Cosmetic Derm. & Vein Cent. v. New Faces Skin Care

• Decision Date: 28 February 2000
• Docket Number: No. 98-73059.,98-73059.
• Parties: COSMETIC DERMATOLOGY AND VEIN CENTERS OF DOWNRIVER, P.C., Plaintiffs, v. NEW FACES SKIN CARE CENTERS, LTD., Skin Care Specialists, P.C., and New England Business Services, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Michigan

91 F.Supp.2d 1045

COSMETIC DERMATOLOGY AND VEIN CENTERS OF DOWNRIVER, P.C., Plaintiffs, v. NEW FACES SKIN CARE CENTERS, LTD., Skin Care Specialists, P.C., and New England Business Services, Inc., Defendants.

No. 98-73059.

United States District Court, E.D. Michigan, Southern Division.

February 28, 2000.

Kenneth Neuman, Leif K. Anderson, Hyman & Lippitt, Birmingham, MI, for plaintiff.

Jerome A. Galante, Plunkett & Cooney, Detroit, MI, for New Faces Skin Care Centers, Ltd., Skin Care Specialists, P.C., defendants.

Mark Hayduk, Hayduk, Andrews, Detroit, MI, for New England Business Service, Inc.

OPINION & ORDER GRANTING DEFENDANTS' MOTIONS FOR SUMMARY JUDGMENT AND DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT

EDMUNDS, District Judge.

This matter comes before the Court on three motions for summary judgment. In this trademark infringement action, brought under the Lanham Act, Plaintiff Cosmetic Dermatology and Vein Centers of Downriver, P.C. ("Cosmetic Dermatology") contends that the Defendants have violated the trademark rights in its business logo. Plaintiff uses the logo on letterhead and in advertisements to promote its dermatology and plastic surgery services. Defendants New Faces Skin Care Centers ("New Faces") and Skin Care Specialists, P.C., ("Skin Care") move jointly for summary judgment, arguing that the marks are not "substantially similar" and that in any event, the agreed upon facts do not meet the Sixth Circuit's "likelihood of confusion" test for infringement. Plaintiff, in turn, moves for summary judgment, arguing just the opposite. Defendant New England Business Services, ("New England") moves separately for summary judgment, arguing that the Court lacks subject matter jurisdiction as to them and, alternatively, that there is no infringement as a matter of law. As discussed below, the marks are not substantially similar. Under the eight factor test which applies to the determination of whether trademark infringement has occurred, there is no a likelihood of confusion. The Court GRANTS the Defendants' motions for summary judgment; and DENIES the Plaintiff's motion.

I. Facts

The facts in this case are not in dispute. Plaintiff, Cosmetic Dermatology and Vein Centers of Downriver, P.C. ("Cosmetic Dermatology"), operates a medical services center in the Downriver Detroit area. Cosmetic Dermatology offers medical services for the skin, including, inter alia, facial peels, dermabrasion and rejuvenation, as well as other dermatological services to alleviate such skin conditions as acne, sun-damaged skin, skin cancers, and psoriasis. Doctor Scott Friedman performs the medical services at Cosmetic Dermatology. To promote his business, Plaintiff employs the following mark, which he registered with the Federal Trademark Office on September 9, 1997: NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Defendant New Faces Skin Care Centers ("New Faces") provides marketing, bookkeeping, accounting, and general business expertise to the Detroit medical community. New Faces markets and promotes cosmetic dermatology services on behalf of several clientele. One of its clients is Defendant Skin Care Specialists, P.C., ("Skin Care"). Skin Care is owned and operated by Dr. John R. Fow. Skin Care offers dermatology and plastic surgery services, similar to the skin treatments offered by Cosmetic Dermatology. New Faces markets services for Skin Care as though it is New Faces that actually performs the services. Thus, as will be seen, Skin Care's logo bears the name "New Faces Skin Care Centers, Ltd."

