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1

 UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF CALIFORNIA

----oo0oo----

CONCRETE WASHOUT SYSTEMS,

INC., a California

corporation,

NO. CIV. S-04-1005 WBS DAD

Plaintiff,

v. MEMORANDUM AND ORDER

RE: MOTION FOR SUMMARY

JUDGMENT

MINEGAR ENVIRONMENTAL SYSTEMS,

INC., a California

corporation, PETER J. MINEGAR,

and DOES 1-10,

Defendants.

----oo0oo---- 

Plaintiff Concrete Washout Systems, Inc. (“CWS”) brings

claims against defendants Minegar Environmental Systems, Inc.

(“MES”) and Peter J. Minegar for (1) a declaratory judgment

pursuant to 28 U.S.C. § 2201 (Declaratory Judgment Act) to the

effect that CWS invented an invention disclosed in a patent

application submitted by MES and that defendants have a duty to

correct the Minegar patent application to list Jenkins as the

inventor of the invention claimed in that application; (2)

service mark and trade name infringement under 15 U.S.C. §

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These claims include declaratory relief under state 1

law, trade name infringement under California Business and

Professions Code § 14415, misappropriation of trade secrets under

California Civil Code § 3426.1(d), common law misappropriation,

fraud, constructive fraud, breach of confidence, unjust

enrichment, unfair competition under California Business and

Professions Code § 17200, and false advertising under California

Business and Professions Code § 17500. 

Both plaintiff and defendants have objected to evidence 2

submitted in this matter. (See Pl.’s Mem. of P. & A. in Opp’n to

Defs.’ Mot. for Summ. J. at 13; Defs.’s Objection to CWS’

Evidence in Opp’n to Defs.’ Mot. for Summ. J.). These

evidentiary objections have been mooted either by responsive

authentication or by the court’s determination that it need not

rely on the evidence at issue. 

2

1125(a) (Lanham Act); and (3) several violations of California

law.1

Jurisdiction is predicated upon 15 U.S.C. § 1125(a)

(Lanham Act), 28 U.S.C. §§ 1331 (federal question) and 1338

(claims arising under Act of Congress relating to patents), 28

U.S.C. § 2201 (Declaratory Judgment Act), and 28 U.S.C. § 1367

(supplemental jurisdiction). Defendants move for summary

judgment on all plaintiff’s claims pursuant to Federal Rule of

Civil Procedure 56. 

I. Factual and Procedural Background2

CWS is incorporated as “Concrete Washout Systems, Inc.” 

(See Howard Reply Decl. Ex. H (Printout form California Business

Portal)). CWS licenses concrete washout containers to licensees

who in turn rent them to their contractor customers. (See Howard

Decl. Ex. M (Pl.’s Response to Interrogs.) at 2). On or about

February 7, 2003, Mark Jenkins, president and shareholder of CWS,

filed a patent application for a concrete washout container. 

(Gibson Decl. Ex. B-1 (Jenkins Dep.) 47:3-8; Howard Decl. Ex. D

(Jenkins Dep.) 25-9:16)). The invention is a system to collect

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3

concrete waste and residue water. (Gibson Decl. Ex. B-1 (Jenkins

Dep.) Ex. 5 (patent application)). Thereafter, Jenkins assigned

his patent application to CWS. (See Howard Decl. Ex. M (Pl.’s

Response to Interroggs. at 2)).

Defendant Peter J. Minegar (“Mr. Minegar”) has been a

concrete contractor for over 25 years and owns Minegar

Contracting, Inc. (“Minegar Contracting”). Minegar Contracting

is a concrete contracting company which produces concrete floors

and paving for commercial and industrial projects. Minegar

Contracting’s operations produce substantial amounts of concrete

waste residue, commonly known as “concrete washout,” that must be

disposed of in accordance with state and federal regulations. 

(Minegar Decl. ¶¶ 1-2). 

In June 2003, Minegar Contracting began designing a

container dedicated to the collection and disposal of concrete

washout waste. (Minegar Decl. ¶¶ 1-3). In June of 2003, Mr.

Minegar engaged steel fabricator Serrano Motor Company

(“Serrano”) to manufacture a concrete washout container according

to his specifications. (Id. ¶ 3). Thereafter, Mr. Minegar

uncovered CWS’ website on which it advertised its own concrete

washout container. (Id. ¶ 4). As his interest piqued, Mr.

