Seattle Trademark Lawyer

On April 12, the Ninth Circuit affirmed the Central District of California’s finding that DISINFECTABLE is generic for disinfectable nail files and agreed that summary judgment dismissal of plaintiff’s trademark infringement claim was proper.

In Rudolph International, Inc. v. Realys, Inc., __ F.3d __, 2007 WL 1077176 (9th Cir.), plaintiff Rudolph and defendant Realys manufacture and sell abrasive nail files. California regulations require nail technicians to disinfect instruments used on multiple customers. In response to these regulations, Rudolph developed a line of files that could withstand the disinfection process. At that time, it stopped using the term “sanitizable” to describe its files and adopted the term “disinfectable,” which it used in connection with its established brand names “Soft Touch,” “Les Mirages,” and “Quadmetrics.”

Thereafter, Rudolph’s president, James Rudolph, was quoted in a trade journal saying that “[t]he word ‘sanitizable’ as it relates to nail and foot files needs to be abandoned forever. … The word to adopt is ‘disinfectable.’”

At the behest of its largest customer, Realys followed suit and started calling its files “disinfectable” instead of “sanitizable.” Rudolph sent Realys a cease-and-desist letter demanding that Realys stop using the term. When Realys refused, Rudolph sued.

Rudolph argued the district court erred in dismissing its trademark infringement claim because the mark should have been classified as “suggestive” and protectable, rather than “generic” and unprotectable.

However, the Ninth Circuit agreed with the district court’s finding that “No imagination or mental leap is required to understand that ‘disinfectable’ in the nail file industry means ‘capable of being disinfected.’”

The Ninth Circuit concluded: “The term ‘disinfectable’ relates to the type of product rather than its source and consequently falls on the ‘what-are-you’ side of the genericness test. In contrast, the source of the product is identified by Rudolph’s established brand names of ‘Soft Touch,’ ‘Les Mirages’ and ‘Quadmetrics.’ The district court correctly held that Rudolph failed to introduce sufficient evidence to meet its burden of persuasion that ‘disinfectable’ is not a generic mark. This question does not present a genuine issue of material fact and is appropriate for summary judgment notwithstanding our reluctance to take such action in trademark cases.”