Midwest Medical and Occupational Services, SC. v. SSM Healthcare et al

Filing 49

ORDER DENYING 46 Motion for Reconsideration. Signed by Magistrate Judge Reona J. Daly on 9/25/2019. (nmf)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ILLINOIS
MIDWEST MEDICAL AND
OCCUPATIONAL SERVICES SC,
Plaintiff,
v.
SSM HEALTH CARE CORPORATION,
d/b/a SSM HEALTH and PHYSICIAN
SERVICES CORPORATION OF
SOUTHERN ILLINOIS, INC., d/b/a SSM
HEALTH EXPRESS CLINIC,
Defendants.

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Case No. 3:17-cv-388-RJD

ORDER
DALY, Magistrate Judge:
This matter is before the Court on Plaintiff’s Motion to Alter Judgment (F.R.Civ.P. 59(e))
(Doc. 46). For the reasons set forth below, the Motion is DENIED.
Procedural Background
Plaintiff Midwest Medical and Occupational Services, S.C. (“Midwest Medical”), filed this
action on April 13, 2017, alleging violations of the Lanham Act, the Illinois Trademark
Registration and Protection Act, the Illinois Uniform Deceptive Trade Practices Act, and Illinois
common law against SSM Health Care Corporation, doing business as SSM Health, and Physician
Services Corporation of Southern Illinois, Inc., doing business as SSM Health Express Clinic
(collectively, “Defendants”) (see Doc. 1).
The undersigned granted Defendants’ motion for summary judgment on December 10,
2018 (Doc. 44). In the Order granting summary judgment, the undersigned found that Plaintiff
does not possess enforceable trademark rights in “Express Care of Mt. Vernon” as it is a descriptive
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phrase that has not acquired secondary meaning. The undersigned further found that Defendants
were entitled to a fair use defense. Plaintiff asks the Court to reconsider its ruling under Federal
Rule of Civil Procedure 59(e). In its motion, Plaintiff sets forth the following arguments: (1) there
is no authority providing for summary judgment when there is substantial evidence of actual
confusion; (2) the Seventh Circuit has held that a defendant’s use of its own trademark in
advertisements does not preclude a finding that those advertisements also used another entity’s
trademark; and (3) this Court disregarded the inference to which Plaintiff is entitled regarding
Defendants’ intent.
Legal Standard
Federal Rule of Civil Procedure 59(e) permits a court to amend a judgment only if the
movant demonstrates a manifest error of law or fact or presents newly discovered evidence. See
Miller v. Safeco Ins. Co. of Am., 683 F.3d 805, 814 (7th Cir. 2012). “This rule enables the court
to correct its own errors and thus avoid unnecessary appellate procedures.” Id. at 813 (internal
citation and quotation marks omitted). The decision to grant or deny a Rule 59(e) motion is
entrusted to the “sound judgment” of the district court. Id. Rule 59 should not be used to
advance arguments or theories that could have been made prior to the district court rendering a
judgment. Id. Nor should it be used to reassert previously rejected arguments. See Vesely v.
Armlist L.L.C., 762 F.3d 661, 666 (7th Cir. 2014). Motions pursuant to Rule 59(e) should only
be granted in rare circumstances. See Bank of Waunakee v. Rochester Cheese Sales, Inc., 906
F.2d 1185, 1191 (7th Cir. 1990).
Discussion
First, Plaintiff posits that substantial evidence of actual confusion in this case makes it
unique and there is no Seventh Circuit authority that substantial evidence of actual confusion
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cannot prove acquired secondary meaning. Plaintiff asserts that the Court erred in relying on the
majority opinion in Platinum Home Mortgage Corp. v. Platinum Financial Group, Inc., 149 F.3d
722 (7th Cir. 1998), as there was only de minimis evidence of actual confusion in Platinum. The
Court disagrees. As set forth in the Court’s Order on summary judgment, the Court finds that
evidence of actual consumer confusion is not a factor that may properly be considered in analyzing
whether a mark has acquired secondary meaning. Indeed, in Platinum, the Seventh Circuit
remarked that “consumer confusion does not exist within the scope of an infringement claim when
the mark is not entitled to trademark protection.” 149 F.3d at 729. Notably, the Court did not
differentiate “de minimis” or “substantial” evidence of consumer confusion in setting forth its
proclamation. Further, in her dissent, Judge Wood recognized that the majority “refused to
consider Platinum Mortgage’s evidence of actual confusion, believing this irrelevant to the
existence of a protectable trademark.” Id. at 733. This Court shall follow the majority in
Platinum and in so doing, finds that Plaintiff did not have a protected trademark.
The Court also rejects Plaintiff’s arguments concerning its previous finding that
Defendants are entitled to the fair use defense. Plaintiff does not articulate any manifest error of
law or fact, but again, merely takes issue with the Court’s previous ruling. In particular, Plaintiff
asserts the Court erred in finding that Defendants’ use of the phrase “express clinic” was not used
as a trademark. Plaintiff asserts that “it seems unlikely that the Seventh Circuit would invoke the
fair use defense in the face of substantial evidence of actual confusion.” Plaintiff provides no
authority for this position. The Court finds no basis to reconsider its conclusion that Defendants’
use of the phrase “Express Clinic” was “otherwise than as a trademark.” The Court reiterates that
Defendants’ use of “Express Clinic” does not identify the particular source of the product in light
of the record in this case and relevant case law.
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Finally, Plaintiff contends the Court erred in finding that Defendants used the phrase
“Express Clinic” in good faith. Plaintiff asserts there was evidence in the record, mainly Glarner
and Long’s testimony, that rebut Defendants’ claim that the naming decision was related solely to
“reaching consistency in their naming conventions.” Plaintiff asserts it is entitled to the inference
the competition with Plaintiff motivated Defendants’ choice of the new name. Again, the Court
disagrees. The fact that Defendants were aware of Plaintiff’s mark is insufficient to establish that
Defendants acted in bad faith. Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir.
2001). The evidence that Plaintiff cites does no more than indicate knowledge of the mark on
behalf of Defendants and does not create a reasonable inference that Defendants were motivated
by competition with Plaintiff in using the phrase “Express Clinic.”
For the above-mentioned reasons, Plaintiff’s Motion to Alter Judgment (Doc. 46) is
DENIED.
IT IS SO ORDERED.
DATED: September 25, 2019
s/ Reona J. Daly
Hon. Reona J. Daly
United States Magistrate Judge

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