2009 WL 1890128 (E.D.Pa.) Page 1

For Dockets See 2:09cv01955

United States District Court, E.D. Pennsylvania.DRUMMOND SCIENTIFIC COMPANY, Plaintiff,

v.GILSON, INC., Defendant.

No. 09CV01955.May 7, 2009.

Plaintiff's Memorandum of Law in Support of Motion for Preliminary Injunction

Respectfully submitted, Joseph M. Konieczny, P.C., /s/ Joseph M. Konieczny, Sr. (Pa. 59,724), Meetinghouse Business Cen-ter, 2260 Butler Pike, Suite 100, Plymouth Meeting, PA 19462, Telephone: 610-940-1962, Facsimile: 610-940-1963, jkonieczny@jmkpc.com, Attorneys for Drummond Scientific Company.

Plaintiff, Drummond Scientific Company, respectfully submits this memorandum of law in support of its Motion for Prelimi-nary Injunction pursuant to Fed. R.Civ.P. 65 and 15 U.S.C. section 1116.

TABLE OF CONTENTS

TABLE OF AUTHORITIES ... iii

I. INTRODUCTION ... 1

II. STATEMENT OF FACTS ... 1

A. Background of Plaintiff Drummond Scientific Company ... 1

B. Drummond Scientific's Famous Trademark PIPET-AID ... 2

C. Defendant's Infringing Activities ... 4

III. THE LEGAL STANDARD FOR PRELIMINARY INJUNCTIVE RELIEF IN TRADEMARK CASES ... 6

A. Drummond Scientific Is Likely To Succeed On The Merits of Its Counts For Federal Statutory Trademark Infringement and False Designation of Origin, and Common Law Trademark Infringement ... 7

1. The ‘459 Registration Is Incontestable, Prima Facie Evidence of Drummond Scientific's Ownership, and Prima Facie Evi-dence of Drummond Scientific's Exclusive Right to Use the Mark PIPET-AID in Connection With Pipet Guns ... 8

2. Defendant's Use of the Marks PIPETTING AID and/or GILSON PIPETTING AID and/or Terms “Pipet-Aid”, “Pipet Aid”, and/or “Pipetting Aid” Creates Confusion as to the Source or Sponsorship of Its Pipet Guns ... 9

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a. Factor 1 - Similarity of the Marks ... 10

b. Factor 2 - The Mark PIPET-AID Is Strong and Entitled to Broad Protection Since It Is Inherently Distinctive ... 14

c. Factor 3 - Pipet Guns Are Inexpensive and Purchasers Are Not Likely to Carefully Investigate the Source of Such Goods ... 16

d. Factor 4 - Defendant's Use of Its Infringing Trademarks Began Only Recently ... 17

e. Factor 5 - Defendant Intended to Divert Business from Drummond Scientific ... 18

f. Factor 6 - Drummond Scientific Can Establish Initial Interest Confusion ... 19

g. Factors 7 and 8 - Drummond Scientific and Defendant Market Their Goods Through the Same Trade Channels and Target the Exact Same Customers ... 20

h. Factor 9 - Drummond Scientific's and Defendant's Goods Are Unique and Therefore Associated Together in the Minds of the Public ... 20

i. Non-exclusive Factors Which Lead to the Conclusion That Defendant's Acts Create A Likelihood of Confusion ... 21

B. Drummond Scientific Will Suffer Irreparable Harm Unless Defendant's Use of the Term “Pipetting Aid”, and Use of The Marks PIPETTING AID and GILSON PIPETTING AID Are Enjoined ... 22

C. The Balancing of Equities Favors Injunctive Relief Where Defendant is Infringing Drummond Scientific's Trademark ... 24

1. Defendant's Intentionally Adopted Marks That Are Confusingly Similar to Drummond Scientific's Mark PIPET-AID ... 24

2. Drummond Scientific Seeks Only Limited Equitable Relief ... 25

3. Potential Injury to Defendant Is Subservient to Protection of the Public Interest and the Trademark Rights of Drummond Scientific ... 25

D. The Public Interest Favors Injunctive Relief Where Defendant Are Infringing the Mark PIPET-AID ... 26

1. Protecting Public Safety Serves the Public Interest ... 26

2. Protecting Consumer Confusion Serves the Public Interest ... 26

IV. Conclusion ... 27

TABLE OF AUTHORITIES

Cases

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A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3d Cir. 2000) ... 7, 9, 10, 11, 13, 14, 18

American Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421 (3d Cir.1994) ... 27

AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ... 19

Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983) ... 25

Basic Fun, Inc. v. X-Concepts, LLC., 157 F.Supp. 2d 449 ( E.D.Pa. 2001) ... 22

Blumenfeld Development Corp. v. Carnival Cruise Lines, Inc., 669 F.Supp. 1297 (E.D. Pa. 1987) ... 7, 10, 12, 24

Checkpoint Sys. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001) ... 17, 18, 19, 20, 21

Jos. S. Cohen & Sons, Co., Inc. v. Hearst Magazines, Inc., 220 F.2d 763 (C.C.P.A.1955) ... 11

Dominion Bank Shares Corp. v. Devon Holding Company, Inc., 690 F.Supp. 338 (E.D. Pa. 1988) ... 13

Engineered Mech. Svs., Inc. v. Applied Mech. Tech., Inc., 584 F.Supp. 1149 (M.D.La. 1984) ... 11

First American Marketing Corp. v. Canella, 2004 WL 250537 (E.D.Pa. 2004) ... 7, 13

Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466 (3d Cir. 1994) ... 8, 9, 14, 18

Ford Motor Co. v. Summit Motor Prod., Inc., 930 F. 2d 277 (3d Cir. 1991) ... 17

The Gideons Int'l, Inc. v. Gideon 300 Ministries, Inc., 94 F.Supp.2d 566 (E.D.Pa. 1999) ... 7

Horizon Financial, FA. v. Horizon Bancorp., 2 U.S.P.Q.2d 1696 (E.D. Pa. 1987) ... 10, 23, 27

Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) ... 9, 10, 13, 22

Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.2d 700 (3d Cir. 2004) ... 6, 9, 10, 16, 17, 18, 20, 22, 24, 26

Lambert Pharm. Co. v. Listererated Co., 24 F.2d 122 (S.D.Texas 1928) ... 11

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578 (3d Cir. 2002) ... 24, 25

Opticians Assoc. of Am. v. Indep. Opticians of Am., 920 F.2d 187 (3d Cir.1990) ... 6, 7, 10, 13, 22, 23, 24, 26

Pappan Enter., Inc. v. Hardee's Food Sys., Inc., 143 F.3d 800 (3d Cir.1998) ... 22, 25

In re Rexel, Inc., 223 U.S.P.Q. 830 (T.T.A.B. 1984) ... 12

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SK&F Co., v. Premo Pharm. Lab., 625 F.2d 1055 (3d Cir. 1980) ... 26

