Surgicenters of America, Inc., an Arizona Corporation v. Medical Dental Surgeries, Co., an Oregon Corporation Dba Medical Dental Surgicenters

Appellant, Surgicenters of America, Inc. (Surgicenters), brought this action against appellee, Medical Dental Surgeries Co., dba Medical Dental Surgicenters (Medical), under the Trademark Act of 1946 as amended, 15 U.S.C. § 1051 et seq., for infringement of its registered service mark, “Surgicenter.” The parties filed cross-motions for summary judgment, based upon agreed facts, 45 exhibits, answers to interrogatories, and two depositions. The district court denied appellant’s motion and granted appellee’s motion, finding “Surgicenter” was not a lawfully registered service mark. We affirm.

Factual Background

The basic facts are undisputed, both parties accepting a summary contained in the opinion of the district court. In March, 1970, a month after operating a “facility for one-day surgical care” in Phoenix, Arizona, Surgicenter, Inc., applied for registration of the service mark “Surgicenter” for “services rendered in an in and out surgical facility.” On August 31, 1971 the mark “SURGICENTER” was registered to Surgi-center, Inc. “For: PROVIDING FACILITIES FOR DOCTORS TO PERFORM OPERATIONS ON PATIENTS”. 1 On October 6,1971, the registration was assigned to appellant.

Since the…

dissenting:

Faced with a difficult question in a complex area of law, the district court stated but did not apply the proper test to determine whether a name is generic. Even if the proper test had been applied, defendant’s evidence was not sufficient to meet the heavy burden of proof it carried.

I.

By statute, plaintiff’s certificate of registration is prima facie evidence of the mark’s validity. 15 U.S.C. § 1057 (b). By case law, this means not only that the mark’s challenger has the burden of going forward, but also that registration carries with it a “strong presumption of validity”. Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir. 1969), quoting Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2d Cir. 1956). Therefore, “the burden of showing genericness [sic] rests *1021 squarely on defendants.” E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F.Supp. 502, 523 (E.D.N.Y.1975). See also American Thermos Products Co. v. Aladdin Industries, Inc., 207 F.Supp. 9, 14 (D.Conn.1962), aff’d sub nom. King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963); 1 J. McCarthy, Trademarks and Unfair Competition…

601 F.2d 1011 202 U.S.P.Q. 401 SURGICENTERS OF AMERICA, INC., an Arizona Corporation, Plaintiff-Appellant, v. MEDICAL DENTAL SURGERIES, CO., an Oregon Corporation dba Medical Dental Surgicenters, Defendant-Appellee. No. 77-2490. United States Court of Appeals, Ninth Circuit. May 16, 1979. Rehearing Denied Aug. 22, 1979. 1 John Moran, Phoenix, Ariz., for plaintiff-appellant. 2 Paul Gerhardt, Portland, Or., for defendant-appellee. 3 Appeal from the United States District Court for the District of Oregon. 4 Before GOODWIN and ANDERSON, Circuit Judges, and JAMESON, * District Judge. JAMESON, District Judge: 5 Appellant, Surgicenters of America, Inc. (Surgicenters), brought this action against appellee, Medical Dental Surgeries Co., dba Medical Dental Surgicenters (Medical), under the Trademark Act of 1946 as amended, 15 U.S.C. § 1051 Et seq., for infringement of its registered service mark, "Surgicenter." The parties filed cross-motions for summary judgment, based upon agreed facts, 45 exhibits, answers to interrogatories, and two depositions. The district court denied appellant's motion and granted appellee's motion, finding "Surgicenter" was not a lawfully registered service…