A federal judge on Sept. 24 canceled trademark registrations held by San Diego-based NuVasive Inc., a company developing medical devices for spine disorders, for the word “neurovision” after the company was found to have infringed its rival Neurovision Medical Products Inc.'s trademarks.
U.S. District Judge Dale S. Fischer issued two separate orders, one which affirmed a jury’s April award of $30 million in disgorged profits to Neurovision for its rival's infringement, and a second that canceled the two trademark registrations held by NuVasive for the word “neurovision,” according to Law360, a legal affairs news source..
The cancellation of the two trademark registrations — U.S. Trademark Numbers 2,711,777 and 2,782,540 — will be stayed pending appeal, the judge said.
The ruling is the latest development in a trademark war between the two companies, which began in 2009 when Neurovision filed a lawsuit. The lawsuit alleged that NuVasive had started using the "neurovision" mark to purposely infringe on Neurovision's established brand of nerve-monitoring equipment.
Neurovision, which has used the word since the early 1990s, claimed it had a common-law right to the mark. NuVasive's registration of the mark with the USPTO was not until 2003.
Judge Fischer, however, did outline two exceptions for NuVasive's continued use of the phrase “neurovision,” — to refer to historic products or litigation in communications with investors and regulatory agencies, and to truthfully explain to customers that it formerly marketed products under the name “neurovision.”
Judge Fischer said the judgment may be amended to the extent that additional post-judgment relief, such as attorneys' fees, costs or interest are requested and awarded.
Neurovision is represented by Peter Ross and Keith Wesley of Browne George Ross LLP and Andrew Kent of Rincon Venture Law Group.
NuVasive is represented by William S. Boggs, Noah A. Katsell and Kellin Chatfield of DLA Piper.
The case is Neurovision Medical Products Inc. v. NuVasive Inc. et al., case number 2:09-cv-06988, in the U.S. District Court for the Central District of California