Scott Fetzer Co. v. Gehring, 288 F.Supp.2d 696 (E.D.Pa. 2003) ... 7

S&R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371 (3d Cir. 1992) ... 6, 22, 24, 26

United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134 (3d Cir. 1981) ... 12, 24, 25

Statutes

15 U.S.C. § 1065 ... 8

15 U.S.C. § 1114 ... 22

15 U.S.C. § 1115 ... 8, 15

15 U.S.C. § 1116 ... 6

Other Authorities

Callman on Unfair Competition, Trademarks & Monopolies, §21:10 ... 16

3 J. McCarthy on Trademarks and Unfair Competition, §23:6 ... 19

3 J. McCarthy on Trademarks and Unfair Competition, §23:50 ... 12

I. INTRODUCTION

Drummond Scientific Company (“Drummond Scientific”) is a well-known and reputable manufacturer of scientific liquid handling equipment including pipet dispensers. Drummond Scientific also owns numerous patents and federal trademark reg-istrations for its products including Registration No. 1,074,459 for the mark PIPET-AID. Drummond Scientific recently dis -covered that Gilson, Inc. (“defendant”), a direct competitor of Drummond Scientific, is selling a competing pipet dispenser using trademarks that are confusingly similar to Drummond Scientific's incontestable, federally-registered trademark PIPET-AID. Drummond Scientific moves this court for an Order enjoining defendant from infringing and/or diluting Drummond Scientific's registered trademark PIPET-AID. Drummond Scientific has no adequate remedy at law.

II. STATEMENT OF FACTS

A. Background of Plaintiff Drummond Scientific Company

Drummond Scientific Company was established in 1948 by L. E. Drummond and his two sons R. J. Drummond and E. L. Drummond. Drummond decl., ¶2. Since 1948, Drummond Scientific has been in the business of designing, manufacturing and selling laboratory and scientific liquid handling equipment such as capillary tubes, centrifuge tubes, hematocrit tubing, laboratory syringes, pipet dispensers and pipet dispenser accessories. Id. Drummond Scientific's current products catalogue is attached hereto as exhibit 1. Id. Since 1948, Drummond Scientific has grown steadily and now has about 65 employees and annual sales in excess of 10 million dollars. Drummond decl., ¶3. Over the past 61 years, Drummond Scientific has devel -

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oped a reputation for designing, manufacturing and selling only the highest quality scientific liquid handling products. Id

In the early 1970's, Drummond Scientific designed and developed the first “pipet gun” type [FN1] of pipettor. Drummond decl. ¶4. On September 10, 1974, Drummond Scientific was awarded its first pipet gun patent, U.S. Patent No. 3,834,240 entitled Apparatus for Drawings Liquids Into, and Expelling Liquids from a Pipet or the Like. Id. Since the early 1970's, Drummond Scientific has steadily improved its pipet gun as evidenced by the numerous U.S. patents it has been awarded by the United States Patent & Trademark Office (U.S.P.T.O.). Drummond decl., ¶5. For example, Drummond Scientific is the owner of the following patents relating to pipet guns:

FN1. The term “pipet gun” is used to describe a particular type of hand-held liquid handling device used for drawing liquids into and expelling liquids from a pipet. The various types of said liquid handling device are generally known as “pipettors” or “pipet dispensers” in the laboratory equipment industry. In contrast with other types of “pipet dis-pensers”, the profile of a pipet gun resembles a hand gun with a receptacle on the end of the barrel for connection with the pipet. See, for example, ex. 2.

Issue Date Patent No. Title04/01/97 5,616,871 Pipet Gun Assembly03/15/94 5,294,405 Adjustable Valve for Pipette Gun06/01/93 5,214,968 Pipet Filling and Discharge Device02/25/92 5,090,255 Programmable Pipet Apparatus11/25/86 4,624,147 Pipet Gun for Drawing Liquid Into

and ExpellingIt From a Pipet

06/15/76 3,963,061 Apparatus for Drawing Liquids Into and ExpellingLiquids From a Pipette

12/14/76 D242,729 Automatic Pipette or the Like09/10/74 3,834,240 Apparatus for Drawing Liquids

Into and ExpellingLiquids From, a Pipette or the Like

A copy of the cover page and abstract of each of the above-listed patents is attached hereto as exhibit 2.

B. Drummond Scientific's Famous Trademark PIPET-AID

Since at least as early as October 25, 1974, Drummond Scientific has used the trademark PIPET-AID in commerce to adver -tise, promote and sell its pipet guns and accessories, and to identify and distinguish its goods from the goods of other compa -nies. Drummond decl., ¶6. On October 4, 1997, Drummond Scientific was awarded U.S. Trademark Registration No. 1,074,459 (“the ‘459 Registration”), which grants Drummond Scientific the exclusive right to use the mark PIPET-AID, or any confusingly similar mark (colorable imitation), in connection with “electrically driven push button milliliter pipet filler for drawing liquids into and expelling liquids from, pipets or the like” and in connection with related goods. The ‘459 Regis -tration covers the type of pipet guns sold by Drummond Scientific and defendant.

Since its introduction in 1974, Drummond Scientific has sold in excess of 15,000 units of its PIPET-AID pipet gun. Drum-mond decl., ¶7. Today, a significant percentage of Drummond Scientific's sales relates to pipet guns and pipet gun acces -

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sories sold under the mark PIPET-AID. Id. Drummond Scientific sells several different pipet gun models using a family of PIPET-AID marks including:1) PROGRAMMABLE PIPET-AID ELITE 4002) PORTABLE PIPET-AID XL3) PORTABLE PIPET-AID XP4) PIPET-AID HOODMATE5) THE ORIGINAL PORTABLE PIPET-AID6) THE ORIGINAL PIPET-AID

Id.; See ex. 1, pp. 2-8. Drummond Scientific also sells a filtration unit for use with its PIPET-AID guns using the PIPET-AID mark. Id.; See ex. 1, p. 9.

Drummond Scientific's PIPET-AID pipette guns are sold throughout the entire United States and in dozens of foreign coun-tries including Japan, Korea, Australia, Singapore, Canada, Italy, France, United Kingdom, Germany, Sweden, Denmark, Switzerland, and South Africa. Drummond decl., ¶8. Drummond Scientific advertises its PIPET-AID pipette guns at national and international trade shows, and in national and international trade journals. Id. Drummond Scientific sells its liquid han-dling products through most, if not all, national laboratory supply companies. Id. True and correct samples of Drummond Scientific's past national trade journal advertisements are shown in exhibit 4. Id. True and correct copies of samples of Drum-mond Scientific's past product catalogs are shown in exhibit 5. Id. True and correct copies of samples of Drummond Scien-tific's product listings in The VWR Catalog are shown in exhibit 6. Id.

