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Grey Matter Medical Products, LLC v. Schreiner Group Limited Partnership

United States District Court, W.D. Washington, Tacoma

January 7, 2015



BENJAMIN H. SETTLE, District Judge.

This matter comes before the Court on Defendants Schreiner Group GMBH & Co. KG and Schreiner Group Limited Partnership's (collectively "Schreiner") motion for summary judgment (Dkt. 56). The Court has considered the pleadings filed in support of and in opposition to the motion and the remainder of the file and hereby denies the motion for the reasons stated herein.


On October 1, 2013, Grey Matter filed a complaint against Schreiner for trademark infringement, unfair competition, and declaratory judgment. Dkt. 1. On November 18, 2013, Schreiner answered and asserted counterclaims for cancelation of trademark registrations, trademark infringement, and declaratory judgment. Dkt. 14.

On November 5, 2014, Schreiner moved for summary judgment on Grey Matter's claims arguing that Grey Matter has not used its mark in commerce, Grey Matter has abandoned its mark, and Grey Matter has no trademark to enforce under state law. Dkt. 56. On December 1, 2014, Grey Matter responded. Dkt. 57. On December 5, 2014, Schreiner replied. Dkt. 62. On December 10, 2014, Grey Matter filed a surreply. Dkt. 64.[1]


A founding member of Grey Matter, Cory Dobak, declares that he and his business partners "invented and developed the NeedleTrap device because hundreds of thousands of healthcare workers each year continued to be hurt due to accidental needle injuries." Dkt. 28, Declaration of Cory Dobak, ¶ 3. Mr. Dobak claims that the first use of the device was in August of 2005 when he transported the device from Oregon to a Spokane, Washington hospital. Id., ¶ 5. In February of 2007, Gray Matter sent a request for information to the Food and Drug Administration ("FDA") concerning the NeedleTrap device. Dkt. 56, Exh A. On March 13, 2007, the FDA responded expressing its opinion on the regulatory requirements for the device. Id.

In August 2008, Grey Matter filed an application for the trademark "NeedleTrap." Dkt. 25, Exh. A. The United States Patent and Trademark Office ("USPTO") registered the trademark on March 17, 2009, stating that the mark was for a "needle management system, namely, a one handed needle recapper for medical use" with a date of first use in commerce of January 1, 2006. Id.

In December 2012, Schreiner sought registration for the mark "Needle-Trap. Dkt. 27, Declaration of Mark P. Walters, Exh. B. In March 2013, the USPTO denied the application in light of Grey Matter's mark. Id., Exh. C. Schreiner filed a petition to cancel Grey Matter's mark, which is stayed pending determination of this litigation. Id., Exh. D.


A. Summary Judgment Standard

Summary judgment is proper only if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The moving party is entitled to judgment as a matter of law when the nonmoving party fails to make a sufficient showing on an essential element of a claim in the case on which the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must present specific, significant probative evidence, not simply "some metaphysical doubt"). See also Fed.R.Civ.P. 56(e). Conversely, a genuine dispute over a material fact exists if there is sufficient evidence supporting the claimed factual dispute, requiring a judge or jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987).

The determination of the existence of a material fact is often a close question. The Court must consider the substantive evidentiary burden that the nonmoving party must meet at trial - e.g., a preponderance of the evidence in most civil cases. Anderson, 477 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual issues of controversy in favor of the nonmoving party only when the facts specifically attested by that party contradict facts specifically attested by the moving party. The nonmoving party may not merely state that it will discredit the moving party's evidence at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. Elec. Serv., Inc., 809 F.2d at 630 (relying on ...

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