Allergy v. Allergy & Asthma Of Atlanta LLC

• Decision Date: 19 January 2010
• Docket Number: No. l:08-cv-3033-WSD.,l:08-cv-3033-WSD.
• Parties: ATLANTA ALLERGY AND ASTHMA CLINIC, P.A., Plaintiff, v. ALLERGY & ASTHMA OF ATLANTA, LLC; Maziar Rezvani, M.D.; and Luqman Seidu, M.D., Defendants.
• Court: U.S. District Court — Northern District of Georgia

685 F.Supp.2d 1360

ATLANTA ALLERGY AND ASTHMA CLINIC, P.A., Plaintiff,

v.ALLERGY & ASTHMA OF ATLANTA, LLC; Maziar Rezvani, M.D.; and Luqman Seidu, M.D., Defendants.

No. l:08-cv-3033-WSD.

United States District Court,

N.D. Georgia,

Atlanta Division.

Decided: Jan. 19, 2010.

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Joseph Duane Wargo, Samantha Dipolito, Wargo & French LLP, Atlanta, GA, for Plaintiff.

Jamie Ponder Woodard, Kelly 0. Wallace, Wellborn & Wallace, LLC, Atlanta GA, for Defendants.

OPINION AND ORDER

WILLIAM S. DUFFEY, JR., District

Judge.

This matter is before the Court on Plaintiff Atlanta Allergy and Asthma Clinic, P.A.'s ("Plaintiff) Amended Motion for Summary Judgment [83], on Defendant Allergy & Asthma of Atlanta, LLC's ("Defendant") Motion for Partial Summary Judgment [91], Defendant's Motion in Limine to Exclude Plaintiff's Evidence of a Consumer Survey [88], Defendant's Motion in Limine to Exclude Dr. Kenneth L Bernhardt as an Expert Witness for Plain- tiff [89], and on Defendant's Motion to Strike Notice of Filing [133],

I. BACKGROUND

This case is principally a trademark dispute between Plaintiff Atlanta Allergy and Asthma Clinic, PA. and Defendant Allergy & Asthma of Atlanta, LLC. Plaintiff claims the exclusive right to use the mark "Atlanta Allergy & Asthma Clinic," and that Defendants' name infringes upon the mark.

Both parties provide allergy and asthma services in Georgia. Plaintiff has used the mark "Atlanta Allergy & Asthma Clinic, " since 1996.¹ Plaintiff contends it is the largest allergy and asthma practice in the Southeastern United States and is one of the largest in the United States, with nineteen (19) office locations in the Atlanta area. Plaintiff further contends it has spent significant amounts of money to advertise, publicize, and promote its services which has resulted in patients, referring physicians, and other members of the public identifying Plaintiff's mark exclusively with Plaintiff's medical services.²

Plaintiff employs the Spizman Agency as a Public Relations Consultant to facilitate the branding of its mark through community and media exposure. Plaintiff's physicians have been featured in numerous media outlets regarding topics specific to allergy and asthma.³ Plaintiff also claims it has distinguished and branded its mark with the creation and reporting of its daily "Pollen Count." During the pollen season Plaintiff measures pollen particles per cubic meter at its research facility and provides this data to media outlets. Plaintiff contends it is the only certified pollen reporting station in the Atlanta area. Plaintiff argues that as a result of its efforts including its pollen count service, Plaintiff's name is specifically associated with its allergy and asthma services, its medical research, and its physicians.

In late 2007, Defendants began using the name "Allergy & Asthma of Atlanta" to identify and advertise their allergy and asthma services in Georgia.⁴ Plaintiff asserts that Defendants' use of the phrase "Allergy & Asthma of Atlanta" is causing actual confusion as to whether Defendants are affiliated with, authorized by, or otherwise related to Plaintiff.

Plaintiff further alleges that Defendants copied word-for-word a portion of Plaintiff's website and used that copyrighted material on Defendants' own website. Defendants admit this copying. Plaintiff contends that as a result of this plagiarism, Defendants falsely represented that they were a "premier facility in the Southeast for the treatments of allergy, asthma, and immunologic diseases."

Plaintiff brings this action for trademark infringement, unfair competition, and copyright infringement. Both parties move for summary judgment on all counts.