For the past 35 years, Drummond Scientific has continuously used and heavily promoted and advertised the mark PIPET-AID to the scientific community and in the liquid handling equipment industry. Drummond decl., ¶7. Through Drummond Scientific's substantial marketing and advertising efforts, the mark PIPET-AID has become famous in the industry and recog-nized throughout the United States as a trademark of Drummond Scientific. Id. The mark PIPET-AID, and the extensive recognition and goodwill symbolized by the mark PIPET-AID, are extremely valuable assets of Drummond Scientific. Id. The mark PIPET-AID represents, among other things, Drummond Scientific's reputation as a producer of top quality scien-tific liquid handling equipment. Id.

C. Defendant's Infringing Activities

Recently, Drummond Scientific discovered that defendant is advertising, offering for sale, and selling in the United States a pipet gun using the marks PIPETTING AID and GILSON PIPETTING AID, instead of using its usual PIPETMAN family of marks that identify all of defendant's other pipettors in its pipettor line. Drummond decl., ¶10. Both of defendant's marks are colorable imitations of, and confusingly similar to, Drummond Scientific's famous trademark PIPET-AID. Id. For example, defendant is advertising and selling its pipet gun on its Internet Web sites, www.gilson.com, www.gilson1.com and www.pipetman.com using the marks PIPETTING AID and GILSON PIPETTING AID. Id. Screenshots of defendant's Inter-net Web sites are attached hereto as exhibits. 7-9. Id.

Defendant is also advertising and selling its pipet gun using the infringing marks through direct mail solicitations and general advertising brochures such as shown in exhibits 10 and 11. For example, the brochure of exhibit 11 was included as an out-sert to the April 2009 issue, vol. 23, no. 4 of “The Scientist”, an industry trade publication. Drummond decl., ¶10. The Scien -tist has a circulation of about 42,000. Id.

Defendant is also using the terms “pipet aid” and “pipetting aid” in the HTML code of its Web sites as a metatag or search-able text so that web portals, search engines and/or directories will direct Web traffic to defendant's Web sites. Drummond decl., ¶10. The associated HTML code from the screenshots of defendant's Web sites showing use of the marks and terms “pipet aid” and “pipetting aid” as a metatag or searchable text is also attached as exhibits 7-9. Id. Defendant's specific use of

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the terms “pipet aid” and “pipetting aid” in the attached HTML code is identified below:

“Pipetting Aid”

“Pipet Aid”

Line Page Exhibit Line Page Exhibit15 12 7 50 37 850 37 7 17 40 829-30 38 7 19 40 832 38 7 25-26 40 845 39 7 33 41 815 12 8

8 2 9

10 2 9

13-14 8 9

18-19 8 9

7-8 12 9

12 12 9

14 12 9

42 12 9

17 13 9

Defendant's use of the marks PIPETTING AID and GILSON PIPETTING AID and the terms “pipet aid” and “pipetting aid” in the searchable HTML code of its Web sites is intended to draw customer traffic away from Drummond Scientific's Web site www.drummondsci.com and to direct the traffic to defendant's Web sites.

In response to defendant's infringing and otherwise prohibited activities, Drummond Scientific now moves this court for a preliminary injunction enjoining defendant from using the terms “pipet-aid”, “pipet aid”, or “pipetting aid” as a trademark or a descriptive or generic term, and from infringing or diluting Drummond Scientific's registered mark PIPET-AID in any other way. Defendant's infringing activities are irreparably damaging Drummond Scientific's reputation and business.

III. THE LEGAL STANDARD FOR PRELIMINARY INJUNCTIVE RELIEF IN TRADEMARK CASES

Injunctive relief for trademark infringement is expressly authorized under Section 34 of the Lanham Act, which empowers the District Court to grant injunctive relief to prevent a violation of any right of the owner of a mark registered in the United States Patent and Trademark Office, or to prevent a violation of subsections (a), (c), or (d) of section 43 of the Lanham Act. 15 U.S.C. § 1116. A district court must consider the following four factors when ruling on a motion for a preliminary injunc-tion: (1) the likelihood that the movant will prevail on the merits at final hearing; (2) the extent to which the movant is being irreparably harmed by the conduct complained of; (3) the extent to which the non-moving party will suffer irreparable harm if the preliminary injunction is issued; and (4) the public interest. Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 708 (3d Cir. 2004); S&R Corp. v. Jiffy Lube Int'l, Inc., 968 F.2d 371, 374 (3d Cir. 1992) ; Opticians Assoc. of Am. v. Indep.

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Opticians of Am., 920 F.2d 187, 191-92 (3d Cir. 1990) . Drummond Scientific need only establish a “reasonable probability” of prevailing on any underlying claim in order to obtain injunctive relief. Opticians, 920 F.2d at 192 .

A. Drummond Scientific Is Likely To Succeed On The Merits of Its Counts For Federal Statutory Trademark Infringement and False Designation of Origin, and Common Law Trademark Infringement.

Drummond Scientific has pleaded separate counts for trademark infringement under Section 32 of the Lanham Act, false des-ignation of origin under Section 43(a) of the Lanham Act, and common law trademark infringement. In the Third Circuit, the standards for proving liability under either count are essentially the same.[FN2] See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000) ; First American Marketing Corp. v. Canella, 2004 WL 250537, *2-3 (E.D. Pa. 2004); Scott Fetzer Co. v. Gehring, 288 F.Supp. 2d 696, 703 (E.D. Pa. 2003) . In order for Drummond Scientific to prevail on its count either for trademark infringement under Section 32 of the Lanham Act, or false designation of origin under Section 43(a) of the Lanham Act, or for common law trademark infringement, Drummond Scientific must prove by a reasonable probability that: (1) Drummond Scientific's mark PIPET-AID is valid and legally protectable; (2) Drummond Scientific owns rights in the mark PIPET-AID; and, (3) defendant's use of the marks PIPETTING AID or GILSON PIPETTING AID or the terms “pipet-aid”, “pipet aid” or “pipetting aid” to identify its pipet guns is likely to cause confusion concerning the source or sponsorship of those goods. See id.; Opticians, 920 F.2d at 192; Blumenfeld Development Corp. v. Carnival Cruise Lines, Inc., 669 F. Supp. 1297, 1317 (E.D. Pa. 1987) .

FN2. Under Pennsylvania common law, the goods need not have traveled in interstate commerce. The Gideons Int'l, Inc. v. Gideon 300 Ministries, Inc., 94 F. Supp. 2d 566, 580 (E.D. Pa. 1999) .

