Peninsula Cmty. Health Servs. v. Olympic Peninsula Health Servs. PS
| Decision Date | 05 April 2022 |
| Docket Number | C20-5999 BHS |
| Parties | PENINSULA COMMUNITY HEALTH SERVICES, Plaintiff, v. OLYMPIC PENINSULA HEALTH SERVICES PS, et al., Defendants. |
| Court | U.S. District Court — Western District of Washington |
ORDER ON DEFENDANTS' MOTION FOR SUMMARY JUDGMENT AND PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT
This matter comes before the Court on Defendants Olympic Peninsula Health Services and Ann and John Doe Failoni's (collectively “OPHS”) motion for summary judgment, Dkt. 36, and Plaintiff Peninsula Community Health Services' (“PCHS”) motion for partial summary judgment, Dkt 39. The Court has considered the briefing filed in support of and in opposition to the motions and the remainder of the file and hereby rules as follows.
This case involves a trademark dispute between health services providers in Western Washington. PCHS is a nonprofit provider of medical, dental, behavioral health substance use treatment, and pharmacy services. Dkt. 64, ¶ 3. PCHS has clinics in Bremerton, Belfair, Shelton, Kingston, Port Orchard, Poulsbo, and Silverdale, as well as school-based and mobile clinics, and serves Kitsap County, Mason County, and the Olympic Peninsula. Id. PCHS alleges it began using its trade name, PENINSULA COMMUNITY HEALTH SERVICES, as early as 1987, and adopted the following design mark as early as July 1, 2000:
[Image Omitted]
Id. ¶¶ 11, 12.
OPHS is a for-profit provider of treatment for opioid use disorder and medication-assisted treatment for alcohol use disorder. OPHS has clinics located in Port Angeles and Port Hadlock, and serves Clallam County, Jefferson County, and the Olympic Peninsula. Id. ¶ 4. OPHS began using its trade name, OLYMPIC PENINSULA HEALTH SERVICES, and adopted the following design mark sometime after January 1, 2018:
[Image Omitted]
PCHS asserts that it has been the substantially exclusive, continuous user of its trademarks in Kitsap County, Pierce County, Mason County, and other parts of the Olympic Peninsula in connection with healthcare services. See Dkt. 39 at 3. It further states that it is a well-known member of its local community and is a leading provider of healthcare services in Kitsap County and Mason County. See, e.g., Dkt. 25, ¶¶ 4-6; Dkt. 18, ¶ 11. For example, in 2017, PCHS served 29, 030 patients who made 103, 567 visits to PCHS-branded facilities. Dkt. 18, ¶ 9. It received more than $27 million in income and more than $5 million in government grants and volunteer donations that year. Id. Jennifer Kreidler-Moss, Pharm.D., the Chief Executive Officer of PCHS, declares that PCHS's annual revenue, clinic locations, and patient No. have only grown since 2017. Id.
Both PCHS and OPHS provide substance use disorder treatment services, though PCHS provides additional, more extensive and varied medical services. Compare Dkt. 16-1, Ex. B, at 5-6 (detailing PCHS's services connected with its mark) with Dkt. 13, ¶ 10 (). OPHS asserts that it does not compete for the same patients as PCHS “because [OPHS] offers primarily different services to different individuals out of different clinic locations that are geographically distinct.” Dkt. 36 at 10; see also Dkt. 13, ¶ 12. OPHS additionally asserts that it is not aware of any instance of confusion between OPHS and PCHS since it started in January 2018. Dkt. 13, ¶ 13; Dkt. 14, ¶¶ 4-5. PCHS, on the other hand, highlights that both parties provide medical and substance use treatment services in overlapping geographic markets and argues that they compete for patients. See, e.g., Dkt. 50 at 6-7.
PCHS commenced this action in October 2020, claiming unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a), trade name infringement, infringement of PCHS's registered trademark in violation of RCW Ch. 19.77, and violation of Washington's Consumer Protection/Unfair Business Practices Act, RCW Ch. 19.86. Dkt. 1; see also Dkt. 64 (operative amended complaint).
In April 2021, OPHS moved for summary judgment on all of PCHS's claims, arguing that it cannot maintain its claims as a matter of law because its mark is not protectable and, even if it is, because there is no likelihood of confusion. Dkt. 12. The Court denied the motion without prejudice and granted PCHS's Rule 56(d) continuance. Dkt. 32. PCHS then moved to voluntarily dismiss Defendants Atif Mian, M.D., and his spouse without prejudice, Dkt. 33, and moved for leave to amend its complaint to eliminate its claim for damages, Dkt. 45. The Court granted both motions but dismissed the Mian defendants with prejudice. Dkt. 62.
OPHS now renews its motion for summary judgment, arguing that there is no trademark infringement as a matter of law because PCHS's mark is generic or descriptive lacking secondary meaning and because there is no likelihood of confusion between the two marks. Dkt. 36. OPHS further argues that, because there is no trademark infringement, PCHS's remaining claims should also be dismissed. Id. PCHS, on the other hand, moves for partial summary judgment on the issue of whether its mark is valid and protectable, arguing that its mark is not generic and has acquired secondary meaning.[1] Dkt. 39.
Summary judgment is proper only if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). The moving party is entitled to judgment as a matter of law when the nonmoving party fails to make a sufficient showing on an essential element of a claim in the case on which the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must present specific, significant probative evidence, not simply “some metaphysical doubt”). Conversely, a genuine dispute over a material fact exists if there is sufficient evidence supporting the claimed factual dispute, requiring a judge or jury to resolve the differing versions of the truth. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253 (1986); T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987).
The determination of the existence of a material fact is often a close question. The Court must consider the substantive evidentiary burden that the nonmoving party must meet at trial-e.g., a preponderance of the evidence in most civil cases. Anderson, 477 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual issues of controversy in favor of the nonmoving party only when the facts specifically attested by that party contradict facts specifically attested by the moving party. The nonmoving party may not merely state that it will discredit the moving party's evidence at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. Elec. Serv., Inc., 809 F.2d at 630 ( Anderson, 477 U.S. at 255). Conclusory, nonspecific statements in affidavits are not sufficient, and missing facts will not be presumed. Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 888-89 (1990).
“The Lanham Act provides national protection of trademarks in order to secure the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985). A Lanham Act claim requires proof that “(1) trademark is a valid, protectable trademark; (2) [the plaintiff] owns the trademark; and (3) the opposing party used the trademark or a similar trademark without consent in a manner likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of goods.” BBC Grp. NV LLC v. Island Life Rest. Grp. LLC, 413 F.Supp.3d 1032, 1045 (W.D. Wash. 2019) (citing Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1196 (9th Cir. 2009)). “Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (internal quotation omitted). The parties dispute the first and third elements.
The parties have filed cross-motions for summary judgment on whether PCHS's mark is valid and protectable. See Dkt. 36 at 12-14 (OPHS); Dkt. 39 (PCHS). PCHS argues that its mark is not generic and has attained a descriptive, secondary meaning, while OPHS argues the inverse.
“There are five categories of trademarks: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful.” Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005) (citing KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005)). The latter three categories are inherently distinctive and automatically entitled to protection because they naturally function to identify the particular source of a product. Id. (quoting KP Permanent Make-Up, 419 F.3d at 602). “Descriptive marks ‘define a particular characteristic of the product in a way that does not require any exercise of the imagination.'” Id. (quoting Surfvivor Media, Inc. v. Survivor Prods. 406 F.3d 625, 632 (9th Cir. 2005)). “A descriptive mark can receive trademark protection if it has acquired distinctiveness by establishing ...
To continue reading
Request your trial