Heartland Animal Clinic, P.A. v. Heartland SPCA Animal Medical Center, LLC et al
Filing
48
MEMORANDUM AND ORDER granting plaintiff's Motion for Preliminary Injunction. Signed by District Judge J. Thomas Marten on 3/20/2012. (mss)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
HEARTLAND ANIMAL CLINIC, P.A.,
Plaintiff,
vs.
Case No. 11-2629-JTM
HEARTLAND SPCA ANIMAL MEDICAL
CLINIC, LLC, et al.,
Defendants.
MEMORANDUM AND ORDER
This is an action under the Lanham Act, alleging one count of service mark infringement, in
violation of 15 U.S.C. § 15259(a). The plaintiff Heartland Animal Clinic, a small veterinary clinic,
seeks an injunction prohibiting the defendants from marketing their services under the “Heartland”
mark.
On March 16, 2012, the court conducted a hearing on the plaintiff’s Motion for Preliminary
Injunction. As stated at the conclusion of the hearing and as further discussed herein, the plaintiff’s
motion for injunctive relief is hereby granted.
Plaintiff Heartland Animal Clinic is a small veterinary practice in Overland Park, Kansas.
Employing two licensed veterinarians, a veterinary technician and a handful of office and support
staff, the plaintiff offers a range of veterinary services, including wellness care (vaccines, check-ups
and grooming), dentistry, microchipping, prescriptions, surgical care and overnight boarding. The
plaintiff originally operated under the name Santa Fe Animal Clinic, but changed to its current name
in 1995 when another veterinary practice in the area also started using the Santa Fe name.
On June 15, 2011, the non-profit organization Heartland SPCA, LLC, was formed from the
merger of two existing animal welfare organizations in the Kansas City area. Heartland SPCA is
dedicated to the prevention of cruelty to animals and to providing a full-service, full- circle solution
for pets and pet-lovers in Kansas City. At the same time, Heartland SPCA formed two subsidiaries:
Heartland SPCA Animal Medical Center, LLC and Heartland SPCA Pet Adoption and Lost Pet
Center, LLC. Although legally distinct, the three Heartland SPCA entities are marketed and
advertised to the public under a single name: “Heartland SPCA.”
The Heartland SPCA organizations collectively provide adoption services, lost pet services,
pet in-take services for stray or unwanted pets, affordable veterinary care offered at a range of prices
based on financial means, and community outreach programs. Heartland SPCA also investigates
calls for pets in need.
The plaintiff alleges that Dr. Jill Sandler, the owner of Heartland Animal Clinic, discovered
that the defendants, who are located about four miles from her practice – were marketing their
services using the Heartland name. According to the plaintiff, soon afterwards it began to receive
calls and visits from persons trying to reach Heartland SPCA. Over the course of the next five
months, Plaintiff’s employee conducted a log which reflects some 166 attempts by persons or other
veterinary organizations trying to contact the defendants.
Dr. Sandler contacted the Defendants’ Executive Director, Courtney Thomas, and asked her
to please stop using the Heartland name. Thomas declined, citing the $100,000 that the defendants
had recently spent on marketing. On August 30, 2011, counsel for Heartland Animal Clinic sent a
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letter to counsel for the defendants demanding that the defendants stop using the name Heartland.
The defendants refused.
Plaintiff Heartland Animal Clinic has an annual budget of $6500 for marketing, which it uses
on promotional items, a yard sign, and a yellow pages. In 2012 it began a radio ad campaign for the
first time.. Historically, 60% of its customers have learned of its existence through word of mouth.
The defendants operate from a single marketing budget, all operating under the same
umbrella description as “Heartland SPCA.” The defendants anticipate spending $225,000 on
marketing in 2012, and spent a similar amount in 2011.
Standards for Relief
Injunctive relief requires a showing that the movant has a substantial likelihood of success
on the merits and faces irreparable harm absent the relief, harm which is greater than the damage of
the relief to the opposing party, and that the preliminary injunction is consistent with the public
interest. Beltronics USA v. Midwest Inventory Distrib., 562 F.3d 1067, 1070 (10th Cir. 2009). In an
action under the Lanham Act, the plaintiff must show that it owns a valid, protectable mark and that
the defendant's mark is so similar to the plaintiff's that it is likely to cause consumer confusion.
Primedia Intertec. v. Tech. Marketing, 35 F.Supp.2d 809, 815 (D. Kan. 1998).1
1
The trademark status of the term “Heartland” has been the focus of at least one prior
action. In Heartland Bank v. Heartland Home Finance, 335 F.3d 810 (8th Cir. 2003), the Eighth
Circuit reversed the decision of the district court granting judgment after a matter of law after
excluding, as a discovery sanction, the plaintiff’s Confusion Log Summaries. The Court of
Appeals held the district court should have considered some lesser sanction, given that without
the evidence, “the Bank could not show any case of confusion,” and remanded the action for such
a determination. 335 F.3d at 817.
