Atlanta Allergy and Asthma Clinic, Pa v. Allergy & Asthma of Atlanta, LLC

Citations: 685 F. Supp. 2d 1360; 81 Fed. R. Serv. 425; 2010 U.S. Dist. LEXIS 3788; 2010 WL 298964Docket: 1:08-cv-3033

Court: District Court, N.D. Georgia; January 19, 2010; Federal District Court

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The case involves a trademark dispute between Plaintiff Atlanta Allergy and Asthma Clinic, P.A. and Defendant Allergy. Asthma of Atlanta, LLC, concerning the exclusive use of the mark "Atlanta Allergy. Asthma Clinic." Plaintiff has utilized this mark since 1996, claims to be the largest allergy and asthma practice in the Southeastern U.S., and has made significant investments in advertising and public relations to promote its services. The Plaintiff's efforts include a daily "Pollen Count" service, distinguishing its brand in the community. 

Defendants began using the name "Allergy. Asthma of Atlanta" in late 2007, leading to claims of actual confusion regarding affiliations with the Plaintiff. Additionally, Plaintiff alleges that Defendants copied content from its website, which Defendants admit, thereby misrepresenting their status as a premier facility for allergy and asthma treatments. The Plaintiff's legal action encompasses claims of trademark infringement, unfair competition, and copyright infringement. Both parties have filed motions for summary judgment, with the court addressing the standard for such motions, which requires the moving party to show that no genuine issue exists regarding material facts.

In Herzog v. Castle Rock Entertainment, the court established that once the moving party meets its burden for summary judgment, the non-moving party must present specific facts demonstrating a genuine issue for trial, rather than merely relying on their pleadings. It is crucial that facts are viewed in favor of the non-moving party only if a genuine dispute exists. If the evidence presents two conflicting narratives, the court is not obligated to accept the version contradicted by the evidence. Credibility assessments and evidence weighing are reserved for the jury, and if factual issues remain, the court must deny the summary judgment motion and allow the case to proceed to trial. A party opposing summary judgment must show more than a mere metaphysical doubt regarding facts; if the overall record does not support a rational trier of fact's potential ruling in favor of the non-moving party, there is no genuine issue for trial. Summary judgment is appropriate when the facts overwhelmingly support the moving party.

Regarding trademark infringement under the Lanham Act, a plaintiff must demonstrate that the defendant used the mark in commerce without consent and that such use was likely to deceive or cause confusion. To succeed, the plaintiff must prove it was the first to use the mark in the relevant market, that the mark is valid, and that the defendant's use likely confuses consumers. The plaintiff has used the mark "Atlanta Allergy and Asthma Clinic" since at least 1996, while the defendants began using "Allergy and Asthma of Atlanta" in 2007. The key legal questions are the validity of the mark and the likelihood of consumer confusion. A mark must be valid and distinctive to warrant protection, and the court must determine distinctiveness before addressing likelihood of confusion, as the strength of the mark influences its protection scope.

Four categories of distinctiveness classify marks in order of strength: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Suggestive, arbitrary, and fanciful marks are inherently distinctive and protected. The mark 'Atlanta Allergy and Asthma Clinic' is recognized as geographically descriptive, which only gains protection if it acquires secondary meaning. Secondary meaning establishes a connection in consumers' minds between the mark and its producer, requiring proof that the mark's primary significance is the producer rather than the product. A high standard of evidence is necessary to demonstrate secondary meaning for descriptive terms. The existence of secondary meaning is evaluated based on factors such as the duration and manner of use, advertising efforts, and public identification of the mark with the producer. While customer surveys can support claims of secondary meaning, they are not mandatory. Determining whether a mark has acquired secondary meaning is a factual question, and if a genuine dispute exists regarding this matter, summary judgment cannot be granted. The court is currently assessing if the Plaintiff's mark has achieved secondary meaning, noting that the Plaintiff has used the mark since at least 1996, while also claiming extensive advertising and community engagement to support its case for secondary meaning.

Defendants assert that over 20,000 businesses incorporate the term 'Atlanta' in their names, including 135 medical practices and eight allergy and asthma practices that utilize 'Allergy' and 'Asthma.' They argue that the Plaintiff cannot demonstrate exclusive use of its mark since Atlanta ENT Allergy and Asthma Associates, P.C. opened in 1999 using all the terms in Plaintiff's name. Defendants contend that analyzing the Plaintiff's name by its components is ineffective, emphasizing that a trademark's validity is evaluated as a whole. Although Plaintiff has used its mark since 1996, the Court finds that this alone does not prove secondary meaning.