II. DISCUSSION

A. Standard on Summary Judgment

Summary judgment is appropriate where "the pleadings, the discovery and disclosure materials on file, and any affidavits 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 seeking summary judgment bears the burden of demonstrating the absence of a genuine dispute as to any material fact. Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1246 (11th Cir.1999). Once the moving party has met this burden, the nonmovant must demonstrate that summary judgment is inappropriate by designating specific facts showing a genuine issue for trial. Graham v. State Farm Mut. Ins Co., 193 F.3d 1274, 1282 (11th Cir.1999). The non-moving party "need not present evidence in a form necessary for admission at trial; however, he may not merely rest on his pleadings." Id.

"At the summary judgment stage, facts must be viewed in the light most favorable to the nonmoving party only if there is a 'genuine' dispute as to those facts." Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007). Where the record tells two different stories, one blatantly contradicted by the evidence, the Court is not required to adopt that version of the facts when ruling on summary judgment. Id. "[Credibility determinations, the weighing of evidence, and the drawing of inferences from the facts are the function of the jury...." Graham, 193 F.3d at 1282. "If the record presents factual issues, the court must not decide them; it must deny the motion and proceed to trial." Herzog, 193 F.3d at 1246. The party opposing summary judgment "must do more than simply show that there is some metaphysical doubt as to the material facts.... Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial." Scott, 550 U.S. at 380, 127 S.Ct. 1769 (quoting Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)). A party is entitled to summary judgment if "the facts and inferences point overwhelmingly in favor of the moving party, such that reasonable people could not arrive at a contrary verdict." Miller v. Kenworth of Dothan, Inc., 277 F.3d 1269, 1275 (11th Cir.2002) (internal quotations omitted).

B. Trademark Infringement

The Lanham Act provides protections to trademarks and service marks. A plaintiff can establish trademark infringement by showing that "its mark was used in commerce by the defendant without the registrant's consent and that the unauthorized use was likely to deceive, cause confusion, or result in mistake." McDonald's Corp. v. Robertson, 147 F.3d 1301, 1307 (11th Cir.1998) (citing Burger King Corp v. Mason, 710 F.2d 1480, 1491 (11th Cir. 1983)); accord 15 U.S.C. § 1114(l)(a) (prohibiting the "use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive").

To prevail in a trademark infringement action, a plaintiff must show three things: first, that it was the first to use the trademark in the same market; second, that its mark is valid; and third, that the defendant's use of the contested mark is likely to confuse consumers. Dieter v. B & H Indus, of S.W. Fla., Inc., 880 F.2d 322, 326 (11th Cir.1989); Burger King Corp. v. Mason, 710 F.2d 1480, 1491 (11th Cir.1983). Here, it is undisputed that Plaintiff used its mark, "Atlanta Allergy and Asthma Clinic," since at least 1996 and that Defendants did not begin using their name until 2007. At issue is whether "Atlanta Allergy & Asthma Clinic" is a valid mark and whether Defendants' use of "Allergy & Asthma of Atlanta" is likely to confuse consumers.

1. Validity of Mark

To be entitled to trademark protection, a mark must be valid and distinctive. Freedom Sav. & Loan Ass'n v. Way 757 F.2d 1176 (11th Cir.1985). A Court may not reach the question of likelihood of confusion until persuaded that the putative mark is sufficiently distinctive to warrant protection. Elan Plumbing, Inc. v. S.O.S. Fix-it, Inc., 781 F.2d 604, 610 (7th Cir. 1986). The strength and distinctiveness of the plaintiff's mark is a vital consideration in determining the scope of protection it should be accorded. John H. Harland Co.v. Clarke Checks, Inc., 711 F.2d 966, 973 (11th Cir.1983).

In ascending order of strength, there are four categories of distinctiveness in classifying a mark: (1) generic, descriptive, (3) suggestive, and (4) arbitrary or fanciful. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Suggestive, arbitrary and fanciful marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and thus are entitled to protection.⁵ Id.

Here the parties do not dispute that Plaintiff's mark, "Atlanta Allergy & Asthma Clinic," is geographically descriptive.⁶ A descriptive mark is entitled to protection only if it has acquired secondary meaning. Ice Cold Auto Air of Clearwater, Inc. v. Cold Air & Accessories, Inc., 828 F.Supp. 925, 931 (M.D.Fla.1993); see also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 14:1 (4th ed.2003) (geographically descriptive marks are a subset of descriptive marks and are treated like other descriptive marks).

Secondary meaning is the connection in the consumer's mind between the mark and the provider of the product or service. Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519 1525 (11th Cir.1991). To prove secondary meaning, the plaintiff must demonstrate that "the primary significance of the term in the minds of the consuming public is not the product but the producer." Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir.1979). A high degree of proof is necessary to establish secondary meaning for a descriptive term which suggests the basic nature of the product or service. American Telev. & Communic. Corp. v....