3
The parties dispute, however, whether the plaintiff’s request for relief falls into the category
of disfavored injunctions, and hence is subject to a heightened burden. The defendants contend that
the plaintiff must make “a strong showing both with regard to likelihood of success on the merits
and with regard to the balance of the harms” since it is seeking a change in the status quo and is
essentially seeking all the relief it might otherwise obtain after a full trial. General Motors v. Urban
Gorilla, LLC, 500 F.3d 1222, 1226 (10th Cir. 2009).
As this court recently held in Planned Parenthood of Kansas v. Brownback, 799 F.Supp.2d
1218, 1226 (D. Kan. 2011), for purposes of injunctive relief the status quo is the “last peaceable
uncontested status existing between the parties before the dispute developed,” which in this case
would be before defendants adopted the “Heartland” mark. On the other hand, the court finds that
the plaintiff should be subjected to a heightened burden, because the relief sought by plaintiff here
is essentially what it would otherwise obtain at trial.2
1. Distinctiveness of the “Homeland Animal Clinic Mark”
The first issue in dispute between the parties is whether the mark “Heartland Animal Clinic”
represents a descriptive mark which, in the absence of some proof of secondary meaning, receives
no trademark protection, or a suggestive mark, which is protected. A descriptive mark “conveys an
immediate idea of the ingredients, qualities, or characteristics of the goods [or services].” Primedia,
35 F.Supp.2d at 816. Suggestive marks require “imagination, thought, and perception to reach a
2
As discussed below, the court finds that the plaintiff is entitled to relief applying the
heightened standard. The court notes that, after initially requesting a trial by jury, the defendant
subsequently concurred (Dkt. 22) with the plaintiff’s Motion to Strike (Dkt. 18), agreeing that no
right to jury trial exists. Accordingly, the matter will be ultimately tried, without any heightened
burden, to the court.
4
conclusion as to the nature of the goods” and are entitled to protection from infringement. Id.
Standing in opposition to descriptive marks are arbitrary or fanciful marks, which “bear no
relationship to the product or service with which they are associated” and receive the most
protection. Id. at 815.
The categorization of a mark is a factual question [but] the fact-finder's own
perception of the mark is not the object of the inquiry. Rather, the fact-finder's
function is to determine, based on the evidence before it, what the perception of the
purchasing public is.
Donchez v. Coors Brewing, 392 F.3d 1211, 1216 (10th Cir. 2004) (citations and internal quotations
omitted).
The defendants correctly cite a leading authority for the proposition that geographic names
are normally deemed unprotected in the absence of secondary meaning. 2 J. McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION, § 14.1, at
(2011) (“[t]erms that are descriptive of the
geographic location or origin of goods and services are regarded by the law as not being ‘inherently
distinctive’ marks’”). The defendants stress that the dictionary meaning3 of “Heartland” is merely
“the central geographical region of the United States,” which they take to mean “Kansas, Missouri
and surrounding areas. (Dkt. 36, at 7). Accordingly, the defendants contend that the plaintiff’s mark
“is geographically descriptive and therefore unprotectable.” (Id.)
The plaintiff notes that the defendants give a truncated version of Merriam-Webster, which
states in full that the “Heartland” is ““the central geographical region of the United States in which
mainstream values or traditional values predominate.” (Emphasis added). Thus, the plaintiff does
not argue that “Heartland” is a geographic term that is protectible because it is a geographically
3
Merriam-Webster Dictionary, www.merriam-webster.com/dictionary/heartland.
5
descriptive term which has acquired a secondary meaning; it argues that the term is not descriptive
but suggestive. (Dkt. 30, at 8).
The plaintiff makes this argument in two steps. First, it notes that the term is not tied to any
specific geographical area, noting examples of businesses named “Heartland” in Seattle, Washington
and Winslow Maine. The PBS show America’s Heartland is filmed in all 50 states, the series
opening with the observation that “America’s heartland is more than a place; it’s a state of mind.”
And, citing a wikipedia entry, it notes that the Heartland Rock genre, was founded by New Jersey
native Bruce Springsteen.
Second, the plaintiff argues that “Heartland” conveys values beyond any location, but “a set
of values; integrity, and appreciation for hard work, community, a sense of home.” (Dkt. 30, at 8).
In particular, it notes the song Heartland by George Strait, in which he sings:
When you hear twin fiddles and a steel guitar,
You're listening to the sound of the American heart.
And Opry music on a Saturday night
Brings a smile to your face and a tear to your eye.
Sing a song about the heartland,
The only place I feel at home.
Sing about the way a good man
Works until the daylight’s gone.
Sing the rain on the roof on a summer night
Where they still know wrong from right.
Sing a song about the heartland.