1. The ‘459 Registration Is Incontestable, and Is Prima Facie Evidence of Drummond Scientific's Ownership and Prima Fa-cie Evidence of Drummond Scientific's Exclusive Right to Use the Mark PIPET-AID in Connection With Pipet Guns

The first two requirements of trademark infringement, ownership and validity, are proven where a mark is federally regis -tered and has become incontestable under the Lanham Act. Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3 rd Cir. 1994) . Drummond Scientific is the owner of the ‘459 Registration for the mark PIPET-AID, which was registered on October 4, 1977 on the Principal Register for use in connection with “electrically driven push button milliliter pipette filler for drawing liquids into and expelling liquids from, pipettes or the like.” Ex. 3. Drummond Scientific's pipet gun is one type of pipet filler recited in the ‘459 Registration. Under section 33 of the Lanham Act:Any registration ... of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and the registrant's exclusive right to use the registered mark in com-merce on or in connection with the goods or services specified in the registration subject to any conditions or limitations therein ....

15 U.S.C. § 1115(a)(emphasis added).

Drummond Scientific's exclusive right to use the mark PIPET-AID in connection with pipet guns is incontestable pursuant to section 15 of the Lanham Act which recites, in part:... the right of the registrant to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable ....

15 U.S.C. § 1065. Drummond timely filed a Section 15 affidavit of incontestability, which was acknowledged and accepted by the U.S.P.T.O. on August 29, 1983. Ex. 3. The official U.S.P.T.O. record of the ‘459 Registration indicates that all the re-quirements under Section 15 of the Lanham Act have been satisfied. Id. The ‘459 Registration was renewed in 2007 for an

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additional ten-year period. Id. This court may take judicial notice of this official public record. Therefore, Drummond Scien -tific's incontestable ‘459 Registration proves Drummond Scientific's ownership of valid and exclusive rights in the mark PIPET-AID in connection with pipet guns. See Fisons, 30 F.3d at 472 .

Having established ownership of exclusive rights in the mark PIPET-AID, Drummond Scientific must only prove that a like -lihood of confusion results from defendant's use of the mark GILSON PIPETTING AID and/or PIPETTING AID and/or the terms “pipet aid” or “pipetting aid” to prevail on its counts under the Lanham Act and at common law.

2. Defendant's Use of the Marks PIPETTING AID and/or GILSON PIPETTING AID and/or the Terms “Pipet Aid” and/or “Pipetting Aid” Creates Confusion as to the Source or Sponsorship of Its Pipet Guns

A likelihood of confusion exists when consumers viewing the mark would probably assume that the product or service it rep -resents is associated with the source of a different product or service identified by a similar mark. A&H Sportswear, 237 F.3d at 211 (internal quotations and citations omitted). The language of the Lanham Act is broad enough to cover “the use of trademarks which are likely to cause confusion, mistake, or deception of any kind, not merely of purchasers nor simply as to source of origin.” Kos, 369 F.3d at 711 (emphasis in original).

In the Third Circuit, the non-exclusive list of factors (commonly referred to as the Lapp [FN3] factors) that may be considered during a likelihood of confusion analysis for both competing and non-competing goods includes the following:

FN3. Interpace v. Lapp, 721 F.2d 460, 462 (3d Cir. 1983).

(1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a pur -chase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product the de -fendant market, or that he is likely to expand into that market.

A&H Sportswear, 237 F.3d at 213; Interpace v. Lapp, 721 F.2d at 460, 463 (3d Cir. 1983) . Any doubt as to whether a likeli-hood of confusion exists must be resolved in favor of the senior user. Blumenfeld, 669 F. Supp. at 1320 .

a. Factor 1 - Similarity of the Marks

The single most important factor in determining likelihood of confusion is similarity of the marks. A&H Sportswear, 237 F.3d at 216. The proper legal test for comparing marks is whether the marks “viewed in their entirety” are confusingly simi-lar. Kos, 369 F.3d at 713 (emphasis in original). “Marks are confusingly similar if ordinary consumers would likely conclude that the two products share a common source, affiliation, connection or sponsorship.” A&H Sportswear, 237 F.3d at 216 . When determining whether a likelihood of confusion exists, the similarity of the respective marks in appearance, sound and meaning should be considered. Horizon Financial, FA. v. Horizon Bancorp, 2 U.S.P.Q. 2d 1696, 1702 (E.D. Pa. 1987) ; Blu-menfeld., 669 F. Supp. at 1320 . If the overall impression created by the respective marks is essentially the same, the marks are very probably confusingly similar. Opticians, 920 F.2d at 195 .

PIPET-AID vs. PIPET AID

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Defendant's use of the term PIPET AID as a mark and/or keyword in it Web sites is likely to cause confusion with Drum-mond Scientific's mark PIPET-AID because the respective marks are basically identical. With the exception of the hyphen -ation, the marks look identical. The marks sound identical and create the identical commercial impression. Furthermore, search algorithms are not likely to distinguish between “pipet-aid” and “pipet aid”.

PIPET-AID vs. PIPETTING AID

Defendant's use of the term PIPETTING AID as a mark and/or keyword in its Web sites is likely to cause confusion with Drummond Scientific's mark PIPET-AID because the respective marks look alike, sound alike, and create the same commer-cial impression. The only perceivable difference between the marks is a change in the grammatical form of the word PIPET to PIPETTING without changing its meaning, connotation or commercial impression. Under similar circumstances, the courts have found confusion where the defendant merely changes the grammatical form of plaintiff's mark and/or uses its generically or descriptively. E.g., Engineered Mech. Svs., Inc. v. Applied Mech. Tech., Inc., 584 F.Supp. 1149 (M.D.La. 1984) (“metalocking”, “metalocked”, “metalocks” and “Metal-Locking” confusingly similar to “METALOCK”); Jos. S. Co-hen & Sons, Co., Inc. v. Hearst Magazines, Inc., 220 F.2d 763 (C.C.P.A.1955) (“Good Housekeeper” confusingly similar to “GOOD HOUSEKEEPING”); Lambert Pharm. Co. v. Listererated Co., 24 F.2d 122 (S.D.Texas 1928) (“Listerated” found to be a spurious and participial form of “LISTERINE”).

Defendant's mark PIPETTING AID copies identically the word AID, which is the more forceful and distinctive element of Drummond Scientific's mark PIPET-AID and is therefore to be given more weight in the analysis. See A&H Sportswear, 237 F.3d at 216. Since defendant's mark PIPETTING AID is nearly identical to Drummond Scientific's mark PIPET-AID, the most important Lapp factor weighs heavily in favor of Drummond Scientific.

