Plaintiff Talis Biomedical Corporation (TBC) sued defendant Talis Clinical, LLC (Talis Clinical) on Wednesday in the Northern District of Ohio, seeking a reversal of the sustained Opposition that Talis Clinical had filed with the plaintiff’s application for the trademark TALIS.
TBC, the complaint says, is a “biomedical company that is developing medical diagnostic instruments for the detection, identification, and assessment of infectious diseases.” TBC changed its name to Talis Biomedical Corporation in early 2018, also publishing their website with the TALIS trademark around that time. The plaintiff subsequently filed an application to register the TALIS trademark with the United States Patent and Trademark Office (USPTO). The services provided by the plaintiff are “targeted to highly sophisticated consumers in the medical field, namely, medical institutions and medical professionals concerned with overall population health and improved patient outcomes.”
The defendant, according to court documents, was previously known as RLH Enterprises but registered as Talis Clinical, LLC in late 2012. Talis Clinical offers services such as “documenting complex anesthesia workflows to selling software for organizing and analyzing patient data and services related.” Talis Clinical said has been using the TALIS mark prior to the plaintiff’s filing of a trademark application with the USPTO. Talis Clinical’s offerings are targeted towards “institutions making large capital equipment purchases for hospital information technology departments.”
The USPTO published the trademark application the plaintiff had filed for opposition in late 2018, to which the defendant replied by filing opposition on the grounds that they owned “prior unregistered common law trademark rights in the trademark TALIS in connection with medical software and services.” They further claimed that the approval of the plaintiff’s trademark application would lead to consumer confusion.
The opposition filed by the defendant was sustained on the grounds that it would cause consumer confusion, causing the plaintiff to regard this conclusion as “misguided,” since the defendant’s vice president falsely testified that they had been using the term TALIS in software as early as 2015. Documentary evidence from the record of the Opposition did not support this claim. Further, the plaintiff argues that “unwarranted and unsupportable factual inferences” were drawn from this false claim, all contributing to the “misguided” opposition that was ultimately sustained.
TBC additionally claims that consumer confusion between the two entities would not be likely because of the dissimilarity of the services, the customers being sophisticated purchasers, and the defendant’s mark not being famous.
The plaintiff is seeking an appeal on the decision of the Opposition with favorable judgement, an entitlement to register their patent, and any other relief deemed proper by the Court.
The plaintiff is represented by Thompson Hine.