Sing a song about my life.
It couples this with the results of an internet consumer survey conducted by Op4G, a
company that conducts marketing surveys. The five-question survey was answered by 600 persons,
which, plaintiff suggests resulted in a confidence interval of plus or minus four percentage points
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and a confidence level of 95 percent.
Question 2 of the survey asked for their reaction to the statement, “When people refer to ‘The
Heartland’, they are referring to more than a geographic region.” The heavy majority of the
respondents either Strongly Agreed (238 or 40%) or somewhat agreed (220, or 37%). Only 8% (49)
somewhat disagreed and 3% (16) strongly disagreed. Thirteen percent (77) of the respondents neither
agreed nor disagreed.
Question 3 asked, “If a company in a Midwestern city opened with the name ‘Heartland Child
Care’, what would it be trying to communicate?” and asked respondents to give the “best answer.”
Response
Respondents
%
Traditional Values:
301
50
Dependability:
70
12
Location:
68
11
Honesty:
61
10
Hard Working:
53
9
Variety of Services:
40
7
Size:
7
1
Question 4 was open-ended, and asked “What does the term Heartland mean to you?” The
plaintiff notes that the word “values” is mentioned 110 times by respondents, “hard-working” 101
times, and “honest” 89 times. The plaintiff also notes some of the full answers provided, which
included:
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A location or place that is home to you no matter where you go in life.
Something or someone with values, respect, accountability.
It brings images of home, family, good neighbors, a good place to live.
Heartland means a place where the things that really matter in life - God, family,
friends, honor, respect, dignity, integrity, love - are the things that are prioritized. It's
a safe place where you can trust people to really care and to do their best to show
insiders and outsiders kindness.
The heart of America, the lifeblood of the country. Where people believe in honest,
hard work and the values of family and community.
Home, family, loving one another, church, God and overall traditional values
Means a different attitude toward work ethic and relationship with people
In its Response, the defendants acknowledge that “Heartland” might have “another ancillary
meaning,” but suggest that this is irrelevant because the term is primarily geographically descriptive.
(Dkt. 36, at 8). In support of this argument, the defendants rely in particular on Midwest Research
Inst. v. S & B Promotions, 677 F. Supp. 1007 (W.D. Mo. 1988), where the court held that the word
“Midwest” was geographically descriptive and unprotectable absent secondary meaning. But
“Midwest” is not a term fraught with the sort of values which attach to “Heartland.” The plaintiff
in Midwest Research never contended the term was suggestive, only that term was protected through
secondary meaning.
The defendants also rely on Burke-Parsons-Bowlby v. Appalachian Log Homes, 871 F.2d
590, 595 (6th Cir. 1989), where the Sixth Circuit held that the mark “Appalachian Log Structures”
was a geographic description and not protectible. The court concluded that “[w]hen a geographic
name is used on goods, it does not represent a single source but refers to the area in which the goods
originated. A ‘goods/place association’ by the public is therefore presumed.” Id. at 596 (citing In
8
re Nantucket, 677 F.2d 95, 99 (U.S.Ct.C. & P.A.1982)). Notably, the court did not discuss whether
the term might be suggestive, but analyzed the term only within the extremes of descriptive or
arbitrary. See 871 F.2d at 594-95. The parties apparently made no attempt to contend that
“Appalachian” might have acquired colloquial values making the term suggestive in nature. The
court concluded simply that there was “substantial evidence supporting the District Court’s
conclusion,” and rejected the plaintiff’s contention that the decision was clearly erroneous. Id. at 595,
596.
The defendants also present three additional arguments. First, they suggest that internet and
telephone book searches demonstrate that the term “heartland” is not tied to the plaintiff in any local
market. Specifically, it submits the results of a Google Maps search showing over 100 businesses
using the term “heartland” in the Kansas City area, and a search from the Kansas City telephone
book showing over 150 business entries beginning with the word “Heartland.” Accordingly, the
defendants contend, the term “heartland” would not indicate to the typical consumer the existence
of any single source of services.
In addressing the distinction between descriptive and suggestive marks, one leading
commentator has noted that courts may appropriately consider the use of the term by others:
Use by the Proponent and Others. A useful way to test whether a designation is
descriptive or suggestive is to determine the extent to which other sellers have used
the designation on similar goods and services. If others are in fact using the term to
describe their goods or services, an inference of descriptiveness can be drawn.
2 MCCARTHY ON TRADEMARKS, at § 11:69 (emphasis added). It may be noted here that defendants’
Exhibit 1, which details the results of the defendants’ Google search, and Exhibit 2, taken from the
Kansas City telephone book, shows only one “Heartland” apparently connected with veterinary
9
services, namely the plaintiff, Heartland Animal Clinic.