Regarding advertising, Plaintiff claims to have invested approximately $1.4 million in advertising from 1996 to 2006, prior to Defendants' operations. However, the Court highlights that the effectiveness of advertising, rather than the expenditure amount, determines public identification of the mark. Despite substantial spending, it does not inherently indicate that the public associates the mark with Plaintiff’s services.

Plaintiff also cites various promotional efforts, such as media coverage, community outreach events, and specific services like the Pollen Count, to establish a public connection between its name and its services. They report receiving numerous inquiries about pollen levels, indicating recognition of their brand. Additionally, Plaintiff employed a consultant to enhance patient referrals, resulting in meetings with approximately 310 medical providers, of which only 14 were unaware of Plaintiff's services.

Defendants counter that Plaintiff's marketing primarily targets physicians rather than the general public, arguing that this does not effectively create a public association with Plaintiff's mark. They also point out that while Plaintiff's physicians gain media exposure, they are identified individually rather than as representatives of Plaintiff's services, which further dilutes the connection in the public's mind.

Defendant contends that Plaintiff's pollen count reporting does not qualify as a medical service and lacks evidence of promoting secondary meaning. Plaintiff argues that its pollen count service is closely related to its allergy and asthma medical services, asserting considerable promotional efforts for its brand. While Plaintiff has made efforts to promote its mark, these alone do not establish secondary meaning. 

To assess whether the public associates Plaintiff's name with its services, courts require evidence of recognition, typically through surveys. Plaintiff submits a survey conducted by expert Kenneth L. Bernhardt, which indicates that 73% of respondents associate Plaintiff's name with its services. Dr. Bernhardt asserts that this demonstrates substantial market awareness of Plaintiff's mark. 

Defendants seek to exclude the survey, claiming it is flawed due to its exclusion of actual or potential allergy and asthma patients, reliance solely on referring physicians, failure to test for a singular source of services, non-adherence to scientific methods, and compromised objectivity due to contact between Plaintiff's counsel and survey respondents. They reference Federal Rules of Evidence, particularly Rule 702, which outlines the criteria for expert testimony, emphasizing the need for reliable methodology and relevance in assisting the trier of fact. The district court's role as a gatekeeper involves assessing the expert's qualifications, the reliability of their methodology under Daubert standards, and the utility of their testimony.

Daubert establishes a checklist for assessing the reliability of scientific expert testimony, highlighting five key factors: (1) testability of the expert's technique or theory; (2) peer review and publication status; (3) known or potential error rates; (4) existence of standards and controls; and (5) general acceptance in the scientific community. The Eleventh Circuit asserts that technical deficiencies in surveys affect their weight rather than admissibility. Plaintiff's expert, Dr. Bernhardt, a seasoned marketing professor with extensive experience, conducted a survey to gauge public awareness of medical practices specializing in allergy treatment. The survey included an 'unaided' question revealing 41% unaided awareness of the Plaintiff's practice compared to 8% for the Defendants, and an 'aided' question demonstrating 73% awareness of the Plaintiff among referring doctors versus 47% for the Defendants. Dr. Bernhardt concluded that the Plaintiff's mark possesses significant secondary meaning and market recognition. In response to challenges regarding the survey's universe, the Plaintiff justified using a respondent pool of Defendants' referring doctors, noting that Defendants primarily rely on doctor referrals for patient acquisition.

Plaintiff argues that the Survey conducted primarily among Defendants' referring doctors introduces bias favoring Defendants, leading to an under-representation of Plaintiff's secondary meaning in the market. The Court must evaluate the survey's reliability by defining the 'universe' relevant to the case, as established in Citizens Fin. Group, Inc. v. Citizens Nat'l Bank of Evans City. The 'universe' should reflect the population whose perceptions are pertinent, and if the wrong individuals are surveyed, results may lack relevance. The former Fifth Circuit asserted that trademark surveys must include a representative sample of potential purchasers of the junior user's goods or services.

Defendants claim the Survey is flawed for excluding the consuming public and only surveying 51 referring physicians. In response, Plaintiff cites legal precedent allowing the inclusion of individuals who influence consumer choices, such as referring doctors, arguing they represent a relevant segment of the consuming public. The Court finds that the inclusion of these physicians in the survey is not inherently flawed, as their opinions are significant to understanding secondary meaning, especially since they are the primary source of referrals to Plaintiff's and Defendants' services. 