PIPET-AID vs. GILSON PIPETTING AID

Defendant's use of the mark GILSON PIPETTING AID is also likely to cause confusion with Drummond Scientific's mark PIPET-AID because defendant has simply added the descriptive word GILSON to a nearly identical form of the mark PIPET-AID. When a junior user incorporates the entire mark of the senior user, the addition of a suggestive or descriptive element is generally not sufficient to avoid confusion. See United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1980). The Trademark Trial and Appeal Board has held that as a general rule, the junior user may not avoid confusion by ap-propriating the senior user's mark and adding descriptive or nondistinctive matter to it. McCarthy on Trademarks and Unfair Competition §23:50 ; In re Rexel, Inc., 223 U.S.P.Q. 830, 831 (T.T.A.B. 1984) (LITTLE GOLIATH for a stapler confusingly similar to GOLIATH for pencils). Since defendant's mark GILSON PIPETTING AID incorporates the entirety of Drummond Scientific's mark PIPET-AID and creates the same commercial impression, the most important Lapp factor weighs heavily in favor of Drummond Scientific.

It is well established that the subsequent user of a mark has a duty to choose a mark or name so as to avoid all confusion as to the source or origin of its goods or services. Blumenfeld, 669 F.Supp. at 1321 . In the present case, defendant has breached this duty by selecting marks that are confusingly similar to Drummond Scientific's mark PIPET-AID. There are many generic terms that defendant could have selected to identify its pipet gun such as “pipettor”, “pipet dispenser”, “pipet filler”, or “pipetting device”. For example, referring to the catalog pages attached as exhibit 6, Drummond Scientific's competitors identify and describe their pipet gun as follows:1) VWR Pipet Controller2) Stipettor Pipetting Device, Coming3) Pipetus Pipetting Device, Hirshmann4) Omega Serological Pipet Controller, Argos Technologies5) Ergopet Pipettors, Scienceware6) Midi Pro Rechargeable Pipet Controller, Biohit

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Ex. 6. In fact, with respect to defendant's several other pipetting devices, defendant identifies such goods under the general category of “pipettes” and the following subcategories: (1) “digital pipettes”; (2) “electronic motorized pipettes”; (3) “fixed-volume pipettes”; (4) “repetitive pipettes”; and (5) “positive-displacement pipettes”. Ex. 11. With respect to such pipettes, de-fendant uses the PIPETMAN family of marks including: (1) PIPETMAN; (2) PIPETMAN NEO MULTICHANNEL; (3) PIPETMAN P; (4) PIPETMAN NEO; (5) PIPETMAN ULTRA; (6) PIPETMAN F; (7) PIPETMAN CONCEPT. Ex. 11. De-fendant also uses the marks DISTRIMAN and MICROMAN to identify two other pipettes in its product line. Ex. 11.

Defendant's infringing marks are being used on a pipet gun that directly competes with Drummond Scientific's PIPET-AID pipet gun. Drummond Scientific and defendant are direct competitors in the laboratory equipment and liquid handling indus-try. Drummond decl., ¶12. Both Drummond Scientific and defendant offer their respective goods through the same trade channels and to the same prospective customers. Id. Under Third Circuit law, “[w]here the owner of the trademark and the in-fringer deal in competing goods or services, the court need rarely look beyond the mark itself.” Opticians, 920 F.2d at 195; A&H Sportswear, 237 F.3d at 214; First American Marketing, 2004 WL 250537 at *4 . Where the trademark owner and the accused infringer deal in competing goods or services, the Court need only compare the respective marks themselves to de -termine whether a likelihood of confusion exits. Lapp, 721 F.2d at 460; Dominion Bank Shares Corp. v. Devon Holding Company, Inc., 690 F. Supp. 338, 346 (E.D. Pa. 1988) .

In A&H Sportswear, the court discussed application of the full compliment of Lapp factors in cases where plaintiff and de-fendant deal in directly competing goods:As explained above, we do not hold that a District Court must use the [Lapp] factors. In fact our precedents suggest the oppo-site. If products are directly competing, and the marks are clearly very similar, a district judge should feel free to consider only the similarity of the marks themselves ... Moreover, the court need not apply each and every factor; when goods are di-rectly competing, both precedent and common sense counsel that the similarity of the marks takes on great prominence.

A&H Sportswear, 237 F.3d at 214 (emphasis added). Since the most important Lapp factor weighs heavily in favor of Drum-mond Scientific, and the parties directly compete, the court may conclude that a likelihood of confusion exists, even without consideration of any additional Lapp factors. However, consideration of the additional Lapp factors buttresses a finding of likelihood of confusion.

b. Factor 2 - The Mark PIPET-AID Is Strong and Entitled to Broad Protection Since It Is Inherently Distinctive

In the Third Circuit, the strength of a mark is measured by (1) the distinctiveness or conceptual strength of the mark; and (2) the commercial strength or marketplace recognition of the mark.” A&H Sportswear, 237 F.3d at 221; Fisons, 30 F.3d at 478 . The first prong of the test weighs the inherent features of the mark, while the second prong weighs the factual evidence of marketplace recognition. Id.

The mark PIPET-AID is inherently strong and distinctive as evidenced by the fact that it was registered on the Principal Reg-ister without the need to claim secondary meaning[FN4]. Drummond decl., ¶6. As discussed above, the ‘459 Registration is in-contestable evidence of Drummond Scientific's exclusive right to use the mark PIPET-AID in connection with pipet guns. 15 U.S.C. § 1115(a).

FN4. Marks which are not inherently distinctive may be registered on the Principal Register by claiming “secondary meaning” or “acquired distinctiveness” under Section 2(f) of the Lanham Act.

The inherent strength of the mark PIPET-AID has been multiplied by virtue of long-term and extensive promotion and use of the mark in commerce. Drummond Scientific has been using the mark PIPET-AID for over 35 years. Drummond decl., ¶7. Drummond Scientific has sold over 15,000 PIPET-AID pipet guns. Id. Drummond Scientific has spent hundreds of thousands

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of dollars, and currently spends an estimated $100,000/year, advertising and promoting its PIPET-AID pipet guns. Drum -mond decl., ¶9. In fact, as described above, Drummond Scientific has used and promoted a family of PIPET-AID marks in -cluding PIPET-AID, PORTABLE PIPET-AID XL, PORTABLE PIPET-AID XP, PIPET-AID HOODMATE, THE ORIGI-NAL PORTABLE PIPET-AID, THE ORIGINAL PIPET-AID, AND PROGRAMMABLE PIPET-AID ELITE 400. Drum-mond decl., ¶7; ex. 1. Drummond Scientific's goods bearing the mark PIPET-AID are sold throughout the United States and in numerous foreign countries. Drummond decl., ¶8. Through extensive and continuous advertising and promotion, PIPET-AID has become a very strong mark, especially in the scientific community and the liquid handling industry.

