Legal Update

‘Nanotainer’ vs. ‘Microtainer’: Theranos Sues Becton Dickinson

Legal fight commences after BD opposes the trademark application filed by Theranos

BY FILING A LAWSUIT IN FEDERAL COURT against Becton Dickinson, Theranos, the ultra-secretive lab testing company based in Palo Alto, California, has once again put itself in the headlines.

In papers it filed in the United States District Court for the Northern District of California, Theranos is asking the court to rule that its use of the trademark “nanotainer” does not infringe the “microtainer” trademark used by Becton Dickinson. The lawsuit was filed on November 3, 2014.

For decades, pathologists and laboratory professionals have worked with the line of blood collection products marketed under the “microtainer” name by Becton Dickinson of Franklin Lakes, New Jersey. BD says it originally registered that trademark in 1976.

Barring an out-of-court settlement by the two parties, it will be up to the federal judge to determine whether Theranos’ use of nanotainer represents an infringement of BD’s microtainer trademark.

Trademark Application Filed

It was in 2012 when Theranos applied for a trademark for the term nanotainer. In March, 2014, BD filed an objection to the Theranos trademark application. Becton Dickinson claimed that the name was too similar to its microtainer trademark. It also sent a series of letters to Theranos about this matter.

In response to these actions by BD, Theranos decided to file its lawsuit in federal court last month. What may add an extra element of interest to this case for pathologists and lab administrators is that one of the two law firms representing Theranos is Boies, Schiller & Flexner, LLP, of Armonk, New York.

High-Profile Attorney

Readers with good memories will recall the Bush vs. Gore case during the 2000 presidential election. When the Supreme Court heard oral arguments, it was David Boies who argued on Al Gore’s behalf. Boies has been involved in some of the nation’s highprofile legal cases over the past two decades. His law firm has represented Theranos for a number of years.

The other legal counsel for Theranos is Fenwick & West LLP of San Francisco, California. Representing BD is Epstein Becker & Green LLP, of San Francisco, California.

What will likely be a key issue in this case is the “tainer” part of the BD trademark. BD also holds the trademark for “vacutainer” and each year billions of these specimen collection devices are manufactured and used globally. A similar type of lawsuit was filed years ago by “Toys R Us” to protect its trademark from firms that tried to use such names as “Lamps R Us” and similar. Toys R Us prevailed in that case and Lamps R Us is now called Lamps Plus.

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