While Defendants contend that a broader survey might yield different results, this affects the survey's weight rather than its admissibility. Ultimately, the Court concludes that the Survey is relevant for assessing whether Plaintiff's name has acquired secondary meaning in the market.

Defendants challenge the reliability and relevance of Plaintiff's Survey, arguing it fails to demonstrate that respondents associated Plaintiff's mark with a single source of medical services, a necessary element to establish secondary meaning. They assert that merely being the "most commonly associated" entity is insufficient. In response, Plaintiff contends the Survey inherently sought to determine the source of its services through inquiries about its name and cites case law affirming brand awareness surveys as valid evidence of secondary meaning. The Court finds the Survey relevant for assessing whether Plaintiff's mark has acquired secondary meaning.

Defendants also criticize the objectivity of Dr. Bernhardt's coding of Survey responses, pointing out that only 3.9% of respondents specifically identified "Atlanta Allergy and Asthma Clinic," while 21.57% recognized the name without "Clinic." They argue that Dr. Bernhardt's method of counting responses related to Plaintiff's mark is flawed. In contrast, Plaintiff defends the coding approach, asserting that it aligns with how the name is commonly referenced and that responses were only counted if respondents recognized Plaintiff's full name in a subsequent question. The Court concludes that Defendants' concerns about objectivity pertain to the weight of the evidence rather than its admissibility.

Additionally, Defendants allege a lack of objectivity due to a paralegal from Plaintiff's counsel contacting potential survey respondents, suggesting this could taint results. Plaintiff clarifies that the calls were strictly for verifying contact information without revealing any litigation details. The Court finds Defendants' claims speculative and unsupported by evidence.

The Court finds that there is insufficient evidence to exclude Plaintiff's Survey results, determining that they meet the requirements of Rule 702. Expert Dr. Bernhardt is deemed qualified to testify on the secondary meaning of Plaintiff's mark, with his methodology found reliable under Daubert standards. His testimony is relevant, and its probative value outweighs any potential prejudicial effect, leading to the denial of Defendants' motion to exclude this evidence. The Court continues to assess the public's identification of Plaintiff's mark with its services. Plaintiff claims there have been 12 to 25 instances of actual confusion between the parties' marks within a year, including misdirected calls intended for Plaintiff and incidents involving patients mistakenly engaging with Defendants. Plaintiff argues these instances demonstrate consumer confusion, which is relevant to establishing secondary meaning. Defendants counter that Plaintiff has not shown any confused patients sought services from them or that the callers about the pollen count were potential consumers. They assert that familiarity among referring physicians does not prove public association of Plaintiff's name with its services. The Court concludes that the question of whether the consuming public associates Plaintiff's mark with its services is fact-intensive and remains disputed, making summary judgment inappropriate. The evidence of public association through telephone calls may suggest recognition of Plaintiff's mark but does not definitively establish competition or secondary meaning.

Plaintiff has failed to demonstrate that its mark has acquired secondary meaning, leading to the denial of both Plaintiff's and Defendants' motions for summary judgment due to the presence of disputed material facts. The Court determined that Plaintiff did not establish a valid, protectable mark, and thus did not need to evaluate the likelihood of consumer confusion regarding Defendant's name. However, the Court analyzed this issue and found that Plaintiff also failed to show a likelihood of confusion based on the summary judgment record.

The likelihood of confusion in trademark infringement cases hinges on whether consumers may be misled about the relationship between the products or services of the parties involved, as outlined in 15 U.S.C. § 1125(a)(1)(A). The Eleventh Circuit considers several factors in this evaluation, including the strength of the mark, design similarity, service similarity, customer and advertising similarities, the intent of the defendant, and any evidence of actual confusion. No single factor is determinative, but the type of mark and evidence of actual confusion carry significant weight.

Plaintiff asserts that summary judgment should be granted due to instances of actual confusion, the strength of its mark, and similarities in marks and services. However, Defendant counters that Plaintiff has not substantiated claims of actual confusion, noting that the alleged instances primarily involve phone inquiries rather than formal transactions. Additionally, one cited instance of confusion involved a patient who mistakenly downloaded forms but was not genuinely confused about the practices. The Court reiterated that the evidence of actual confusion remains disputed, preventing either party from prevailing on this factor at the summary judgment stage.

