New Reflections Plastic Surgery, LLC v. Reflections Ctr. for Skin
| Decision Date | 20 December 2018 |
| Docket Number | Civil Action No. 16-8523 (FLW) (TJB) |
| Parties | NEW REFLECTIONS PLASTIC SURGERY, LLC, Plaintiff, v. REFLECTIONS CENTER FOR SKIN AND BODY, PC, Defendant. |
| Court | U.S. District Court — District of New Jersey |
*NOT FOR PUBLICATION*
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Pending before the Court is a motion for summary judgment from Plaintiff New Reflections Plastic Surgery, LLC ("Plaintiff"), seeking a declaratory judgment under 28 U.S.C. §§ 2201, et seq., that Defendant Reflections Center for Skin and Body, PC's ("Defendant") REFLECTIONS trademark is invalid/unenforceable and Plaintiff's use of its NEW REFLECTIONS PLASTIC SURGERY mark does not constitute trademark infringement, unfair competition, or false designation of origin under the Lanham Act and applicable state laws. For the reasons that follow, Plaintiff's motion for summary judgment is denied.
Plaintiff is a cosmetic surgery practice located in Freehold, New Jersey, operating under the name "New Reflections Plastic Surgery LLC." Plaintiff's Statement of Material Facts Not in Dispute ("PSOF") at ¶¶ 1-2. Owner Dr. Nikesh Patel founded the practice in August 2007, and its services include comprehensive invasive and noninvasive cosmetic procedures for the face, breast, and body, including breast augmentation, thigh and arm lifts, rhinoplasty, face lifts, and ab sculpting. Id. When attending conferences and interacting with local physicians, businesses, and potential partners, Dr. Patel always refers to his practice as New Reflections Plastic Surgery. Id. at ¶ 38-39. Plaintiff advertises and markets its services and medical procedures on the internet to prospective patients nationally, and has operated its website, www.newreflectionsps.com, continuously since at least September 2007. Id. at ¶¶ 3-4. The website is highly ranked on various search terms, including "new jersey plastic surgeon," "plastic surgery new jersey," and "New Reflections Plastic Surgery." Id. at ¶ 7. Plaintiff has also purchased online local and regional newspaper and magazine advertisements. Id. at ¶ 8.
Defendant is a cosmetic medicine practice, with multiple locations in New Jersey, that provides services including laser treatments for acne, rejuvenation, scars, tattoo removal, facials, and massage services. Id. at ¶ 11; Defendant's Supplemental Statement of Disputed Material Facts ("DSOF") at ¶¶ 1, 7. Defendant opened in the year 2000, as part of a medical practice called "Priority Medical Care," both of which were co-owned by Dr. Mitchell Chasin. PSOF at ¶¶ 12-14. On November 16, 2001, Priority Medical Care obtained New Jersey trademark registration for the mark "REFLECTIONS." Id. at ¶ 14. According to the registration, the first use of the mark was December 1, 2000. Id. at ¶ 15. Although the registration was for "REFLECTIONS" only, Defendant operated under the full name "Reflections Center for Skin and Body," using the following logo on its signage, marketing materials, website, and business cards:
Image materials not available for display.
Defendant eventually opened a second location in Livingston, New Jersey and continued using the same logo. Id. at ¶ 7. Although there is some dispute as to the exact date this occurred, by 2011, Priority Medical Care had assigned the "REFLECTIONS" mark registration to the Livingston practice, which operated under the name "Reflections of Livingston." PSOF at ¶ 16. According to Defendant, despite the "Reflections Center for Skin and Body" and "Reflections of Livingston" names, Defendant and its patients used "Reflections" on its own to refer to the practice. DSOF at ¶ 3. On November 3, 2016, Defendant filed in New Jersey an Application to Renew a Registered Trade or Service Mark for the "REFLECTIONS" mark. PSOF at ¶ 17. Recently, Reflections Center for Skin and Body changed its name to "Reflections the Center for Cosmetic Medicine," and the logo appears as follows:
Image materials not available for display.
In addition to the New Jersey registration for "REFLECTIONS," Defendant applied for federal registration of the mark "REFLECTIONS CENTER FOR SKIN & BODY" on October 4, 2008, asserting a first-use date of December 10, 2004, PSOF at ¶¶ 28-29; Dr. Chasin testified that a former office manager submitted this trademark application without his authorization. DSOF at ¶ 10. Following a series of correspondences with Defendant, the USPTO issued a Final Office Action on March 6, 2009, explaining that it rejected the proposed trademark "based on a likelihood of confusion," with other existing marks. PSOF at ¶ 31. On September 7, 2009, Defendant abandoned its federal trademark registration application. Id. at ¶ 32.
