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In a David vs. Goliath trademark infringement battle between a multi-national conglomerate and a much smaller adversary, a Northern District federal judge has issued a Solomonic decision. Chief Judge Frederick J. Scullin’s split-the-baby ruling on pretrial motions allows Tyco International to continue marketing its trademark health care products. But it also prohibits the company from expanding the use of the mark into the market where the Tycos trademark has for decades been a common label on stethoscopes and sphygmomanometers. Welch Allyn Inc. v. Tyco International, 5:01-CV-1806, calls into question a host of trademark infringement questions, as well as the practical application of the eight-part analysis suggested by the 2nd Circuit U.S. Court of Appeals some 41 years ago. In Polaroid Corp. v Polarad Elecs. Corp., 287 F.2d 492 (1961), the 2nd Circuit set forth an eight-point road map for trial courts considering the likelihood of marketplace confusion when similar trademarks involve products which do not directly compete. Judge Scullin followed that road map in considering Welch Allyn’s broad motion for injunctive relief. The case involves Welch Allyn, which has marketed blood pressure instruments — sphygmomanometers — and stethoscopes under the Tycos trademark for nearly a century, and Tyco International, a $6.5 billion manufacturing and service company with operations in more than 80 countries. Since the mid 1990s, health care and professional medical products have become an increasingly important sector of Tyco. In November, Welch Allyn sued Tyco in the Northern District, alleging federal trademark infringement, unfair competition, dilution of its trademark, unlawful trade practices and unfair competition. Welch Allyn sought a preliminary injunction enjoining Tyco from using its trademark on any medical products. In support of its motion, Welch Allyn focused primarily on likelihood of confusion, which prompted a Polaroid v. Polarad analysis. Judge Scullin, in a 32-page decision, undertook a point-by-point analysis of all eight Polaroid factors: the strength of the Tycos mark; the similarity of the Tycos and Tyco marks; the marketplace proximity of the respective products; the likelihood that Tycos will seek to expand into the Tyco market; proof of actual confusion; bad faith; the quality of the Tyco product; and the sophistication of the market. ‘WEAK EVIDENCE’ Although the judge found that some of the factors weigh toward the plaintiff and others toward the defendant, on balance he detected “only weak evidence of actual confusion.” Judge Scullin said an injunction would greatly harm Tyco, while doing little for Welch Allyn. “On the other hand, the Court concludes that the maintenance of the status quo is important and that to permit [Tyco] to expand the use of their mark in the medical products market would raise sufficiently serious questions going to the merits of the issue of likelihood of confusion and is likely to tip the balance of the equities in [Welch Allyn's] favor,” Judge Scullin wrote. Accordingly, the court enjoined the defendant from expanding their use of the Tyco trademark in the non-disposable medical products and medical instrument markets where it does not currently use the trademark. Appearing on the motion were: Parker H. Bagley, Jeffrey Barist and John M. Griem Jr. of Milbank, Tweed, Hadley & McCloy of Manhattan for Tyco; Ted H. Williams of Scolaro, Shulman, Cohen, Lawler & Burstein in Syracuse, also for Tyco; and Deborah H. Karalunas and Louis Orbach of Bond, Schoeneck & King in Syracuse for Welch Allyn.

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