Second, citing Primedia Intertec. Corp. v. Tech. Marketing Corp., 35 F. Supp. 2d 809, 814
(D. Kan. 1998)., the defendants contend that, even if the term “heartland” has become loaded with
values beyond its use as a geographic description, such a recitation of qualities would again be
merely descriptive, and thus not protectible. In Primedia, the court was actually quoting the general
definition of a descriptive trademark as one which “conveys an immediate idea of the ingredients,
qualities or characteristic of the goods.” 35 F.Supp.2d at 814 (quoting Beer Nuts, Inc. v. Clover Club
Foods, 711 F.2d 934, 939 n. 5 (10th Cir. 1983) (quoting Abercrombie & Fitch v. Hunting World, 537
F.2d 4, 11 (2d Cir. 1976))) (internal quotation marks omitted).
The critical term, of course, is immediate. The same case (again quoting the same underlying
authorities) noted that suggestive marks, which may receive protection, are those which “require
imagination thought and perception to reach a conclusion as to the nature of the goods.” 35
F.Supp.2d at 814 (internal quotations omitted). That is precisely the argument the plaintiff makes,
that the term “heartland” is associated with values such as “integrity, an appreciation for hard work,
community, a sense of home” which the consumer applies to the services only by means of inference
and suggestion.
Finally, with respect to the evidence showing that the term “heartland” has acquired an aura
of values in addition to its geographical meaning, the defendants dismiss both the “obscure country
song” cited by plaintiff as well as its survey, which it suggests is unsound and unreliable, but the only
specific rationale advance for this conclusion in their brief is the complaint that the survey should
have asked specifically about “Heartland Animal Clinic,” as opposed to the general understanding
of the term “heartland.” (Dkt. 36, at 10-11).
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The court finds that the plaintiff’s survey is not automatically irrelevant simply because it did
not ask about “Heartland Animal Clinic.” The defendant correctly notes that a claimed trademark
“should be considered in its entirety,” Estate of P.D. Beckwith, Inc., v. Commissioner of Patents, 252
U.S. 538, 546 (1920), but this hardly means that evidence such as that offered by the plaintiff is
automatically inadmissible simply because it does not directly address the ultimate question of law
before the court. The court finds that the study was conducted according to standard practice within
the marketing industry, appears to be generally reliable, and was properly submitted as evidence.
Further, the court finds that the survey provides substantial support for concluding that the
term “Heartland” is generally understood to be less of a geographic term, and more of a term
associated with certain positive values such as hard work. In their cross-examination of the author
of the study, the defendants demonstrated that some of his codings for the responses to the openended question were subjective in nature, and upon further review might be given a different
characterization.
These changes would affect only a small portion of the reponses, however, and a thorough
review indicates that the ultimate conclusion remains valid: by a substantial margin, consumers tend
to associate the term “Heartland” with values rather than geography.
Finally, with respect to the George Strait’s Heartland, it cannot be accurately described as
obscure. The song was the Number 1 song on Billboard Magazine’s Country Music Chart for 20
weeks in 1993.4
Neither party devotes much attention to the category of suggestive marks. The Tenth Circuit
reviewed the intermediate nature of this category in Educational Dev. Corp. v. Economy Co., 562
4
http://www.billboard.com/charts#/song/george-strait/heartland/474704.
11
F.2d 26, 29 (10th Cir. 1977), noting:
The suggestive class was judicially developed to fill the need for protection of marks
that were neither exactly descriptive nor fanciful. The distinction between descriptive
and suggestive marks is difficult. The determination is often based on intuitive
reactions rather than analytical reasoning. [S]uggestive terms are those which require
the buyer to use thought, imagination, or perception to connect the mark with the
goods. Descriptive terms are those which directly convey to the buyer the ingredients,
qualities, or characteristics of the product.
The same authority otherwise cited by the defendants recognizes the middle ground nature
of suggestive marks — and its potential ambiguity:
The distinctiveness of a mark cannot be determined in the abstract, but only
by reference to the goods or services which the mark is used. For example, the mark
BRILLIANT may be “descriptive” on diamonds, “suggestive” on furniture polish,
and “arbitrary” on canned applesauce. The exact position of the line between
descriptive and suggestive marks is almost impossible to define in the abstract. As
one court has stated, “The line of demarcation may not be easy to draw, but it exists.”
In speaking of the descriptive-suggestive distinction, Judge learned Hand could be
no more definite than to state: “ it is quite impossible to get any rule out of the cases
beyond this: That the validity of the mark ends where suggestion ends and
description begins.”
....
The terms “descriptive” and “suggestive” are not mutually exclusive. There
is some description in any suggestion or the suggestive process will not take place.