Over the past decade, Drummond Scientific has policed and enforced its PIPET-AID mark against third parties using the marks PIPET AID and/or PIPETTING AID and/or the terms “pipet aid” and/or “pipetting aid”. After being notified of such infringement, many of such infringers immediately recognized Drummond Scientific's exclusive rights and corrected their improper usage of said marks and terms. Drummond decl., ¶15. Several other third parties recognized Drummond Scientific's exclusive rights after being sued by Drummond Scientific and being provided with similar evidence presented herein. Id. Copies of several consent decrees are attached hereto as exhibits 12-14. Id. Such consent decrees evidence the industry's recognition of Drummond Scientific's exclusive rights in the mark PIPET-AID and colorable imitations thereof including PIPETTING AID. Id.

c. Factor 3 - Pipet Guns Are Inexpensive and Purchasers Are not Likely to Carefully Investigate the Source of Such Goods

Both Drummond Scientific and defendant sell scientific liquid handling equipment, and in particular, pipet guns. Drummond decl., ¶12. Drummond Scientific's PIPET-AID pipet gun is well known in the industry and has a reputation as a top-quality product. Defendant's pipet gun retails for about the same price as Drummond Scientific's PIPET-AID gun, about $200-400 depending on the model, which is inexpensive compared to the cost of other equipment used by laboratory technicians. Id. Because of the low cost of the product and the excellent reputation of PIPET-AID pipet guns, consumers no longer carefully investigate the source of pipet guns bearing the mark PIPET-AID or colorable imitations thereof.

Even if great care is taken by customers when purchasing pipet guns, “it has been held that the care with which consumers select a product does not impact the association they may make regarding sponsorship of another product or service; there -fore even a high degree of care would have little effect on confusion of sponsorship.” Kos, 369 F.3d at 717, citing 3A Louis Altman, Callman on Unfair Competition, Trademarks & Monopolies § 21:10 & n. 139 (emphasis added). Even if careful consumers are able to discern the separate identities of Drummond Scientific's PIPET-AID pipet guns and defendant's GILSON PIPETTING AID pipet guns, such consumers are likely to believe that defendant is somehow sponsored or affili -ated with Drummond Scientific since Drummond Scientific licenses its PIPET-AID mark to third parties and private labels its PIPET-AID pipet gun for at least two other companies who sell their pipet gun using the marks BD Falcon PIPET-AID and USA Scientific PIPET-AID, respectively. Drummond decl., ¶11. Therefore, defendant's addition of the tradename GILSON to the mark PIPETTING AID will likely lead consumers to believe that Gilson is affiliated with Drummond Scien -tific and/or that Gilson is selling an authentic Drummond Scientific PIPET-AID pipette gun.

Confusion among unsophisticated consumers must also be considered. “[W]here both professionals and the general public are relevant consumers, “the standard of care to be exercised ... will be equal to that of the least sophisticated consumer in the class.” Kos, 369 F.3d at 716 citing Checkpoint Systems, Inc. v. Check Point Software Technologies, 269 F.3d 270, 285 (3d Cir. 2001). Pipet guns are often used and purchased by unsophisticated laboratory technicians, who do not expend great care or attention regarding the product source. Therefore, likelihood of confusion must be surveyed from the perspective of the unsophisticated laboratory technician that does not carefully investigate the source of goods. See Ford Motor Co. v. Summit Motor Prod., Inc., 930 F.2d 277, 297 (3d Cir. 1991) .

d. Factor 4 - Defendant's Use of Its Infringing Trademarks Began Only Recently

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To Drummond Scientific's knowledge, defendant's use of its infringing trademarks and terms began recently. Drummond decl., ¶10. To Drummond Scientific's knowledge, defendant only recently adopted and incorporated its infringing marks in the HTML code of its Web sites. For example, Drummond Scientific discovered the advertising outsert/brochure of exhibit 11 several weeks ago in the April 2009 issue, vol. 23, no. 4 of “The Scientist” trade journal. After a follow-up investigation, Drummond Scientific discovered defendant's infringing use on the internet. Since defendant has only used its infringing marks and terms for a very short period of time, confusion in the marketplace is in its infancy.

e. Factor 5 - Defendant Intended to Divert Business from Drummond Scientific

The Third Circuit has held that evidence of intentional, willful and admitted adoption of a mark that is closely similar to the senior user's mark weighs strongly in favor of finding a likelihood of confusion. Kos, 369 F.3d at 721; Checkpoint, 269 F.3d at 286. The adequacy and care with which a defendant investigates and evaluates its proposed mark, and its knowledge of similar marks or allegations of potential confusion, are highly relevant. Kos, 369 F.3d at 721; Fisons 30 F.3d at 480 . A junior party's intent to copy will indicate a likelihood of confusion in the marketplace if an intent to confuse consumers is demon -strated via purposeful manipulation of the junior user's mark to resemble the senior user's mark. A&H Sportswear, 237 F.3d 225-26 (emphasis added).

Defendant clearly intends to unlawfully divert business from Drummond Scientific. Pipet guns are generically referred to in the industry as, for example, “pipet dispensers”, “pipet fillers” or “pipettors”, not “pipetting aids”. Prior to introduction of its latest pipet gun, defendant referred to its other pipeting products using the PIPETMAN family of marks and generically de-scribed such products as “pipettes”, and more particularly “digital pipettes”, “electronic motorized pipettes”, “fixed-volume pipettes”, and “positive placement pipettes.” Ex. 11. On its new pipet gun model, instead of using the PIPETMAN family of marks and instead of using a proper generic designation, defendant adopted colorable imitations of the mark PIPET-AID. De-fendant adopted its marks with full knowledge of Drummond Scientific's prior use of the mark PIPET-AID. At a minimum, defendant's knowledge of Drummond Scientific's mark PIPET-AID can be inferred from the fame of the mark. Drummond Scientific's pipet guns are well-known in the industry by the trademark PIPET-AID. In the face of such evidence, defendant can not claim to be an innocent infringer. When a company knowingly adopts a mark similar to another's mark, the court should presume intent to deceive the public. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 354 (9 th Cir. 1979) .

f. Factor 6 - Drummond Scientific Can Establish Initial Interest Confusion

A plaintiff need not present evidence of actual confusion to establish likelihood of confusion under the Lanham Act. Check-point, 269 F.3d at 291 (“[e]vidence of actual confusion is not required to prove likelihood of confusion”) (citations omitted). Although such evidence is extremely persuasive if it exists, the non-existence of such evidence is not a factor in determining likelihood of confusion. Id

Both Drummond Scientific and defendant use the Internet to attract customers. Drummond decl., ¶12. Defendant's use of Drummond Scientific's mark PIPET-AID, and colorable imitations thereof, as a metatag and/or searchable text creates a like -lihood of confusion by wrongfully diverting customers and potential dealers. Each time a customer is unlawfully linked to one of defendant's Web sites instead of Drummond Scientific's Web site, Drummond Scientific may loose a customer, even if the customer eventually discovers defendant's true identity. Where a party captures customers using another's marks, the party may be liable for infringement based on the theory of initial interest confusion, even where a purchaser knows the source of the goods. See Checkpoint, 269 F.3d at 270 (We agree and hold initial interest confusion is actionable under the Lanham Act.) (citing 3 J. McCarthy on Trademarks and Unfair Competition, § 23:6. “[Trademark infringement] can be based upon confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion.”) Furthermore, since defendant has only used its infringing marks and terms for a very short period of time, confu-sion in the marketplace is in its infancy.