Minegar met and spoke with representatives from CWS on or about

July 25, 2003. (See Howard Decl. Ex. A (Minegar Dep.)

(hereinafter “Minegar Dep.”) 36:15-25). Mr. Minegar expressed an

interest in becoming a CWS licensee and requested an opportunity

to meet with CWS to discuss a business relationship. (Id.). Mr.

Minegar was later shown one of CWS’ containers on a job site. 

(Howard Decl. Ex. E (Neilsen Dep.) 13:12-23). Mr. Minegar then

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4

began negotiations with Mr. Jenkins for a license fee for CWS’

concrete washout container. (Minegar Dep. 41:3-42:2). 

While negotiations were still pending, CWS sent Mr.

Minegar a standard information packet that included a cash flow

forecast. (Howard Decl. Ex. R (Information Packet) and R.1 (Cash

Flow Forecast)). Roger Engelsgaard, a shareholder and officer of

CWS, (Howard Decl. Ex. D (Jenkins Dep.) 7:25-9:16), sent Mr.

Minegar a draft agreement on August 15, 2003. (Id. Ex. S (Draft

Agreement). Mr. Minegar states that he was dissatisfied with the

proposed terms. (See Minegar Dep. 79:9-21). 

At the August 21, 2003 meeting, Kevin Mickelson

(another shareholder and officer of CWS) and Mr. Engelsgaard took

Mr. Minegar on a tour of CWS’ operations and showed him the basic

operations of CWS’ concrete washout container. (Id. 55:11-57:13;

Howard Decl. Ex. D (Jenkins Dep.) 7:25-9:16). Mr. Minegar also

asked to see CWS’ patent application so he could evaluate the

value of the CWS container as a licensed product. (Minegar Dep.

57:6-11). Instead, CWS chose to provide Mr. Minegar with a

patentability opinion letter that its lawyer, John O’Banion, had

prepared concerning the container. (Howard Decl. Ex. B

(Mickelson Dep.) 66:11-14). 

Thereafter, Mr. Minegar sent CWS a letter terminating

negotiations on September 11, 2003. (Minegar Dep. 115:17-

117:11). Mr. Minegar completed development of his own concrete

washout container in late 2003, then began marketing the

container through MES in early 2004. (See Howard Decl. Ex. X

(Photograph of Minegar’s Container)). Mr. Minegar then filed a

patent application for his concrete washout container and

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Defendants do not point to any evidence of the 3

assignment to MES. However, CWS does not dispute that such an

assignment occurred.

5

assigned the application to MES. (See Minegar Dep. 10:3-5).3

CWS retained an expert who stated in a report that, in his

opinion, most of the claims in Minegar’s patent application are

derivative of CWS’ invention and that CWS is the proper inventor

of most of the claims. (Maquire Decl. Ex. A (Rule 26 Report of

Daniel P. Maguire dated May 10, 2005). 

A Stormwater Best Manual Practices (“BMP”) Handbook

dated January 2003 requires construction entities to label their

disposal areas with the term “concrete washout.” (Howard Decl.

Ex. E (Storm Water Handbook)). Mr. Minegar states that

defendants place the term “Concrete Washout Only” on their

containers to provide notice as to the type of material that

should be deposited in their containers. (Minegar Decl. ¶ 12). 

Mr. Mickelson, CWS’ vice president, has testified that

CWS coined the phrase “concrete washout.” (Gibson Decl. Ex. C-1

(Mickelson Dep.) 141:12-21). CWS uses the term “concrete

washout” on its website and its marketing materials to refer to

concrete waste. (See Concrete Washout Systems, Inc., CWS

Solutions and Benefits (July 6, 2005) available at

http://www.concrete.com/pages/cws_solutions/; see also Howard

Decl. Ex. DD (CWS’ Marketing Materials). Mr. Mickelson also

testified that the term “concrete washout” is used as a label for

“any sort of structure that is used to capture and contain

concrete waste.” (Howard Decl. Ex. B (Mickelson Dep.) 7:52-6;

143:4-11). An Erosion Control Association News Letter published

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6

in 2002 refers to concrete waste as “concrete washout.” (Howard

Reply Decl. Ex. D (Erosion Control Association News Letter)).

