OPINION
(Filed Under Seal)
WOLFSON, United States District Judge:
Pending before the Court are two separate motions for summary judgment. First Defendants Intellisphere, LLC, Michael J. Hennessy & Associates, Inc., Arc Mesa Educators, LLC, and Michael J. Hennessy, individually (collectively, "Defendants") move for summary judgment on all claims in the First Amended Complaint ("FAC") filed by Plaintiffs Engage Healthcare Communications, LLC, Green Hill Healthcare Communications, LLC, and Center of Excellence Media, LLC (collectively, "Plaintiffs"). Defendants also seek summary judgment on Count One of their Second Amended Counterclaim. Second, Plaintiffs separately cross-move for summary judgment seeking a declaratory judgment dismissing and/or cancelling Defendants' pending trademark applications and existing registered trademarks.
The present matter, a long-running and contentious dispute between two medical publishing companies controlled by competing members of the same family, stems from Defendants' purported infringement of 16 trademarks that Plaintiffs use as titles for magazines, seminars, and continuing education courses. At issue are the following six claims brought by Plaintiff: (1) trademark infringement under 15 U.S.C. § 1125(a); (2) trademark infringement - unfair competition under 15 U.S.C. § 1125(a); (3) false designation of origin under 15 U.S.C. § 1125(a); (4) declaratory judgment under 28 U.S.C. §2201, et seq; (5) an unfair competition claim under N.J.S.A. 56:4-1l; and (6) a New Jersey common law unfair competition claim. Also at issue is Defendants' counterclaim seeking a declaration that Defendants are not infringing on ten other of Plaintiffs' marks that are not set forth in Plaintiffs' First Amended Complaint ("FAC").
For the reasons that follow, Defendants' motion for summary judgment is granted in its entirety and Plaintiff's motion for summary judgment is denied in its entirety.
I. FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Plaintiffs Engage Healthcare Communications, LLC ("Engage") and Green Hill Healthcare Communications, LLC ("Green Hill") are medical publishing companies that distribute medical publications to physicians, pharmacists, healthcare professionals, and/or healthcare payers. Defendants' Statement of Undisputed Material Facts ("DSOF") at ¶¶ 1-4. Plaintiff Center of Excellence Media, LCC ("Center of Excellence") provides continuing medical education to physicians, nurses, and pharmacists. Id. at ¶ 2. Defendants Intellisphere,LLC ("Intellisphere") and Michael J. Hennessy & Associates, Inc. ("MJH & Associates") are also medical publishers. Id. at ¶ 5. Defendant Arc Mesa Educators, Inc. ("Arc Mesa") provides continuing medical education courses and materials. Id. at ¶ 6. Defendant Michael J. Hennessy is Chairman and Chief Executive Officer of both Intellisphere and MJH & Associates, and is the brother of John J. ("Jack") Hennessy, II, the Chairman of Plaintiff-entities. Id. at ¶ 1; FAC at ¶ 51. Both Plaintiffs and Defendants distribute their materials free of charge or at little cost to the consumer, DSOF at ¶¶ 3, 8, and the companies compete directly for advertisers, editorial board members, and readers. Plaintiffs' Statement of Undisputed Material Facts ("PSOF") at ¶ 24.
The present dispute concerns 16 trademarks for titles of magazines, seminars, and continuing education courses that Plaintiff filed between 2008 and 2011. Plaintiffs contend that during 2011 and into 2012, Defendants filed trademark registration applications for competing publications, articles and other materials "bearing the exact same or confusingly similar trade names as trade names already being utilized by Plaintiffs." PSOF at ¶ 6. The parties have stipulated as to which of Defendants' marks are alleged by Plaintiffs to infringe Plaintiffs' marks. They are as follows:
| THE ONCOLOGY NURSE APN/PA |
| VALUE-BASED ONCOLOGY CARE |
| CLINICAL ONCOLOGY PHARMACY |
| TARGETED THERAPIES IN BREAST |
| TARGETED THERAPIES IN LUNG |
| INTERNATIONAL CONGRESS ON |
| TARGETED THERAPIES IN CANCER |
| TARGETED THERAPIES IN CANCER |
| BIOMARKERS, PATHWAYS, AND |
ECF No. 213 at 3-4.
None of Plaintiffs' marks currently has a principal registration. DSOF at ¶ 32. Some are listed on a supplemental register (which is for marks that are descriptive without acquired distinctiveness); others are the subject of applications in proceedings suspended by the U.S.Patent and Trademark Office ("PTO"); there were some registrations that were cancelled by the PTO. Id.
