Heartsprings, Inc. v. Heartspring, Inc.

• Decision Date: 20 April 1998
• Docket Number: No. 97-3011,97-3011
• Citation: 143 F.3d 550,46 USPQ2d 1481
• Parties: 126 Ed. Law Rep. 596, 46 U.S.P.Q.2d 1481, 98 CJ C.A.R. 1961 HEARTSPRINGS, INC., Plaintiff-Appellant, v. HEARTSPRING, INC., a.k.a. Institute of Logopedics, Inc., Defendant--Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 550

143 F.3d 550

126 Ed. Law Rep. 596, 46 U.S.P.Q.2d 1481,

98 CJ C.A.R. 1961

HEARTSPRINGS, INC., Plaintiff-Appellant, v. HEARTSPRING, INC., a.k.a. Institute of Logopedics, Inc. Defendant--Appellee.

No. 97-3011.

United States Court of Appeals Tenth Circuit.

April 20, 1998.

Devon A. Rolf (Joseph B. Bowman with him on the briefs), Kokjer, Kircher, Bowman & Johnson, P.C., Kansas City, MO, for Plaintiff--Appellant.

William Bruce Day (David B. Pointer and Judith L. Kloster, with him on the briefs), Stinson, Mag & Fizzell, P.C., Kansas City, MO, for Defendant--Appellee.

Before PORFILIO, Circuit Judge, EBEL, Circuit Judge, and BRETT, District Judge. ^*

PORFILIO, Circuit Judge.

Plaintiff Heartsprings produces and sells books, pamphlets and educational materials designed primarily to teach children to resolve conflicts nonviolently. Defendant Heartspring runs a school in which physically disabled children are taught basic life skills such as dressing, bathing, and eating. Plaintiff claims defendant's use of the name "Heartspring" is likely to cause consumers to confuse defendant Heartspring's services with plaintiff Heartsprings' materials in violation of § 43(a) of the Lanham Act. ¹ After considering the parties' cross motions for summary judgment, the district court concluded no likelihood of confusion exists and granted summary judgment for defendant Heartspring. Plaintiff Heartsprings appeals. We affirm.

The Parties

We begin with a brief description of the parties and the events leading to the current action. ² Plaintiff Heartsprings is a for-profit Arizona corporation created in March 1991. Plaintiff's products consist primarily of printed materials, such as books, pamphlets, and comic books, designed to help children acquire better relationships in life, school, and the community. Plaintiff actively markets these products under the prominent titles of "PATHWAYS TO RESILIENCY," "STORY WORKBOOK," and "PEACEBUILDERS." See, e.g., Figure 1.

Each of plaintiff's titled publications discusses a specific topic (e.g., "I bring peace to Tucson."). These individual topics are organized under separate "segments" (e.g., "Social Competence"), and the segments are further organized into separate titled programs (e.g., "STORY WORKBOOK"). Plaintiff generally seeks sponsors to support each topic publication it produces and will print a sponsor's corporate logo on the cover of the supported publication in exchange for the sponsor's contribution. See, e.g., Figure 1. Past sponsors include Pizza Hut, Delta Airlines, The Arizona Daily Star, and Desert Hills Center for Youth & Families.

Defendant Heartspring is a private, non-profit organization based in Wichita, Kansas. Defendant operates a residential school solely for physically disabled children. Prospective students submit to an extensive diagnostic screening process, and children suffering from psychological ailments are referred elsewhere. The cost of defendant's services ranges from $90,000 to $150,000 per year. Defendant Heartspring also runs a number of outpatient programs, which diagnose disabled children, provide referrals, and provide parents with information about their child's educational rights.

Defendant originally operated under the name "Institute of Logopedics." In Spring 1992, however, defendant decided the word "logopedics" was unclear to the public and the word "institute" had unpleasant connotations which "did not reflect [defendant's] focus of helping children gain independence and better integrate into their communities." In search of a name to invoke "more positive feelings towards children," defendant recruited an advertising agency to compile a list of 50 to 60 prospective names. Defendant submitted the list to its Board of Trustees, and each board member voted on the names he or she liked best, generating a short list, which was in turn submitted to a series of focus groups. Using information obtained from the focus groups, defendant tentatively selected the name "Heartspring." At defendant's request, an intellectual property attorney conducted a trademark search. Because plaintiff had not registered its own trade name, however, the search did not reveal plaintiff's use of the name "Heartsprings." Defendant subsequently changed its corporate name to "Heartspring" and spent nearly $200,000 promoting its new identity. Defendant attempted to register the name as a service trademark for a "non-profit school for disabled children," but plaintiff Heartsprings filed a notice of opposition, spawning the current suit.