2 McCarthy on Trademarks, § 11:64.
The same authority recognizes some additional factors to consider applying the imagination
test for suggestiveness of a mark:
How Direct and Immediate is the Link Between Mark and the Nature of the
Product or Service? Under the imagination test, the question is how immediate and
direct is the thought process to go from the designation to some characteristic of the
product. If one must exercise “mature thought or follow a multistage reasoning
process” to determine attributes of the product or service, then the term is suggestive,
not descriptive. For example, the Second Circuit held that GUNG-HO was merely
suggestive, not directly descriptive, of a cartoon-based toy action doll of a hard-bitten
12
marine sergeant because “a certain amount of creative imagination is required” of the
child to intuit the specific attributes of this particular
character from its mark.
For example, to receive any information about the nature of bus services from
the word “greyhound” one must know what a “greyhound” is and what its attributes
are before the mind can make any connection between the word and any alleged
characteristics of a bus service.
2 MCCARTHY ON TRADEMARKS, § 11:67.
The court finds that the plaintiff has demonstrated that the Heartland mark for veterinary
services is a protectible suggestive mark. The ordinary consumer must make a mental leap of some
size to associate the values associated with the term “heartland” to the provision of veterinary
services. The term is not used primarily as a geographic description, but is valued for its association
with positive characteristics such as hard work, honesty, and — in particular — customary,
homespun, “traditional values.”
2. Likelihood of Confusion
In the context of a trademark action, a likelihood of confusion will be deemed to exist where
“consumers make an incorrect mental association between the involved commercial products or their
producers.” Jordache Enter., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir. 1987). “In
determining whether marks are likely to cause confusion, the Tenth Circuit has set forth the
following list of factors that the Court must use: (a) the degree of similarity between the marks; (b)
the intent of the alleged infringer in adopting its mark; (c) the relation in use and the manner of
marketing between the goods or service marketed by competing parties; (d) the degree of care likely
to be exercised by purchasers; (e) evidence of actual confusion; and (f) the strength or weakness of
13
the marks.” Primedia, 35 F. Supp. 2d at 818 (citing First Savings Bank, FSB v. First Bank System,
Inc., 101 F.3d 645, 652 (10th Cir. 1996)). The court must consider all six factors, as no single factor
is determinative. Team Tires Plus, Ltd. v. Tires Plus, 394 F.3d 831, 833 (10th Cir. 2005).
A. Similarity
The distinctiveness of a mark is derived from the mark as a whole, and accordingly the mark
is examined in its entirely rather than its constituent parts. Estate of P.D. Beckwith v. Comm’r of
Patents, 252 U.S. 538, 545-46 (1919); The Golf Warehouse, LLC v. Golfers’ Warehouse, Inc., 142
F. Supp. 2d 1307, 1309 (D. Kan. 2001). This includes an examination of the design, fonts, and logos
associated with the mark. Universal Money Centers v. American Tel. & Tel., 22 F.3d 1527 (10th Cir.
1994). Courts should examine the mark as actually used in the marketplace, including sight, sound,
and meaning. Universal Money Centers v. American Tel. & Tel., 22 F.3d 1527, 1530-31 (10th Cir.
1994).
The plaintiff has advertised itself using combination of the “Heartland Animal Clinic” mark,
coupled with a silhouette of a dog and cat:
14
The defendants have marketed their services under using logos similar to this:
The defendants stress the differences in these marks as to font, the use of color, and the use
of the acronym “SPCA.” At the same time, much of the defendants’ marketing has been through
electronic means, including their use of radio advertisements, which may diminish some of the
distinctive visual aspects of the marks, with many consumers simply retaining the term “Heartland”
as a course of animal care services. Moreover, while some aspects of the marks are distinct, the
marks both show a dog and cat in profile, and use the term “Heartland” as the most prominent word.
B. Intent
“The proper focus is whether defendant had the intent to derive benefit from the reputation
or goodwill of plaintiff.” Jordache Enterprises v. Hogg Wyld, Ltd., 828 F.2d 1482, 1485 (10th Cir.
1987) (quoting Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 431 (5th Cir.1984)). There is no
evidence that the defendants intentionally adopted their mark with an intent to pass their services off
as those of the plaintiff.
15
At the same time, however, the court notes that defendants made no effort to conduct inquiry
as to existing users of the “Heartland” brand within the local market, since they were the only SPCA
in the region. The defendants, however, are not simply an anti-cruelty organization, but an umbrella
of animal care services providers — including veterinary care — marketed under the same general
logo.
C. Marketing
The defendants contend that there is little overlap between the marketing used by the parties.
The defendants use direct mail, e-mail, social media, and advertisements on television and radio. The
plaintiff, according to defendants restricts its marketing to the Yellow Pages, Yahoo Listings,
magnetic logos on employee cars, a local Fall Festival Parade, and a radio program fundraising
campaign. In addition to veterinary services, the defendants stress that they provide adoption and
cruelty-prevention services. Further, they emphasize low cost veterinary services, with 60% of their
customers falling below the federal poverty line.