On May 24, 2004, CWS filed this action against

defendants. CWS amended its complaint on September 30, 2004. 

Defendants now move for summary judgment on all CWS’ claims. 

II. Discussion

The court must grant summary judgment to a moving party

“if the pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, show

that there is no genuine issue as to any material fact and that

the moving party is entitled to judgment as a matter of law.” 

Fed. R. Civ. P. 56(c). The party adverse to a motion for summary

judgment may not simply deny generally the pleadings of the

movant; the adverse party must designate “specific facts showing

that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e);

Celotex Corp. v. Catrett, 477 U.S. 317 (1986). Simply put, “a

summary judgment motion cannot be defeated by relying solely on

conclusory allegations unsupported by factual data.” Taylor v.

List, 880 F.2d 1040, 1045 (9th Cir. 1989). The nonmoving party

must show more than a mere “metaphysical doubt” as to the

material facts. Matsushita Elec. Indus. Co. v. Zenith Radio, 475

U.S. 574, 587 (1986). 

A. Declaratory Relief Under 28 U.S.C. § 2201 

Pursuant to 28 U.S.C. §§ 1338 and 2201, and 35 U.S.C. §

116, plaintiff seeks a declaratory judgment that (1) Jenkins is

the inventor of the invention described in the Minegar patent

application and (2) defendants have a duty to correct the Minegar

patent application to list Jenkins as the inventor of the

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Plaintiff also seeks a declaratory judgment that 4

defendants have a duty to assign to CWS the Minegar patent

application and all rights associated with that application. 

However, plaintiff bases this claim for relief on state law. 

(Id.). Therefore, this claim will be addressed elsewhere.

Defendants cite Eli Lilly & Co. v. Aragdigm Corp., 276 5

F.3d 1352, 1356 n.1 (Fed. Cir. 2004) for the proposition that 35

U.S.C. § 116 does not create a cause of action to modify

inventorship on pending patent applications. (See Defs.’ Mem. of

P. & A. in Support of Defs.’ Mot. for Summ. J. at 11). Eli Lilly

does support this proposition. However, the case does not hold

that courts lack subject matter jurisdiction over inventorship

claims based on 28 U.S.C. § 1338(a). Because plaintiff brings

this cause of action under 28 U.S.C. § 1338(a), Eli Lilly is

inapposite.

7

invention claimed in that application. (See Pl.’s Mem. of P. &

A. in Opp’n to Defs.’ Mot. for Summ. J. at 11-12). Defendants 4

make two arguments in response. First, defendants contend that

the court does not have subject matter jurisdiction to reach

issues of inventorship. Second, defendants argue that, even if

the court does have subject matter jurisdiction to reach issues

of inventorship, the court should decline to exercise that

jurisdiction, because such issues are best left for the Patent

and Trademark Office to decide. Of defendants’ arguments, only

the latter prevails.

Several district courts, whose reasoning the court

finds persuasive, have determined that federal courts have

subject matter jurisdiction to resolve inventorship issues under

28 U.S.C. § 1338(a). See Post Peformance, LLC v. Renaissance 5

Imports, Inc., 333 F. Supp. 2d 834 (E.D. Mo. 2004); Murray v.

Gemplus Int’l, S.A., 2002 U.S. Dist. LEXIS 22272 (E.D. Pa. Oct.

29, 2002); Display Research Labs., Inc. v. Telegen Corp., 133 F.

Supp. 2d 1170 (N.D. Cal. 2001); Mieling v. Norkar Techs., 176 F.

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8

Supp. 2d 817 (N.D. Ill. 2001); Heinken Tech. Servs. v. Darby, 103

F. Supp.2d 476 (D. Mass. 2000); but see Sagoma Plastics, Inc. v.

Gelardi, 366 F. Supp. 2d 185 (D. Me. 2005)(finding there would be

no cause of action under § 116 on which to go forward even if

subject matter jurisdiction were appropriate). Therefore, the

court rejects defendants’ first argument.