Plaintiff also alleges that the REFLECTIONS mark has been registered with the USPTO by third parties. Id at ¶ 25. For instance, on October 31, 2006, Brandywine Senior Care, Inc., a medical and health care business located in the state of New Jersey, was granted a federal trademark for its REFLECTIONS mark, which mark, according to the registration, had been used in commerce since May 1, 2000. Id at ¶ 26.
Dr. Chasin first became aware of Plaintiff in April 2016, after patients began making inquiries about whether Defendant had opened a new office that had a different pricing structure. Declaration of Aaron S. Eckenthal, Exh. J at 8. Shortly thereafter, Defendant's director of marketing conducted an internet search and discovered Plaintiff's practice. PSOF at ¶ 36; DSOF at ¶ 20. Dr. Chasin has no recollection of entering "Reflections" and searching for Defendant's name on Google or any other search engine prior to April 2016, and he "never asked someone to search for [Defendant's] name" or for "Reflections" or "Reflections Center for Skin and Body." PSOF at ¶ 37. After calling Plaintiff regarding its use of the mark, Defendant sent a cease-and-desist letter on September 12, 2016, stating that Plaintiff's use of REFLECTIONS constitutes infringement and unfair competition, and demanding that Plaintiff "immediately and permanently cease and desist any and all use of the infringing REFLECTIONS trademark and/or any confusingly similar variations [on its] website or anywhere else." PSOF at ¶ 34. Defendant's letter threatened that if Plaintiff did not act, Defendant would be forced to "consider any and all legal remedies." Id.
On November 11, 2016, Plaintiff filed this action, seeking a declaratory judgment under 28 U.S.C. §§ 2201, et seq., that Defendant's REFLECTIONS mark is invalid/unenforceable and Plaintiff's use of its NEW REFLECTIONS PLASTIC SURGERY mark does not constitute trademark infringement, unfair competition, or false designation of origin under the Lanham Act,and applicable state laws. On December 7, 2016, Defendant answered the Complaint and asserted counterclaims for unfair competition and trademark infringement under federal and state laws. On May 10, 2018, Plaintiff moved for summary judgment on all counts in its Complaint.
Summary judgment is appropriate where the Court is satisfied that "there is no genuine issue as to any material fact and that the movant is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A factual dispute is genuine only if there is "a sufficient evidentiary basis on which a reasonable jury could find for the non-moving party," and it is material only if it has the ability to "affect the outcome of the suit under governing law." Kaucher v. County of Bucks, 455 F.3d 418, 423 (3d Cir. 2006); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment. Anderson, 477 U.S. at 248. "In considering a motion for summary judgment, a district court may not make credibility determinations or engage in any weighing of the evidence; instead, the non-moving party's evidence 'is to be believed and all justifiable inferences are to be drawn in his favor .'" Marino v. Indus. Crating Co., 358 F.3d 241, 247 (3d Cir. 2004) (quoting Anderson, 447 U.S. at 255)); see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Curley v. Klem, 298 F.3d 271, 276-77 (3d Cir. 2002).
The burden of establishing that no "genuine issue" exists is on the party moving for summary judgment. Celotex, 477 U.S. at 330. "A nonmoving party has created a genuine issue of material fact if it has provided sufficient evidence to allow a jury to find in its favor at trial." Gleason v. Norwest Mortg., Inc., 243 F.3d 130, 138 (3d Cir. 2001). The non-moving party must present "more than a scintilla of evidence showing that there is a genuine issue for trial."Woloszyn v. County of Lawrence, 396 F.3d 314, 319 (3d Cir. 2005) (quotations omitted). Under Anderson, plaintiffs' proffered evidence must be sufficient to meet the substantive evidentiary standard the jury would have to use at trial. 477 U.S. at 255. To do so, the non-moving party must "go beyond the pleadings and by her own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324 (quotations omitted); see also Matsushita, 475 U.S. at 586; Ridgewood Bd. of Ed. v. Stokley, 172 F.3d 238, 252 (3d Cir. 1999). In deciding the merits of a party's motion for summary judgment, the court's role is not to evaluate the evidence and decide the truth of the matter, but to determine whether there is a genuine issue for trial. Anderson, 477 U.S. at 249. Credibility determinations are the province of the factfinder. Big Apple BMW, Inc. v. BMW of N. Am., Inc., 974 F.2d 1358, 1363 (3d Cir. 1992).
There can be "no genuine issue as to any material fact," however, if a party fails "to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will...
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