While this is a substantial number, and of course reflects commendable charitable intent, the
other side of the coin is that a non-negligible portion of the defendant’s clients include persons above
the poverty line, customers who might otherwise seek services from the plaintiff.
D. Degree of Care
Where a typical customer may be expected to exercise small care in avoiding confusion as
the source of a product — such an impulse purchase of snack food — the likelihood of consumer
16
confusion increases. See Beer Nuts v. Clover Club Foods, 711 F.2d 934, 941 (10th Cir. 1983). The
defendants note that one court has concluded, in a trademark action over veterinary services, that
“reasonably attentive pet owners should be particularly attentive in selecting a veterinarian for their
family pets,” thereby lessening the likelihood of consumer confusion. Cohn v. Petsmart, Inc., 281
F.3d 837, 843 (9th Cir. 2002).
But Cohn did not ground its observation on any evidence. Instead, the court simply cited its
earlier decision in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cri. 1979), abrogation in part
on other gds. recognized by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n. 19 (9th
Cir.2003). In AMF, the court observed:
In assessing the likelihood of confusion to the public, the standard used by the courts
is the typical buyer exercising ordinary caution. Although the wholly indifferent may
be excluded, the standard includes the ignorant and the credulous. When the buyer
has expertise in the field, a higher standard is proper though it will not preclude a
finding that confusion is likely. Similarly, when the goods are expensive, the buyer
can be expected to exercise greater care in his purchases; again, though, confusion
may still be likely.
599 F.2d at 353 (citations omitted). The plaintiff and the defendant “vigorously contested” the
sophistication of the relevant market, but the court of appeals upheld as “amply supported by the
record” the district court’s decision favoring the defendant on the sophistication of purchasers of
“high quality” watercraft. Id. “Common sense and the evidence indicate that this is not the type of
purchase made on ‘general impressions.’” Id.
In contrast, the defendant has supplied no evidence relating to the sophistication to animal
care consumers in the relevant market. Without slighting the affection individual owners may have
for their pets, the court notes that the defendants’ marketing is not directed, as in AMF, at buyers
who have “expertise in the field” for services which are “expensive.” Indeed, precisely the opposite
17
is true — the defendants are marketing services to relatively unsophisticated purchasers of “low
cost” veterinary services.
E. Actual Confusion
This is the only factor actually addressed by the plaintiff, which correctly notes in its Reply
that actual confusion has been deemed “the best evidence of the likelihood of confusion.” Primedia,
35 F.Supp.2d at 821 (citing Universal Money Centers, 22 F.3d at 1534).See also 4 MCCARTHY ON
TRADEMARKS, § 23:13 at 23-111 (“[a]ny evidence of actual confusion is strong proof of the fact of
a likelihood of confusion”). However, as noted earlier, no one factor is deemed dispositive in the
likelihood of confusion analysis.
In support of their argument that the court should give minimal significance to the call log
compiled by the plaintiff, the defendants cite several cases which found only weak evidence of actual
confusion, in particular Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 636 (6th Cir. 2002).
These cases are factually distinct, and their relevance here is limited.
In Therma-Scan, the plaintiff cited 18 misdirected e-mail inquiries. After first noting only
six of these e-mails reflected some potential confusion by domestic purchasers, the court stressed
the evidence was of limited value on multiple levels:
First, the six misdirected e-mail messages become much less probative of
actual confusion when measured against the number of people who have purchased
Thermoscan's thermometers and who have requested information about them.
Thermoscan sold 3,200,000 ear thermometers between January 1, 1997 and July 31,
2000, and it receives, on average, 11,000 calls each month on its toll-free
consumer-information telephone number. Six confused customers is legally
insignificant in light of the scale of Thermoscan's operations.
Second, the fact that the confusion occurred in e-mail messages raises the
18
possibility that consumers sent the inquiries about the thermometers to TSI rather
than to Thermoscan because they were inattentive or careless, as opposed to being
actually confused. A consumer using a popular Internet search engine to locate an
e-mail address for Thermoscan could find TSI's website if he or she mistakenly
conducted a search for “thermascan” rather than for “thermoscan.” The fact that TSI
does not advertise increases the likelihood that the people who sent the e-mail
messages to TSI were inattentive or careless when attempting to find the e-mail
address for Thermoscan, rather than confused about the source of the ear
thermometers.
Finally, all of the instances which allegedly support a finding of actual
confusion occurred between November 20, 1998, and July 26, 2000. The absence of
any evidence of confusion prior to this time period, despite the coexistence of the
goods and services since 1990, supports a conclusion that consumers have not been
confused about whether TSI is affiliated with Thermoscan. Moreover, the lack of any
indication that consumers were confused prior to November of 1998 further bolsters
the likelihood that the e-mail messages were due to carelessness rather than actual
confusion.