However, even where a court has subject matter

jurisdiction to grant declaratory relief, it is well settled that

the court has discretion to decline to exercise that

jurisdiction. See Telegen, 133 F. Supp. 2d at 1175(noting that

“[t]he decision to grant declaratory relief is a matter of

discretion, even when the court is presented with a justiciable

controversy.”)(citing A.L. Mecling Barge Lines, Inc. v. United

States, 368 U.S. 324, 331 (1961)(additional citations omitted);

Post Performance, 333 F. Supp. 2d at 840(noting that court has

discretion to decline to exercise jurisdiction where declaratory

relief is requested).

It is thus not surprising that even some of the courts

that have found subject matter jurisdiction over inventorship

issues under 35 U.S.C. § 116, have declined to exercise that

jurisdiction when requested to grant declaratory relief regarding

such issues. See Telegen, 133 F. Supp. 2d 1170(declining to

exercise jurisdiction in part because PTO was better forum for

resolving inventorship disputes); Mieling, 176 F. Supp. 2d at

819-20(holding that established procedures of the PTO were a more

apt vehicle for determining the inventorship of the claims in the

patent application). 

Because the PTO has not yet had the opportunity to

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Whenever through error a person is named in an 6

application for patent as the inventor, or through

error an inventor is not named in an application, and

such error arose without any deceptive intention on his

part, the Director [of the United States Patent and

Trademark Office] may permit the application to be

amended accordingly, under such terms he prescribes.

35 U.S.C. § 116(emphasis added).

The error of omitting inventors or naming persons who 7

are not inventors shall not invalidate the patent in

which such error occurred it if can be corrected as

provided in this section. The court before which such

matter is called in question may order correction of

the patent on notice of hearing of all parties

concerned and the Director shall issue a certificate

accordingly. 

35 U.S.C. § 256(emphasis added).

9

reach the issues of inventorship disputed in this case, the court

determines that it would be best to decline to exercise its

jurisdiction over this claim. This decision comports with the

text of the Patent Act which implicitly recognizes that the court

is best advised to reach issues of inventorship after the PTO has

reached them. Specifically, 35 U.S.C. § 116 makes it the

prerogative of the Director of the PTO to correct errors in

inventorship of pending patent applications. In contrast, 35 6

U.S.C. § 256 authorizes federal courts to adjudicate inventorship

of a patent after the patent has issued. 

7

The statutory scheme seems to have been developed with

the understanding that adjudicating claims over inventorship in

patent applications would disrupt the patent application system. 

As defendants note in their reply, they are free to work through

the regular patent process, amending their patent application to

the extent necessary to avoid having it read on CWS’ patent

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The relevant provision of the Lanham Act states that 8

Any person who, on or in connection with any goods or

services, or any container for goods, uses in commerce

any word, term, name, symbol, or device, or any

combination thereof, or any false designation of

origin, false or misleading description of fact, or

false or misleading representation of fact, which–

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person with

another person, or as to the origin, sponsorship,

or approval of his or her goods, services, or

commercial activities by another person, or

(B) in commercial advertising or promotion,

misrepresents the nature, characteristics,

qualities, or geographic origin of his or her or

another person’s goods, services, or commercial

activities,

10

application, or, perhaps, even abandoning it. (See Reply Brief

in Supp. of Defs.’ Mot. for Summ. J. (“Reply Brief”) at 7). If

defendants abandon their application or if the PTO denies it, the

inventorship issues at stake in this case may become moot. On

the other hand, should the PTO decide to grant defendants’ patent

application, CWS can always bring a claim challenging the

inventorship of the patent under 35 U.S.C. § 256. CWS suffers

only delay from this court’s decision to let the PTO patent

application review process run its natural course, whereas,

reaching the inventorship issues now would be a waste of judicial

resources. The court thus declines to exercise its discretion to

reach issues that may disappear on their own. 

B. Service Mark and Trade Name Infringement Under 15

U.S.C. § 1125(a) 

Plaintiff contends that defendants have infringed its

unregistered trademark and/or trade name, “Concrete Washout,” in

violation of the Lanham Act. (See Pl.’s Mem. & P. & A. in Opp’n 8

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shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged

by such act.