The strength of a mark influences the likelihood of confusion. The Court cannot determine, based on the summary judgment record, whether the Plaintiff's mark has acquired secondary meaning, which is essential to establish its strength. Without this finding, the mark's strength cannot support a likelihood of confusion. 

The Plaintiff claims that its mark, "Atlanta Allergy Asthma Clinic," is confusingly similar to the Defendant's name, "Allergy and Asthma of Atlanta." Determining similarity is subjective and involves assessing the overall impression of the marks rather than individual features. The Court finds the marks sufficiently similar to suggest a likelihood of confusion.

Both parties offer similar medical services for asthma and allergies in Atlanta, which is undisputed. Factors favoring a likelihood of confusion include actual confusion instances and the similarity of services and marks. However, without a strong mark established for the Plaintiff and due to factual disputes on actual confusion, the Court cannot conclude a likelihood of confusion on summary judgment.

The Defendants argue for summary judgment, asserting that the Plaintiff's mark is weak and only the exact wording is protected. They highlight extensive third-party use of terms in the Plaintiff's mark, noting over 22,000 businesses use "Atlanta" in their name, including 135 medical practices. This usage suggests these terms are essential for businesses in the field to communicate their services and location. The Defendants contend that any protection for the Plaintiff's mark is limited to its precise wording, and even slight variations, such as omitting "Clinic" or changing the order of "Atlanta," would avoid infringement. They reference the Sun Banks case, which indicates that a mark's arbitrary nature does not guarantee absolute protection, and extensive third-party usage can diminish the likelihood of confusion.

The likelihood of confusion from a trademark variation depends on the strength of the mark and the distinctiveness of any additional features. A weak trademark may allow for minor alterations without causing confusion. The determination of the Plaintiff's trademark strength hinges on whether it has acquired secondary meaning, and the potential for confusion regarding the Defendant's name remains a factual dispute. Consequently, summary judgment cannot resolve these issues, necessitating a denial of the Defendants' motion.

In the copyright infringement claim, it is acknowledged that the Defendant copied material from the Plaintiff's website, which was removed on January 12, 2009, while the Plaintiff registered the copyright on January 13, 2009. The Plaintiff seeks summary judgment for copyright infringement, while the Defendant contests the availability of damages. Copyright owners have exclusive rights to reproduce and distribute their works, and to prove infringement, the Plaintiff must demonstrate entitlement to enforce the copyright and that the Defendant copied without authorization. 

Statutory damages require prior registration of the copyright before infringement. Here, since the Plaintiff registered after the infringement, only actual damages are available; however, the Plaintiff has no evidence of such damages and admits that the Defendant had no profits in 2008. While both parties concede the Defendant's liability for infringement, the Plaintiff's motion for summary judgment is granted, but the dispute over damages is limited to the Defendant's profits related to the infringement, as statutory damages are unavailable due to the timing of the registration.

Plaintiff has demonstrated Defendants' gross revenues but has not provided evidence linking those revenues to the alleged copyright infringement, resulting in Defendants being relieved of the burden to prove deductible expenses or profits from other sources. Consequently, the Court concludes that Plaintiff is not entitled to damages for the copyright infringement claim, granting Defendants' motion for partial summary judgment on this issue.

Regarding the false advertising claim, Plaintiff alleges Defendants plagiarized content from its website, falsely advertising themselves as a "premier facility" for treating allergies, asthma, and immunological diseases despite only being operational for a few months and reporting no profits in 2008. Under Section 43(a) of the Lanham Act, to succeed in a false advertising claim, a plaintiff must establish that the advertisements were false or misleading, had a material effect on consumer purchasing decisions, impacted interstate commerce, and resulted in injury. If an advertisement is deemed literally false, evidence of consumer deception is not required, but the plaintiff must still prove materiality.

The Court finds that Plaintiff has not provided sufficient evidence for all elements required under the Lanham Act, leading to the denial of its summary judgment motion on this claim. Defendants argue that the term "premier" is vague and constitutes non-actionable puffing. The Court agrees, stating that puffing is exaggerated advertising that no reasonable buyer would rely on and is not actionable under the Lanham Act. Thus, Defendants' motion for summary judgment on the false advertising claim is granted.

Additionally, Plaintiff filed an affidavit from Karen Porter, indicating she mistakenly filled out Defendants' new patient forms on October 21, 2009, which she brought to a scheduled appointment.