295 F.3d at 635-36 (citations omitted). The court cited its earlier decision in S.C. Johnson & Son,
Inc. v. Johnson, 266 F.2d 129, 141 (6th Cir.1959), where it held that “[t]he owner of a trademark is
not entitled to a guarantee against confusion in the minds of careless and indifferent buyers, and
merely occasional cases of confusion or thoughtless error by very inattentive purchasers are of very
little significance in trademark and unfair competition cases.” (Citation omitted, emphasis added).
Similarly in Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1098 (8th Cir.1996),
another case cited by the defendants, the court found that a plaintiff's receipt of “several isolated
instances” of defendant's mail and phone calls “was de minimis and [served] to show inattentiveness
on the part of the caller or sender rather than actual confusion,” but the opinion of the court, other
than referring to “the vague evidence of misdirected phone calls and mail,” fails to indicate either
the number or content of these inquiries.
Such cases simply reflect the view that
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[e]vidence of only a small number of instances of actual confusion can be dismissed
as inconsequential or de minimis. Evidence of actual confusion of a very limited
scope may be dismissed as de minimis: Probable confusion cannot be shown by
pointing out at at someplace, at some time, some one made a false identification....
....
Evidence of the number of instances of actual confusion must be placed
against the number of opportunities for confusion before one can make an informed
decision as to the weight to be given the evidence. If there is a very large volume of
contacts or transactions which could give rise to confusion and there is only a handful
of instances of actual confusion, the evidence of actual confusion may receive
relatively little weight....
....
However, given the proper factual setting, even just a few instances of
actual confusion can provide very persuasive of how and why confusion can
occur.
4 MCCARTHY ON TRADEMARKS, § 23:14 (emphasis added).
In contrast to Therma-Scan, the call log presented to the court by plaintiffs show not a few
“merely occasional” inquiries, but dozens of instances of consumers apparently confusing Heartland
Animal Clinic and Heartland SPCA. Further, again in contrast to Therma-Scan, these confused
inquiries arose almost immediately upon the defendant’s adoption of the Heartland SPCA mark.
The court finds that the call log provides strong evidence of actual confusion.5 The court also
5
Allegations of customer confusion may sometimes take the form of hearsay. In Vitek
Systems v Abbott Laboratories, 675 F.2d 190, 193 (8th Cir. 1982), the court noted the plaintiff’s
evidence of confusion took the form of “witnesses [who] testified, in effect, that customers had
told them that they were confused by the similarity of the marks. Such testimony was hearsay in
nature and the district court properly gave it little weight.” The call log submitted by plaintiff
here, in contrast, generally is free of such truth-of-the-matter hearsay, and instead reflects simple
notations reflecting callers seeking services from Heartland SPCA. See Jordache, 828 F.2d at
1487 (evidence of calls was admissible “to show the then existing state of mind” of the callers);
Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 1160 n. 10 (5th Cir.1982) (evidence of
confused inquiries was not hearsay as it was not offered to prove the truth of the matter asserted).
See 4 MCCARTHY ON TRADEMARKS, § 23:15 (recognizing majority holding customer confusion
20
finds unpersuasive the defendants’ attempts to minimize the importance of these calls.
In their brief, the defendants stress that some of the calls reflect simple customer inquiries,
asking if the plaintiff was Heartland SPCA. As the court noted in Jordache with respect to such
evidence,
the district court correctly gave it little weight. McCarthy advises, “The better view
would seem to be that while [customer] enquiry evidence is admissible and relevant,
standing alone with no other evidence it is insufficient proof of actual confusion.” 2
J. McCarthy, TRADEMARKS AND UNFAIR COMPETITION § 23:2(B) at 54 (2d ed. 1984)
[now 3 MCCARTHY ON TRADEMARKS § 23:16, at 23-128 (2011)]. We hold that even
when combined with other evidence inquiries to the plaintiff about the source of a
product are of comparatively little value.
Id. However, these calls — which reflect actual inquiries or otherwise reflecting caution or doubt
by the caller as to existence of alternative suppliers — are relatively few. In contrast, the plaintiff
was faced with a deluge of calls seeking services from the defendants, either by name or by proxy,
seeking the provision of “low cost” veterinary services.
Similarly, at the hearing of this matter, defendants placed particular stress on the last
paragraph of 4 MCCARTHY ON TRADEMARKS, § 23:13, which begins with the general observation
that “[s]ometimes what appears at first glance to be evidence of confusion is merely evidence of
consumer error not related to name confusion.” Again, however, this observation is premised on a
series of cases which are factually inapposite here. Id. at 23-117, n. 13. In the leading cited authority,
Lang v. Retirement Living Publishing Co., 949 F.2d 576 (2nd Cir. 1991), the court discounted
evidence from the plaintiff’s call log, both because the content of the calls failed to show actual
consumer confusion, and because the evidence showed that the calls stopped with the publication
is not hearsay).