15 U.S.C. § 1125(a)(emphasis added). 

11

to Defs.’ Mot. for Summ. J. at 25). Defendants argue that CWS’

actual trademark and trade name are actually “Concrete Washout

Systems, Inc.” (See Howard Reply Decl. Ex. H (Printout form

California Business Portal)). Defendants contend that this

distinction is relevant because the more general term “Concrete

Washout” is broader in scope than CWS’ actual trademark/trade

name. However, the court need not decide this issue because,

even if CWS can claim the broader term “Concrete Washout” as its

own, the term is generic and not protected by the Lanham Act. 

Because the same standards apply to trademark and trade

name infringement, and because courts, like the parties in this

case, rarely distinguish between the two types of infringement,

the court analyzes the two claims together. See Accuride Int’l,

Inc. v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir. 1989)

(noting the overlap between the types of infringement and the

overlapping standard for determining both types of infringement). 

Case law recognizes four different categories of terms

with respect to trademark/trade name protection under the Lanham

Act: (1) generic, (2) descriptive, (3) suggestive, and (4)

arbitrary or fanciful. Filipino Yellow Pages, Inc. v. Asian

Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). The

strength of a mark is determined by its placement on the

continuum of marks from “generic,” afforded no protection,

through “descriptive” or “suggestive,” given moderate protection,

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to “arbitrary” or “fanciful,” awarded maximum protection. 

Ultrapure Sys. v. Ham-Let Group, 921 F. Supp. 659, 662 (N.D. Cal.

1996). According to the Ninth Circuit, “[a] generic term is one

that refers, or has come to be understood as referring, to the

genus of which the particular product or service is a species. 

It cannot become a trademark [or trade name] under any

circumstances.” Filipino, 198 F.3d at 1147.

The evidence submitted establishes that “concrete

washout” is not a trademark or trade name, but a generic term

which refers to concrete waste residue, ordinarily consisting of

a mixture of concrete and water. Even if CWS’ contention that it

initially coined the term is true (see Gibson Decl. Ex. C-1

(Mickelson Dep.) 141:12-21), the evidence demonstrates that the

term has become generally used. 

CWS admits that Mickelson testified that other parties

have used the words “concrete washout” in referring to concrete

waste. (Pl.’s Mem. in Opp’n to Defs.’ Mot. for Summ. J. at 23). 

CWS also uses the term “concrete washout” generically on its

website and marketing materials to refer to concrete waste. (See

Concrete Washout Systems, Inc., CWS Solutions and Benefits (July

6, 2005) available at http://www.concrete.com/pages/cws_

solutions/(“We at CWS are committed to ensuring our product and

services are the solution to the problems associated with

concrete washout containment on jobsites.”)(emphasis added); see

also Howard Decl. Ex. DD (CWS’ Marketing Materials)

(referring to “concrete washout containment areas”)). Defendants

overstate the significance of CWS’ use of the term “concrete

washout” by claiming the use estops CWS from alleging trademark

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Defendants cite Bellsouth Corp. v. White Directory 9

Publishers, Inc., 42 F. Supp. 2d 598 n.5 (M.D.N.C. 1999) for the

proposition that CWS is estopped from alleging trademark

infringement. However, Bellsouth does not go so far. Rather, it

merely recognizes generic use as “strong evidence” of

genericness. Id.

13

or trade name infringement. Nevertheless, the Ninth Circuit 9

has recognized that such use is “strong evidence” that the term

is generic. Self-Realization Fellowship Church v. Anada Church

of Self-Realization, 59 F.3d 902, 906-07 (9th Cir. 1995). 

Defendants also point to an Internal Erosion Control Association

newsletter published in 2002 and published cases (with dates

prior to when Jenkins filed his patent application) which refer

to concrete waste as “concrete washout.” (See Howard Reply

Decl., Exs. D (Erosion Control Association Newsletter) & E (Storm

Water Handbook)); see also Dietrich Int’l Truck Sales, Inc. v.

J.S. & J. Services, Inc., 3 Cal. App. 4th 1601, 1611 (1992)

(discussing “physical injury to the land itslef, such as . . .

the dumping of concrete washout.”); Schweitzer Constr. v. Ohio

DOT, 62 Ohio Misc.2d 140, 145 (1990)(“ODOT took no samples of

this concrete washout.”). Together, this evidence demonstrates

that “concrete washout” is a generic term used to refer to waste

material consisting of a mixture of concrete and water.