Plaintiff asserts that new evidence indicates actual confusion, while Defendants claim this evidence is inadmissible due to untimeliness, as it was not submitted with Plaintiff's July 27, 2009, motion for summary judgment. The Court evaluated Ms. Porter's affidavit and all evidence of actual confusion presented by Plaintiff, finding that material factual disputes remain regarding whether Plaintiff's mark, "Atlanta Allergy, Asthma Clinic," has acquired secondary meaning and whether Defendants' name, "Allergy, Asthma of Atlanta," is likely to cause confusion or deception. Consequently, the Court deems summary judgment inappropriate and does not address Defendants' motion to exclude the new evidence, resulting in its denial.

The unresolved trademark infringement claim against Defendants revolves around two primary trial issues: 1) the validity and protectability of Plaintiff's mark, including its secondary meaning, and 2) whether Defendants' name infringes upon Plaintiff's mark by causing confusion. The Court orders that Plaintiff's Amended Motion for Summary Judgment is partially granted and denied, while Defendants' Motion for Partial Summary Judgment is also partially granted and denied. Motions to exclude a consumer survey and to exclude Dr. Kenneth L. Bernhardt as Plaintiff's expert witness are denied, as is the motion to strike the notice of filing. Notably, Plaintiff claims extensive use and promotion of its mark since 1996, while Defendants challenge its historical usage and formal organization timeline. The individual Defendants are identified as co-founders of the Defendant entity. The document also distinguishes between generic and descriptive marks, emphasizing that generic marks cannot achieve trademark protection, while descriptive marks identify specific characteristics of a product or service.

Descriptive marks can be classified as simply descriptive, laudatorily descriptive, or geographically descriptive. A term perceived by consumers as merely descriptive of a product's characteristics, a geographical origin, or a personal name lacks inherent distinctiveness. Descriptive terms are not automatically protectable but can attain such status through acquiring secondary meaning, as established in Ice Cold Auto Air of Clearwater, Inc. v. Cold Air Accessories, Inc. A suggestive mark implies characteristics of a product but requires consumer imagination to identify those characteristics. Arbitrary or fanciful marks have no relation to the associated product. The determination of whether a mark is geographically descriptive hinges on whether it is the name of the place from which the goods originate, necessitating secondary meaning for protection.

The defendants challenge the plaintiff's use of the mark "Atlanta Allergy Clinic" from 1972 to 1996, asserting that the two marks must create a similar commercial impression for "tacking" purposes. The plaintiff argues that its continuous use of its current mark since 1996 is sufficient to establish secondary meaning. Furthermore, the plaintiff claims that the name change of Atlanta ENT Allergy and Asthma Associates, P.C. was a reaction to a cease and desist letter and that the entity no longer operates under an infringing name.

The plaintiff highlights that third-party usage of individual terms can help classify a mark as descriptive but does not influence a descriptive mark's eligibility for protection. The analysis focuses on whether the entire mark has acquired secondary meaning. Disputes about certain expenditures related to advertising, noted to be under $5,000, are mentioned. Additionally, the plaintiff's consultant's significant engagement with referring doctors in the Atlanta area is noted, which may assist in establishing secondary meaning. The plaintiff cites the Conagra case to support the argument that promotional efforts directed at non-end consumers can contribute to secondary meaning, referencing a promotional film's impact on market perceptions.

Promotion of a specific event is questioned regarding its link to the promotion of a corporation's mark and business. Defendants seek to exclude Dr. Kenneth L. Bernhardt as an expert witness if Plaintiff's survey is excluded; however, since the Court deems the survey admissible, the motion to exclude Bernhardt is denied. Defendants argue that Bernhardt's evidence is merely anecdotal, and they contend that the affidavit from Plaintiff's consultant about referring physicians' familiarity with Plaintiff's services is inadmissible hearsay—an assertion the Court agrees with. The Court clarifies that it need not analyze every factor for determining the likelihood of confusion, referencing AmBrit, Inc. v. Kraft, Inc. Plaintiff presents both survey evidence and examples of actual confusion to support its claims. Under Section 43(a) of the Lanham Act, any misleading use of terms or representations in commerce that misrepresents goods or services can lead to liability for damages. The materiality of deception is important, as not all misleading acts influence consumer decisions; however, Plaintiff fails to provide evidence that the alleged deception was material.