Kip T. Bollin
`Kip T. Bollin (#0065275)
`Kip.Bollin@thompsonhine.com
`Jada M. Colon (#0099048)
`Jada.Colon@thompsonhine.com
`THOMPSON HINE LLP
`3900 Key Center
`127 Public Square
`Cleveland, Ohio 44114-1291
`Phone: (216) 566-5500
`Fax: (216) 566-5800
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`Case: 5:21-cv-02141-BYP Doc #: 1 Filed: 11/10/21 10 of 10. PageID #: 10
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`OF COUNSEL:
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`John Paul Oleksiuk (pro hac vice forthcoming)
`jpa@cooley.com
`Colette Ghazarian (pro hac vice forthcoming)
`cghazarian@cooley.com
`COOLEY LLP
`1333 2nd Street, Suite 400
`Santa Monica, CA 90401
`Phone: (310) 883-6400
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`Judd D. Lauter (pro hac vice forthcoming)
`jlauter@cooley.com
`COOLEY LLP
`55 Hudson Yards
`New York, NY 10001
`Phone: (212) 479-6000
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`Attorneys for Plaintiff Talis Biomedical
`Corporation
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