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of a new telephone book.6
Lang is of little relevance here, as the plaintiff’s call log shows dozens of instances of
genuine consumer confusion as to the source of the requested veterinary services. See Beacon Mutual
Ins. v. OneBeacon Ins., 376 F.Supp.2d 251, 263 n. 7 (D.R.I. 2005) (finding Lang inapplicable and
plaintiff’s call log evidence relevant, where calls showed genuine confusion as to product source).
Moreover, the defendants’ suggestion that such consumer confusion will stop once Heartland SPC
is listed in the telephone book finds no support in the evidence. It is a mere hypothetical, made
certainly more doubtful in the present age, over two decades after Lang, where telephone books have
been largely displaced by other forms of marketing. Finally, if anything, the timing of the calls show
a strong inference of actual confusion, since this avalanche of calls began shortly after the defendants
commenced their heavy electronic marketing campaign, and has shown little sign of abatement.
F. Mark Strength
“A strong trademark is one that is rarely used by parties other than the owner of the
trademark, while a weak trademark is one that is often used by other parties.” First Sav. Bank v. First
Bank System, 101 F.3d 645, 653 (10th Cir. 1996). The court finds that this factor is neutral. The term
“heartland” is indeed used by many other businesses in the Kansas City area, but the evidence fails
to show any use in the context of veterinary services other than by the plaintiff and the defendants.
The court concludes that the plaintiff has presented strong evidence of likely confusion.
6
The other authorities cited in the treatise have even less relevance. The first, Duluth
News-Tribune, 84 F.3d 1093, has already been discussed. In the second, Bioglan Inc., v. Bioglan
Laboratories, 44 U.S.P.Q.2d 1662, 1669 (C.D. Cal. 1997), the court found that the plaintiff’s
evidence — three misplaced telephone calls — was insufficient to show actual confusion.
22
Immediately upon the defendants’ adoption of the “heartland” mark, the plaintiff has been deluged
with callers who have confused the plaintiff for the defendants. Only through additional, in some
cases lengthy inquiry, have the plaintiff’s employees been able to tell that the callers are seeking
“low cost” services from Heartland SPCA. Frequently, callers are angry, upset with the plaintiff for
the quality of services actually supplied by the defendants. Even allowing for the relatively few calls
reflecting inquiring or lazy customers simply seeking directions, there remains a large majority of
calls reflecting actual confusion among veterinary services customers. The additional factors are
either neutral in effect, or only slightly favor of the defendant. Overall, the court finds that the
plaintiff has presented compelling evidence of a likelihood of confusion.
C. Elements of Injunctive Relief
The defendants argue that even if the plaintiff made out a colorable basis for concluding that
it would succeed on the merits, the court should still deny the request for injunctive relief because
of the remaining elements for such relief are not present. Specifically, it argues that plaintiff will not
suffer irreparable injury, as it has failed to present any evidence of the loss of business or good will,
that an injunction would cause significantly more harm to the defendants, given their substantial
effort to market themselves under the “Heartland SPCA” mark, and that the public interest is not
advanced by an injunction. Finally, defendants request a bond in the amount of $420,000 in the event
the court grants an injunction, in order to cover its costs of re-branding in the event such an
injunction were later overturned.
The court finds that an injunction should issue. First, given the size of the defendant’s
ongoing marketing campaign, the plaintiff faces a serious threat of being displaced in the market,
23
notwithstanding its right to the Heartland mark. Further, the plaintiff has presented credible evidence
of injury to its good will, in the form of injury to its reputation from aggrieved but confused
customers of the defendants. Finally, infringement of a trademark by its nature contributes to
irreparable injury to its owner. See, e.g., Processed Plastic Co. v. Warner Communications, 675 F.2d
852, 858 (7th Cir. 1982).
The court recognizes that an injunction may work a substantial hardship to defendants, but
measures this against the injury to the plaintiff and the plaintiff’s right to the Heartland mark, the
defendants’ failure to exercise due caution prior to their adoption of the Heartland as a part of their
mark, and the bond which the court will require the plaintiff to post. The court also finds that an
injunction will serve the public interest by reducing confusion as to the provision of veterinary
services.
The court will require the plaintiff to post a bond as surety in an amount equivalent to one
year’s marketing budget for the defendants, $225,000.
The plaintiff’s Motion for Preliminary Injunction (Dkt. 30) is hereby granted, and the
defendants are enjoined from using the name “Heartland” to market veterinary services in the Kansas
City Metropolitan Area. As noted at the conclusion of the hearing, the court temporarily stays the
effect of the this injunction. However, in the absence of further direction by the court, the injunction
shall take full and immediate effect, without further notice, on April 16, 2012.
IT IS SO ORDERED, this 20th day of March, 2012.
s/ J. Thomas Marten
J. THOMAS MARTEN, JUDGE
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