Applicable Law

The district court granted summary judgment for defendant Heartspring on the ground no likelihood of confusion exists. We must affirm the district court's order if the record reveals no genuine dispute of material fact and defendant Heartspring is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c) ("The judgment sought shall be rendered [if the record shows] that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law."). A genuine issue of material fact exists if a reasonable fact finder could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Plaintiff Heartsprings contends a genuine dispute of material fact remains on the issue of likelihood of confusion.

Likelihood of confusion is a question of fact we review for clear error. Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 967 (10th Cir.1996); see also Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 923 n. 2 (10th Cir.1986) (discussing the circuit split regarding appropriate standard of review for likelihood of confusion and reaffirming Tenth Circuit's general rule of treating the issue as a question of fact subject to review for clear error). In this case, the district court found consumers were unlikely to confuse the two marks at issue. If this finding is not clearly erroneous, the plaintiff's claim fails. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 2757-58, 120 L.Ed.2d 615 (1992) ("[L]iability under § 43(a) requires proof of the likelihood of confusion."); Jordache Enterprises v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir.1987) (" 'Confusion occurs when consumers make an incorrect mental association between the involved commercial products or their producers.' " (quoting with approval San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 564, 107 S.Ct. 2971, 2995, 97 L.Ed.2d 427 (1987) (Brennan, J., dissenting))).

This court considers the following factors relevant to a determination whether a likelihood of confusion exists:

(a) the degree of similarity between the marks, including the marks' appearance, pronunciation, suggestion, and manner of display;

(b) strength or weakness of the plaintiff's mark;

(c) the intent of the alleged infringer in adopting its mark;

(d) similarities and differences of the parties' goods, services and marketing strategies;

(e) the degree of care likely to be exercised by purchasers of the goods or services involved; and

(f) evidence of actual confusion, if any.

See, e.g., Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1530 (10th Cir.1994) (discussing factors). Some of these factors may prove more relevant than others, depending on the facts of each case; moreover, other cases may demand consideration of factors not mentioned here. Jordache, 828 F.2d at 1484. No one factor is dispositive, and the final determination of likelihood of confusion must be based on consideration of all relevant factors. Beer Nuts, 805 F.2d at 925. In every case, however, the key inquiry is whether the consumer is "likely to be deceived or confused by the similarity of the marks." Two Pesos, 505 U.S. at 780, 112 S.Ct. at 2763. We turn now to the district court's treatment of the relevant factors.

The Marks' Degree of Similarity

In evaluating the degree of similarity between marks, we consider the marks as they are encountered by the consumer in the marketplace and examine them on three levels: sight, sound, and meaning. First Sav. Bank v. First Bank Sys., Inc., 101 F.3d 645, 653 (10th Cir.1996). Each mark must be considered as a whole. Universal, 22 F.3d at 1531. Even if the trade names are similar, the likelihood of confusion is reduced if the two trademarks, taken as a whole, are visually distinct. Id.; First Sav. Bank, 101 F.3d at 653.

The district court concluded this factor favored plaintiff because of the virtual identity of trade names, but only slightly. Taking into account the visual differences of the parties' respective trade names, the court concluded "[t]his factor does not weigh in plaintiff's favor as much as would first appear."

Plaintiff Heartsprings argues the district court's analysis is an improper " 'side-by-side' " comparison of the marks. Universal, 22 F.3d at 1531 ("In evaluating similarity, we must not engage in a 'side-by-side' comparison. Rather, the court must determine whether the alleged infringing mark will be confusing to the public when singly presented." (citations omitted)). Plaintiff contends the virtual identity of the two names, which differ only by a single "s," mandates a finding strongly in favor of plaintiff on this factor.

We find plaintiff's argument unpersuasive. First, Universaldoes not prohibit comparison of the parties' marks; it prohibits consideration of differences so minuscule they are only detectable via a side-by-side comparison. See, e.g., Universal, 22 F.3d at 1531 (comparing the visual presentations of the two marks at issue); Beer Nuts, 805 F.2d at 926 ("The presence of the smaller [defendant's] trademark is not enough to eliminate the likelihood of confusion in this case where the products and their marks are similar because consumers typically do not engage in side by side comparison of [inexpensive] pro...