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g. Factors 7 and 8 - Drummond Scientific and Defendant Market Their Goods Through the Same Trade Channels and Target the Exact Same Customers

The similarity of the marketing channels of Drummond Scientific's and defendant's pipet guns further suggests a likelihood of confusion. The greater the similarity in advertising and marketing medium, the greater the likelihood that defendant is likely to cause confusion. Kos, 369 F.3d at 722; Checkpoint, 269 F.3d at 288-89 . Further, neither customer sophistication nor the re-lationship between the goods is relevant to determining whether the goods are marketed and advertised through the same me-dia. Kos, 369 F.3d at 722 .

Drummond Scientific and defendant market their respective goods through the same trade channels. Drummond decl., ¶12. Both parties advertise and promote their respective goods to the same customers. Id. Both parties have Internet Web sites on which their respective goods are advertised and promoted. Id. Each party's Web site includes photographs and descriptions of its liquid handling equipment including its pipet guns. Each party also markets its goods through the same type of equipment distributors. Thus, the similarity of the marketing channels further suggests a likelihood of confusion.

h. Factor 9 - Drummond Scientific's and Defendant's Goods Are Unique and Therefore Associated Together in the Minds of the Public

Drummond Scientific invented the first pipet gun in the early 1970's. On September 10, 1974, Drummond Scientific was awarded its first pipet gun patent, U.S. Patent No. 3,834,240. At the time of invention, Drummond Scientific coined and adopted the mark PIPET-AID for its pipet gun. Since the early 1970's, Drummond Scientific has steadily improved its pipet gun as evidenced by the numerous U.S. patents it has been awarded by the United States Patent & Trademark Office. See sec-tion IIA, supra. Because of the unique nature and function of the parties' identical goods, consumers are likely to mistakenly believe that defendant's goods are sponsored by or connected with Drummond Scientific.

i) Non-exclusive Factors Which Lead to the Conclusion That Defendant's Acts Create a Likelihood of Confusion

Defendant is using Drummond Scientific's mark PIPET-AID, and colorable imitations thereof, as metatags and/or keywords encoded in the HTML code of defendant's Web sites. It is also believed that defendant provides the HTML code to third-party Web sites that distribute defendant's pipet guns. The unique nature of cyberspace infringement is particularly trouble -some. For example, once a customer is lured to one of defendant's Web sites, the customer may mark that site in the cus-tomer's web browser software where the site can be stored for future use and reference. Once defendant successfully diverts customers from Drummond Scientific's Web site, defendant is likely to reap repeat business from the customer when the cus -tomer “calls-up” the Web site through which it has purchased liquid handling equipment in the past. This scenario, where di -verted sales occur even though the consumer is not confused, is actionable in the Third Circuit under the theory of initial in -terest confusion. See Checkpoint, 269 F.3d at 292 .

Most, if not all, of the independent dealers through which defendant sells its pipet guns have their own Web sites. Typically, the advertising content of these third-party Web sites comprises downloaded copies of defendant's product advertisements and HTML code of defendant's Web sites. For example, defendant's infringing pipet gun is shown on www.mandel.ca, www.pretech.nu, and www.anachem.co.uk. Ex. 15. Therefore, the nature of defendant's marketing and trade channels com-pounds defendant's infringing activities.

B. Drummond Scientific Will Suffer Irreparable Harm Unless Defendant's Use of the Terms “Pipet Aid” and “Pipetting Aid”, and Use of the Marks PIPETTING AID and GILSON PIPETTING AID Is Enjoined

To prove irreparable injury in the Third Circuit, the movant must only make a prima facie showing of trademark infringe-ment. Basic Fun v. X-Concepts, LLC., 157 F. Supp. 2d 449, 457 ( E.D.Pa. 2001) . Trademark infringement amounts to ir-

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reparable injury as a matter of law. Kos, 369 F.3d at 726; Jiffy Lube, 968 F.2d at 378 . Once a trademark owner demonstrates likelihood of confusion, it is entitled to injunctive relief. Lapp, 721 F.2d at 462; 15 U.S.C. §1114 (1988). “[O]nce the likeli-hood of confusion caused by trademark infringement has been established, the inescapable conclusion is that there was also irreparable injury.” Pappan Enter., Inc. v. Hardee's Food Sys., Inc., 143 F.3d 800, 805 (3d Cir. 1998) .

As set forth supra, Drummond Scientific has made a strong showing of likelihood of confusion, and therefore has established irreparable injury. Where plaintiff makes a strong showing of likely confusion, irreparable injury follows as a matter of course. Opticians, 920 F.2d at 196-97 .

Notwithstanding the presumption of irreparable harm to which Drummond Scientific is entitled, it is also well settled that in actions for trademark infringement and unfair competition under common law and under the Federal Lanham Act, the loss of a plaintiff's control over its reputation and goodwill is an irreparable injury for which preliminary injunctive relief is appro -priate. Jiffy Lube, 968 F.2d at 378; Opticians, 920 F.2d at 195 . Lack of control amounts to irreparable injury “even though the borrower does not tarnish it, or divert any sales by its use,” Opticians, 920 F.2d at 195, or even if “the infringer is putting the mark to better use.” Jiffy Lube, 968 F.2d at 378 .

In the scientific community and liquid handling industry, name and reputation are critical to a company's continued success. Drummond decl. ¶13. Drummond Scientific's name and reputation are its most valuable assets. Id. Defendant's use of col-orable imitations of Drummond Scientific's valuable mark PIPET-AID usurps Drummond Scientific's right to control its name and reputation, and threatens to cause irreparable harm to its name and reputation. Drummond decl., ¶14.

Defendant's pipet guns may be inferior to Drummond Scientific's pipet guns, and may not comply with industry standards. However, even if defendant's goods are not inferior, Drummond Scientific is entitled to injunctive relief.Even if the infringer's products are of high quality, the plaintiff can properly insist that its reputation should not be imperiled by the actions of another. Plaintiff's lack of ability to control the nature and quality of services provided under an infringing service mark, even if defendant matches the high quality of plaintiff's services, constitutes irreparable injury. Potential dam-age to reputation constitutes irreparable injury for the purpose of granting a preliminary injunction in a trademark case.

Opticians, 920 F.2d at 196 .

Notwithstanding the presumption of irreparable harm to which Drummond Scientific is entitled, irreparable harm may also be inferred from Drummond Scientific's financial interest in its mark PIPET-AID as well as the expense that Drummond Scien-tific has incurred in promoting its mark. See Horizon, 2 U.S.P.Q. 2d at 1704 . Over the past 35 years, Drummond Scientific has spent hundreds of thousands of dollars advertising and promoting the mark PIPET-AID. Drummond decl., ¶9. Drum-mond Scientific is entitled to protect its substantial financial interest in its valuable mark PIPET-AID.

