California imaging center sues to protect `Open MRI' trademark

Generic uses of term are okay, plaintiff says

The owner of a Hayward, CA, imaging center that specializes inopen-architecture MRI has gone to federal court to assert trademarkrights over the name "Open MRI" for magnetic resonanceimaging services and products.

Dr. Peter Rothschild, owner of Open MRI of Hayward, an imagingcenter in the San Francisco area, sued Open MRI of the Desert,in Palm Desert, CA, last month for allegedly infringing on Rothschild'srights to the terminology. Rothschild asserts that he obtaineda registered trademark covering "open MRI" in 1993.His attorney, Robert Payne, argued that Rothschild gained common-lawrights over open MRI by incorporating it into his clinic's namewhen it opened for business in 1991.

Rothschild's service revolves around a 0.064-tesla Toshiba AccessMRI platform and a high-powered marketing effort aimed directlyat patients. Open MRI of Hayward spends $2000 to $3000 per monthfor radio and newspaper advertising and other marketing extollingthe merits of the open-architecture scanner for claustrophobicand obese patients, according to Rothschild. Even within the relativelyairy confines of the Access, about 15% of his patients still requiresedation, he said. Anesthesia is administered to the most severecases.

Prospective patients may call the clinic toll-free at 1-800-OPEN-MRI.Patients have traveled from as far as Kentucky to be imaged atthe center, he said.

While asserting his rights over competing clinics, Rothschildsaid he does not plan to move against MRI manufacturers. He claimsthat Siemens Medical Systems and other vendors have been carefulnot to violate his trademark claim.

"That's why Siemens called its system the Open, not OpenMRI," he said.

Open MRI of the Desert set itself up for litigation by locatingin a Palm Springs suburb within range of his radio advertisingcoverage, according to Rothschild.

"They're causing confusion by using our name and workingoff the good will we've worked hard to establish," he said.

But Open MRI of the Desert is not alone on that score.CharlesKoller, the imaging center's attorney, claims to have identified35 companies that use "open MRI" in their titles oradvertising. A trademark search before Open MRI of the Desertincorporated found Rothschild was denied a trademark for the termbecause it was in common use, according to Koller.

"It's like trademarking the word x-ray," he said.

Open MRI of the Desert, which features a Siemens Open permanent-magnetscanner, was sued shortly after opening for business in September.The center is owned by a limited partnership. The general partneris Kenneth Bishop, who doubles as the center's business manager.

Payne has asked a U.S. District Court in Los Angeles for unspecifieddamages and an injunction ordering Open MRI of the Desert to changeits name.