Health Care and Retirement v. Heartland Home Care, Civ.A.03-2663-KHV.
| Decision Date | 02 November 2005 |
| Docket Number | No. Civ.A.04-4126-KHV.,No. Civ.A.03-2663-KHV.,Civ.A.03-2663-KHV.,Civ.A.04-4126-KHV. |
| Citation | 396 F.Supp.2d 1262 |
| Parties | HEALTH CARE AND RETIREMENT CORPORATION OF AMERICA, Plaintiff, v. HEARTLAND HOME CARE, INC., Defendant. Heartland Home Care, Inc., Plaintiff, v. Heartland Home Care, Inc. a/k/a HCR-ManorCare, Defendant. |
| Court | U.S. District Court — District of Kansas |
v.
HEARTLAND HOME CARE, INC., Defendant.
Heartland Home Care, Inc., Plaintiff,
v.
Heartland Home Care, Inc. a/k/a HCR-ManorCare, Defendant.
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Charles H. Dougherty, Jr., Gene A. Tabachnick, Reed, Smith, LLP, Pittsburg, PA, David D. Burkhead, Ted J. McDonald, III, McCormick, Adam & McDonald, Overland Park, KS, for Plaintiff.
Phillip L. Turner, Turner Law Offices, Topeka, KS, for Defendant.
VRATIL, District Judge.
Health Care and Retirement Corporation of America ("HCRA") filed suit in this
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Court against Heartland Home Care, Inc. ("HHC"), for trademark infringement, false designation of origin and trademark dilution under the Lanham Act, 15 U.S.C. § 1051 et seq. In the District Court of Shawnee County, Kansas, HHC filed suit against HCR-ManorCare, an affiliate of HCRA, alleging that HCR-ManorCare solicited business under HHC's name in violation of Kansas law which prohibits unfair competition. See Heartland Home Care, Inc. v. Heartland Home Care, Inc., No. 03CV1494.1 The state action was removed to this Court and consolidated with the HCRA case against HHC. For ease of reference, the Court refers collectively to plaintiff in Case No. 03-2663 (HCRA) and defendant in Case No. 04-4126 (the HCRA affiliate known as HCR-ManorCare) as HCR. The Court refers collectively to defendant in Case No. 03-2663 and plaintiff in Case No. 04-4126 as HHC. This matter is before the Court on HCR's motions for summary judgment. See plaintiff's Motion For Summary Judgment (Doc. # 39) filed June 10, 2005 in Case No. 03-2663; Defendant's Motion For Summary Judgment (Doc. # 40) filed June 10, 2005 in Case No. 04-4126. For reasons stated below, the motions are sustained.
Summary judgment is appropriate if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. See Fed.R.Civ.P. 56(c); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Vitkus v. Beatrice Co., 11 F.3d 1535, 1538-39 (10th Cir.1993). A factual dispute is "material" only if it "might affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248, 106 S.Ct. 2505. A "genuine" factual dispute requires more than a mere scintilla of evidence. Id. at 252, 106 S.Ct. 2505.
The moving party bears the initial burden of showing the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Hicks v. City of Watonga, 942 F.2d 737, 743 (10th Cir.1991). Once the moving party meets its burden, the burden shifts to the nonmoving party to demonstrate that genuine issues remain for trial "as to those dispositive matters for which it carries the burden of proof." Applied Genetics Int'l, Inc. v. First Affiliated Sec., Inc., 912 F.2d 1238, 1241 (10th Cir.1990); see also 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); Bacchus Indus., Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th Cir.1991). The nonmoving party may not rest on its pleadings but must set forth specific facts. Applied Genetics, 912 F.2d at 1241.
"[W]e must view the record in a light most favorable to the parties opposing the motion for summary judgment." Deepwater Invs., Ltd. v. Jackson Hole Ski Corp., 938 F.2d 1105, 1110 (10th Cir.1991). Summary judgment may be granted if the nonmoving party's evidence is merely colorable or is not significantly probative. Anderson, 477 U.S. at 250-51, 106 S.Ct. 2505. "In a response to a motion for summary judgment, a party cannot rely on ignorance of facts, on speculation, or on suspicion, and may not escape summary judgment in the mere hope that something will turn up at trial." Conaway v. Smith, 853 F.2d 789, 794 (10th Cir.1988). Essentially, the inquiry is "whether the evidence
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presents a sufficient disagreement to require submission to the jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505.
The following facts are uncontroverted, deemed admitted or, where disputed, viewed in the light most favorable to HHC, the non-movant.
HCR is the owner of United States Service Mark registration No. 1,300,002 for the mark "Heartland" in connection with "providing health care and retirement facility services." HCR obtained the registration for the mark in 1984. HCR began using the mark as early as December 11, 1975, and its first use in interstate commerce was as early as February 1, 1976. HCR has continually used the Heartland mark throughout the United States for more than 28 years.
HCR operates two facilities in Kansas under the name Heartland Home Health Care and Hospice. HCR is authorized to use the Heartland trademark in connection with providing health care services in Kansas.2 HCR owns and operates more than 360 skilled-nursing facilities and assisted-living facilities throughout the United States. It enjoys a national reputation as the preeminent health care provider in the industry. HCR is the second largest provider of home health and hospice services in the United States with more than 90 offices in 24 states operating under its Heartland mark. In total, HCR provides health care services through a network of more than 500 long-term care facilities, outpatient rehabilitation clinics and home health and hospice offices throughout the United States.
In September of 1997, HHC first offered health care and related services using the Heartland name.
In March of 2002, HCR applied to the Kansas Secretary of State for authorization to do business in Kansas. The Kansas Secretary of State notified HCR that HHC, a Kansas corporation, was already using the name Heartland. Accordingly, David K. Nees of HCR sent the Kansas Secretary of State a letter as follows.3
It is our understanding that Heartland Home Care, Inc. is the name of a corporation currently existing in the state of Kansas. One of HCR ManorCare's subsidiary corporation[s] incorporated in Ohio with the name Heartland Home Care, Inc. has an application pending to qualify to do business in Kansas.
Therefore, we agree to set ourselves out as an Ohio corporation in advertising in order to distinguish ourselves from the Kansas corporation.
Exhibit B to HHC's Memorandum (Doc. # 38-6).
Despite knowledge that HCR is authorized to use the Heartland mark, HHC has not ceased to use the Heartland name. HHC's use of the Heartland name and mark in providing health care and related services has caused actual confusion with HCR services and is likely to cause confusion among the consuming public.
On October 2, 2003, in the District Court of Shawnee County, Kansas, HHC filed suit against HCR. HHC alleged that HCR was soliciting business under HHC's name in violation of Kansas law which prohibits
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unfair competition. On December 12, 2003, HHC filed an amended petition in state court, again asserting a single claim of unfair competition. On January 2, 2004, HCR filed an answer and counterclaim for trademark infringement. In the counterclaim, HCR asserted that it was the owner of the Heartland mark.
On December 31, 2003, HCR filed the instant action against HHC for trademark infringement, false designation of origin and trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. See Case No. 03-2663. On July 12, 2004, this...
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