CWS attempts to split hairs by arguing that “concrete

washout” may be generic as applied to concrete waste but not as

applied to a concrete waste container. (See Pl.’s Mem. of P. &

A. in Opp’n to Defs.’ Mot. for Summ. J. at 23). This artificial

distinction is unavailing. The evidence before the court also

establishes that “concrete washout,” as used in reference to bins

used to store waste, is generic. 

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Defendants point to the California Stormwater BMP

Handbook dated January 2003, which requires construction entities

to label their disposal areas with the term “concrete washout.” 

(See Howard Decl. Ex. E (Storm Water Handbook)). Mr. Mickelson,

CWS’ vice president, even tacitly acknowledged that “concrete

washout” as it relates to a container to store concrete washout

is generic, when he testified that he has seen a “concrete

washout” label applied to “any sort of structure that is used to

capture and contain concrete waste.” (Howard, Decl. Ex. B

(Mickelson Dep.) 7:52-6; 143:4-11). This evidence alone is

sufficient to grant summary judgment. 

Additionally, the court applies the who-are-you/whatare-you test, established by the Ninth Circuit, which holds that

“if the primary significance of the trademark is to describe the

type of product, rather than the producer, the trademark [is] a

generic term and [cannot be] a valid trademark.” Filipino, 198

F.3d at 1146. Applying this test here, there is sufficient

evidence that the term “concrete washout” is associated with the

type of product rather than the producer. A concrete washout

container is simply that, a container in which to deposit

concrete washout. The term says nothing about the product’s

producer. Because the term is generic, it cannot be protected. 

This result is not altered by CWS’ contention that the

term “concrete washout” is somehow “suggestive” and thus entitled

to protection under the Lanham Act. To determine whether a

trademark is suggestive, a court looks at the imaginativeness

involved in the suggestions (i.e. how immediate and direct is the

thought process from the mark to the particular product.). Japan

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Telecom, Inc. v. Japan Telecom Am., Inc., 287 F.3d 866, 873 (9th

Cir. 2002). If the mental leap between the word and the

product’s attribute is not almost instantaneous, this strongly

indicates suggestiveness. Id. “Concrete washout” is not an

imaginative term. Again, it refers to a waste product. When

associated with a container, the term suggests nothing other than

that the container is a suitable place to dump the waste product. 

The term invokes no suggestion of anything more than a generic

container for concrete washout disposal. 

C. Remaining State-Law Claims

The court has supplemental jurisdiction over Valadez’s

state-law claims pursuant to 28 U.S.C. § 1367(a). Under 28

U.S.C. § 1367(c)(3), a district court may decline to exercise

supplemental jurisdiction over state law claims where the court

has dismissed all claims over which it has original jurisdiction. 

Voigt v. Savell, 70 F.3d 1552, 1565 (9th Cir. 1995). “In the

usual case in which all federal-law claims are eliminated before

trial, the balance of factors to be considered under the pendent

jurisdiction doctrine – judicial economy, convenience, fairness,

and comity - will point toward declining to exercise jurisdiction

over the remaining state-law claims.” Carnegie-Mellon Univ. v.

Cohill, 484 U.S. 343, 350 n.7 (1988). The balance of factors

indicates that a case properly belongs in state court when the

federal-law claims have dropped out of the lawsuit in its early

stages and only state-law claims remain. Id. 

Here, CWS’ federal claims will all be dismissed prior

to trial. Because the court was able to decide CWS’ federal

claims without reaching the great majority of issues underlying

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CWS’ state-law claims remaining in this case, the court will

decline to exercise supplemental jurisdiction over the state-law

claims pursuant to 28 U.S.C. § 1367(c)(3).

IT IS THEREFORE ORDERED that:

(1) defendants’ motion for summary judgment as to

plaintiff’s claims for declaratory relief pursuant to 28 U.S.C. §

2201 and for service mark and trade name infringement under 15

U.S.C. § 1125(a) be, and the same hereby is, GRANTED; and

(2) plaintiff’s remaining state-law claims be, and the

same hereby are, DISMISSED pursuant to 28 U.S.C. § 1367(c)(3). 

DATED: July 12, 2005

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