Medical Laboratory Testing Companies Feud Over Trademarks

Abira Medical Laboratories, LLC doing business as Genesis Diagnostics (Genesis), filed a complaint on Monday in the Eastern District of Pennsylvania against Medical Diagnostic Laboratories, LLC (MDL) for trademark infringement. Genesis argued that MDL both infringed on its “Genesis Diagnostics” mark and caused its pending application for a similar, stylized mark to be suspended by the U.S. Patent and Trademark Office (PTO) due to MDL’s application for a competing trademark.

According to the filing, the parties are both foreign limited liability companies with principal places of business in Pennsylvania and in MDL’s case, New Jersey. Though both are medical laboratory testing companies, the complaint specifies that Genesis offers laboratory testing services at its facilities in Langhorne, Pennsylvania, or through labs it can set up at hospitals to “provide on-site clinical laboratory, pharmacy, genetics, and addiction rehabilitation testing services on an in-patient or out-patient basis for the hospital’s patients.”

In December 2018, Genesis became aware that an MDL salesperson for a division of “Genesis Diagnostics,” presented herself to one of Genesis’s clients, a medical practice in Chandler, Arizona. Soon thereafter, Genesis wrote to MDL, requesting that it immediately cease and desist in its use of the service mark as depicted on the sales representative’s business card.

In January 2019, MDL’s chief legal officer sent Genesis a letter “acknowledging the improper usurpation of Plaintiff’s Mark, and also acknowledging that corrective action had been taken to remove any reference to ‘Genesis Diagnostics’ from the Defendant’s website, literature, and business documents.” However, and allegedly, in June 2020, Genesis realized that MDL was continuing to interfere with both its registered mark and a stylized “Genesis Diagnostics” mark it had submitted to the PTO for trademark approval.

Genesis’s stylized mark was subsequently suspended by the PTO due to MDL’s application for a competing trademark comprising the literal elements “Genesis Clinical Diagnostics,” and “a division of Genesis Clinical Diagnostics.” Genesis contends that these marks infringe upon its own and create a likelihood of confusion as to the source of its marks. It further claims that unless enjoined, MDL will injure the plaintiff, its business reputation and goodwill.

Genesis brings four counts of trademark infringement and unfair competition under federal and Pennsylvania law. It seeks damages, injunctive relief, and its attorneys’ fees and costs incurred during the litigation.

The plaintiff is represented by the Law Office Of David W. Ghisalbert.