Defendant New England Business Services ("New England"), is in the business of selling office supplies, such as stationery, filing materials, labels, and similar types of goods to doctors and other medical professionals. Stationery purchased from New England can be printed with a logo chosen by the purchaser from a selection of standard designs sold by New England. New England is the successor corporation to Sycom Limited Partnership ("Sycom") which created the advertising logo at some point between 1984 and 1985. The standard logo, which has been sold over 420 times worldwide, is reproduced below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

New England created a business logo for Skin Care in 1996, using one of its standard logos. Skin Care's business logo looks like this: NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Skin Care began using its logo in March 1996. Plaintiff began using its logo in August of 1995; however, Plaintiff did not register its logo until September 1997, one and one-half years after Skin Care began using its design.

Cosmetic Dermatology filed this action, alleging in Count I that Defendants' use of its logo constitutes trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114; § 1125, alleging in Count II a violation of common law unfair competition, and alleging in Count III a violation of the Michigan Consumer Protection Act, Mich.Comp.Laws Ann. § 450.901, et. seq.

II. Standard for Summary Judgment

Summary judgment is appropriate only when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R.Civ.P. 56(c). The central inquiry is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). After adequate time for discovery and upon motion, Rule 56(c) mandates summary judgment against a party who fails to establish the existence of an element essential to that party's case and on which that party bears the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

The movant has an initial burden of showing "the absence of a genuine issue of material fact." Celotex, 477 U.S. 317, 323, 106 S.Ct. 2548. Once the movant meets this burden, the non-movant must come forward with specific facts showing that there is a genuine issue for trial. Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). To demonstrate a genuine issue, the non-movant must present sufficient evidence upon which a jury could reasonably find for the non-movant; a "scintilla of evidence" is insufficient. Liberty Lobby, 477 U.S. at 252, 106 S.Ct. 2505.

The court must believe the non-movant's evidence and draw "all justifiable inferences" in the non-movant's favor. Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505. The inquiry is whether the evidence presented is such that a jury applying the relevant evidentiary standard could "reasonably find for either the plaintiff or the defendant." Liberty Lobby, 477 U.S. at 255, 106 S.Ct. 2505.

III. Analysis

A. Subject Matter Jurisdiction Re: New England

As an initial matter, Defendant New England argues that this Court lacks subject matter jurisdiction under the Lanham Act with respect to Plaintiff's claim against them. Infringement claims under the Lanham Act arise under two sections, 15 U.S.C. § 1114 and § 1125. Section 1114 provides for a cause of action for the unauthorized use of any counterfeit or "colorable imitation" of a registered mark. That section reads:

(1) Any person who shall, without the consent of the registrant—(a) use in commerce 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 ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1)(a) (emphasis added).

Section 1125(a) provides for a cause of action against the use of any "word, term, name, symbol, or device" which is false, misleading and is likely to cause confusion with the goods or services offered by another. Thus in order to establish a violation of the Act, a plaintiff must show use of a mark in connection with goods or services that is likely to cause consumer confusion. The likelihood of confusion is the lynchpin of infringement. Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1116 (6th Cir.1996).

New England argues that here there can be no infringement where there is no confusion with respect to the services offered by New England and those services offered by Plaintiff. New England contends that "the subject logo does not serve and has not served any identifying function for [New England], and it cannot, as it has never been used by [New England] with any particular goods or services.... Absent use in a source-identifying way, there can be no confusion as to an affiliation with Plaintiff." Def. New England's Br. in support of summary judgment at 8.

While it may be the case that New England has not violated the Lanham Act because of its posture in relation to that of the Plaintiff, that does not deprive this Court of subject matter jurisdiction. Automatic Washer Co. v. Easy Washing Mach. Corp., 98 F.Supp. 445 (N.D.N.Y. 1951) (complaint alleging infringement of trademark registration under this chapter, unless plainly unsubstantial, is sufficient to confer jurisdiction upon federal district court to determine issue of infringement). Even in the cases cited by New England, the courts applied the likelihood of confusion test to the defendant's conduct in issue. While the courts ultimately concluded that there was no infringement, the courts did not hold that they lacked jurisdiction under the Act. See International Association of Machinists and Aerospace Workers, AFL—CIO v. Winship Green Nursing Center, 103 F.3d 196 (1st Cir. 1996); Reddy Communications, Inc. v. Environmental Action Foundation, 477 F.Supp. 936 (D.D.C.1979)....