C. The Balancing of Equities Favors Injunctive Relief Where Defendant is Infringing Drummond Scientific's Trademark.

Drummond Scientific has established a strong showing of likelihood of success on the merits. The stronger plaintiff's likeli -hood of success on the merits, the less heavily need the balance of harms weigh in its favor. Kos, 369 F.3d at 729; Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharm. Co., 290 F.3d 578, 597 (3d Cir. 2002) . In addition, several salient equitable considerations weigh heavily in Drummond Scientific's favor.

1. Defendant Intentionally Adopted Marks That Are Confusingly Similar to Drummond Scientific's Marks

It is well established that the subsequent user of a mark has a duty to choose a mark or name so as to avoid all confusion as to the source or origin of its goods or services. Blumenfeld, 669 F. Supp. at 1321 (emphasis added). In the present case, Defen-

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dant has breached this duty by selecting marks and using terms that are confusingly similar to Drummond Scientific's valu-able mark. Equity should not reward defendant's breach of duty.

Defendant intentionally adopted marks that are confusingly similar to the mark PIPET-AID. This is not a case where defen -dant innocently or unknowingly adopted marks similar to Drummond Scientific's mark. See Jaycees, 639 F.2d at 142 . Drum-mond Scientific has used the mark PIPET-AID for over 35 years. A party can not claim to be harmed where it has brought any and all difficulties occasioned by the issuance of an injunction upon itself. Kos, 369 F.3d at 728; Jiffy Lube, 968 F.2d at 379; Opticians, 920 F.2d at 197 . “One entering a field already occupied by another has a duty to select a trademark that will avoid confusion ... Having adopted a trademark which now causes confusion, defendant can not now complain that having to mend its ways will be too expensive.” Opticians, 920 F.2d at 197 (citations omitted). Courts of the Third Circuit have often recognized that any injury that a defendant might suffer from an injunction may be discounted by the fact that the defendant brought that injury upon itself. Novartis, 290 F.3d at 596; Pappan, 143 F.3d at 806 .

2. Drummond Scientific Seeks Only Limited Equitable Relief

Despite having demonstrated broad rights in the mark PIPET-AID, Drummond Scientific only seeks limited equitable relief. Drummond Scientific only seeks to protect the goodwill and reputation of its well-known mark. Drummond does not seek to enjoin defendant from selling pipet guns or other related products; rather, Drummond Scientific merely seeks to enjoin defen -dant from using colorable imitations of Drummond Scientific's valuable trademark PIPET-AID in connection with the sale of pipet guns. Defendant is free to sell its pipet gun under any other name that does not cause confusion in the marketplace, or dilute Drummond Scientific's mark PIPET-AID. For example, Defendant may refer to its pipet gun as the GILSON PIPET-TOR, GILSON PIPET FILLER, GILSON PIPETTING DEVICE, or GILSON PIPET DISPENSER. In fact, defendant al-ready describes its other pipettors using the term pipettes, which is an acceptable descriptive term. Ex. 11. In view of the cir -cumstances set forth above, Drummond Scientific's proposed Order fairly balances the interests of both parties.

3. Potential Injury to Defendant Is Subservient to Protection of the Public Interest and the Trademark Rights of Drummond Scientific

The court should not be overly concerned with the possible injury caused to the defendant. “Protection of infringers is not a purpose of the Lanham Act. To the contrary, the Act's objective is the protection of the trademark and the public.” Jaycees, 639 F.2d at 142.

An injunction poses little recognizable hardship on defendant; however, even if the issuance of a preliminary injunction would have a devastating effect on defendant's business, an injunction should still be granted since an infringer should not be permitted to carry out and continue business activities based on infringing activities. Apple Computer, Inc. v. Franklin Com-puter Corp., 714 F.2d 1240, 1255 (3d Cir. 1983) . Accordingly, the aforementioned equitable considerations tip decidedly in favor of Drummond Scientific.

D. Public Interest Favors Issuance Of An Injunction To Enjoin Defendant's Use of Its Infringing Marks

Several public interest considerations also weigh heavily in favor of Drummond Scientific and compel issuance of an injunc-tion.

1. Protecting Pubic Safety Serves the Public Interest

The nature of Drummond Scientific's services is special and involves public safety. Drummond Scientific's pipet guns are of -ten used for conducting critical experiments and laboratory tests, and for metering caustic or infectious fluids. Loss of quality

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control over the quality of pipet guns sold under the mark PIPET-AID will harm public safety, especially if the pipet guns sold by defendant are not equal to the high quality of pipet guns sold by Drummond Scientific.

2. Preventing Consumer Confusion Serves the Public Interest

In a trademark case, the public interest can be defined in a number of ways, but is most often a synonym for the right of the public not to be deceived or confused. Kos, 369 F.3d at 730; Jiffy Lube, 968 F.2d at 379; Opticians, 920 F.2d at 197 . “Pre-venting deception of the public is itself in the public interest.” SK&F, Co. v. Premo Pharmaceutical Lab., 625 F.2d 1055, 1067 (3d Cir. 1980). Where a likelihood of confusion arises out of the concurrent use of a trademark, the infringer's use dam-ages the public interest. Jiffy Lube, 968 F.2d at 379; Opticians, 920 F.2d at 197 . In this respect, harm to the public interest is much like irreparable injury to the trademark owner. Jiffy Lube, 968 F.2d at 379 .

“As a practical matter, if a plaintiff demonstrates both a likelihood of success on the merits and irreparable injury, it almost always will be the case that the public interest will favor the plaintiff.” See American Tel. & Tel. Co. v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1427 n. 8 (3d Cir. 1994) . The policy behind federal and common law trademark infringement is to prevent consumer and customer confusion and protect those entities, which have a valid right to use a specific name or mark. Horizon, 2 U.S.P.Q. 2d at 1705 . Thus, overwhelming public policy compels issuance of an injunction, which enjoins defendant's unlawful use of colorable imitations of the mark PIPET-AID.

IV. CONCLUSION

For the foregoing reasons, Drummond Scientific respectfully requests that this court GRANT the requested preliminary in -junctive relief set forth in the accompanying proposed Order.

Date: May 7, 2009

Respectfully submitted,

Joseph M. Konieczny, P.C.

/s/ Joseph M. Konieczny, Sr. (Pa. 59,724)

Meetinghouse Business Center

2260 Butler Pike, Suite 100

Plymouth Meeting, PA 19462

Telephone: 610-940-1962

Facsimile: 610-940-1963

jkonieczny@jmkpc.com

Attorneys for Drummond Scientific Company

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END OF DOCUMENT

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