Plaintiffs contend that all of their marks are protectable as either arbitrary, suggestive, or descriptive with secondary meaning.1 They contend that their use of the following marks is arbitrary as applied to International Class 352 advertising and (in one case) trade show services: PERSONALIZED MEDICINE IN ONCOLOGY, THE ONCOLOGY NURSE-APN/PA, VALUE-BASED ONCOLOGY CARE, ONCOLOGY PHARMACY NEWS, CLINICAL ONCOLOGY PHARMACY NEWS, ONCOLOGY PRACTICE MANAGEMENT, PEER-SPECTIVES, AMERICAN HEALTH AND DRUG BENEFITS, TARGETED THERAPIES IN HEMATOLOGY/ONCOLOGY, and TARGETED THERAPIES IN ONCOLOGY. DSOF at ¶ 28. For each mark claimed as arbitrary, Plaintiffs assert that "[a]lthough each of the components in the [MARK NAME] mark evinces a meaning, the mark as a whole does not describe Plaintiffs' advertising [and in one case] trade show services recited in Class 35." Id. The advertising services provided by Plaintiffs associated with these marks are advertising space in publications to pharmaceutical companies or biotechnology companies, which purchase and place advertisements in those publications. Id at ¶ 49.
Plaintiffs contend that their use of all of their marks is suggestive as applied to the Classes 9,3 16,4 and 415 services. DSOF at ¶ 30. For each mark claimed as suggestive, Plaintiffs assert in substantially similar form that "[a]lthough each of the components in the [MARK NAME] mark evinces a meaning, the mark as a whole does not describe Plaintiffs' goods and services recited in Classes 9, 16, and[/or] 41." Id.
Plaintiffs contend that, if descriptive, the following marks have acquired secondary meaning based on their use in the classes described above: THE ONCOLOGY NURSE-APN/PA, THE ONCOLOGY NURSE, PERSONALIZED MEDICINE IN HEMATOLOGY/ONCOLOGY, ONCOLOGY PHARMACY NEWS, VALUE-BASED CANCER CARE, CLINICAL ONCOLOGY PHARMACY NEWS, ONCOLOGY PRACTICE MANAGEMENT, AMERICAN HEALTH & DRUG BENEFITS, TARGETED THERAPIES IN BREAST CANCER, TARGETED THERAPIES IN LUNG CANCER, TARGETED THERAPIES IN NONHODGKIN LYMPHOMA, TARGETED THERAPIES IN HEMATOLOGY/ONCOLOGY, TARGETED THERAPIES IN ONCOLOGY. Id. at ¶ 31.
It is undisputed that each of Plaintiffs' marks describe the content of their associated publications, seminars, or continuing education courses. Id. at ¶¶ 33-48. For instance, Plaintiffs' publication bearing the VALUE-BASED ONCOLOGY CARE mark contains information about "providing cost effective care for oncology." Id. at ¶ 38.
Plaintiffs assert that eleven of Defendants' marks at issue in the FAC infringe on Plaintiffs' own marks. They maintain that Defendants adopted all of their trademarks, and filed applications for registration of their trademarks (all in International Classes 9, 16, 35, and/or 41), without a prior search for any similar trademark registrations and applications in the PTO. PSOF at ¶ 35.
As for seven of Defendants' marks, Plaintiffs contend that Defendants never used them in commerce sufficient to establish any right to apply for registration: PERSONALIZED MEDICINE IN HEMATOLOGY/ONCOLOGY; VALUE BASED ONCOLOGY; ONCOLOGY PHARMACY NEWS; INTERNATIONAL CONGRESS ON TARGETED THERAPIES ON CANCER; INTERNATIONAL JOURNAL ON TARGETED THERAPIES ON CANCER; TARGETED THERAPY NEWS; BIOMARKERS, PATHWAYS, TARGETED THERAPIES. ECF No. 284-1 at 2.
As to the remaining marks—ONCNURSE, PEERS & PERSPECTIVES, AMERICAN JOURNAL OF PHARMACY BENEFITS, and ONCOLOGY BUSINESS MANAGEMENT—Plaintiffs contend that Defendants offered inconsistent first-use dates. It is unclear from Plaintiffs' Statement of Facts what these inconsistencies are for each of the marks, but for ONCNURSE, in various applications with the PTO, Defendants asserted a first-use-dateof October of 2010, yet Defendants' corporate representative admitted at his deposition that the mark was first used as a title of a publication in September 2011. PSOF at ¶ 55.
E. PEER-SPECTIVES/PEERS & PERSPECTIVES A central issue in the case is whether there is a likelihood of consumer confusion between Plaintiffs' mark, PEER-SPECTIVES, and Defendants' mark, PEERS & PERSPECTIVES. Center for Excellence filed an application for the mark PEERSPECTIVES in International Class 41 on June 11, 2008. PSOF at ¶ 121. The trademark PEER-SPECTIVES was registered on the principal register on January 27, 2009, id; however, Center of Excellence permitted the mark to lapse on August 28,...
