Dudley v. Healthsource Chiropractic, Inc. et al

Filing 99

ORDER re 83 MOTION for Summary Judgment filed by Healthsource Chiropractic, Inc., Stephen T. Divito, D.C., 84 MOTION for Partial Summary Judgment and to Amend the Complaint filed by Donald R. Dudley, D.C. The Defendants' motion for summary judgment and the Plaintiff's cross motion for partial summary judgment on the issue of the geographic extent of Plaintiff's trademark rights are denied. Signed by Hon. Michael A. Telesca on December 26, 2012. (MES)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DONALD R. DUDLEY, D.C.
d/b/a HEALTHSOURCE CHIROPRACTIC,
07-CV-6631

Plaintiff,

DECISION AND ORDER

v.
HEALTHSOURCE CHIROPRACTIC, INC. and
STEPHEN T. DIVITO, D.C.,
Defendants.
_______________________________________

Plaintiff, Donald R. Dudley (“Plaintiff”), brings this action
against HealthSource Chiropractic, Inc. (“HealthSource Inc.”) and
Stephen T. Divito (“Divito”) (collectively, “Defendants”), alleging
trademark infringement, cybersquatting, false designation of origin
and unfair competition, seeking monetary damages and a permanent
injunction. (Docket No. 1.)

In a Decision and Order dated August

7, 2012, this Court granted in part and denied

in part the

Defendants’ motion for summary judgment and denied the Plaintiff’s
cross

motion

determined

for

that

partial

issues

of

summary
fact

judgment.

remained

The

with

Court

respect

to

also
the

territorial extent of the Plaintiff’s right to exclusively use the
trademark at issue in this lawsuit - HealthSource Chiropractic.
However, the Court granted Plaintiff additional time to submit
evidence relating to the territorial extent of trademark rights.
Dudley v. HealthSource Chiropractic, Inc., – F.Supp.2d –, 2012 WL
3253194

(W.D.N.Y.

August

7,

2012)(Telesca,

J.)

(“August

2010

Order”).
Plaintiff has submitted two additional affidavits to support
his argument that he has acquired rights to exclusively use the
HealthSource Chiropractic mark in Monroe County and the five
contiguous counties.

Defendants contend that the evidence should

not be considered because it was not timely produced in discovery
pursuant to Rule 26 of the Federal Rules of Civil Procedure.
Defendants also contend that the evidence submitted does not
conclusively establish Plaintiff’s exclusive right to use the
HealthSource Chiropractic mark in the entirety of Monroe County and
the

five

contiguous

counties.

Instead,

they

contend

that

Plaintiff’s zone of exclusivity should be limited to the three to
five mile radius surrounding his office in Monroe County as of the
date when his trademark rights were frozen - July 10, 2007.
The

Court

will

consider

Defendants’ objections.

the

additional

evidence

over

With respect to the Dudley Affidavit, in

its August 2012 Order, the Court granted Plaintiff additional
discovery as needed and specifically instructed the Plaintiff to
provide information relating to the dates he treated patients in
areas outside of Monroe County.

Further, Defendants were provided

with the name of the second affiant, Craig Rybczynski, during
discovery, albeit on the last day.

While Plaintiff could have

provided Rybczynski’s name at an earlier date, there is no evidence
that

the

Defendants

disclosure.

were

prejudiced

by

the

relatively

late

Accordingly, the Court denies Defendants’ request to

exclude this information from the record.
The Court previously discussed some of the case law relevant
to its decision on this issue. Courts have found several factors
relevant

to

penetration.

determining

the

geographic

extent

of

market

For example, (1) volume of sales; (2) growth trends;

(3) number of buyers in ratio to potential customers; and (4)
amount of advertising. See Natural Footwear Ltd. v. Hart, Schaffner
& Marx, 760 F.2d 1383, 1398-1399 (3rd Cir. 1985) (citing cases). And
other Courts have relied the concept of the “zone of natural
expansion”

to

determine

the

territorial

exclusive right to use a particular mark.

limits

of

a

party’s

See Allard Enterprises,

Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564, 574 (6th
Cir. 2001)(citing In re Beatrice Foods Co., 57 C.C.P.A. 1302, 429
F.2d 466, 475 (1970)(“[w]here a party has submitted evidence
sufficient to prove a strong probability of future expansion of his
trade into an area, that area would then become an area of
likelihood of confusion if a registration covering it was granted
to another party.”)). The Allard Court held that the consideration
of the Natural Footwear factors and the concept of the zone of
natural expansion, together, was an appropriate test for courts to
determine the parties’ respective territorial rights. Id. However,
“[t]he actual geographic area a party carves out is a question of
fact.” Popular Bank of Florida v. Banco Popular de Puerto Rico, 9
F.Supp.2d 1347, 1354 (S.D.F.L. 1998).
According to the record, Plaintiff had approximately one

hundred patients outside of Monroe County and approximately eight
hundred patients in Monroe Country as of July 10, 2007.

Forty

eight of those patients outside of Monroe County resided in the
five counties contiguous to Monroe County, which Plaintiff contends
should be included within his zone of exclusivity.

Defendants

counter that forty eight people is an extremely small percentage of
the population of the five contiguous counties and that Plaintiff
has not produced evidence relating to several of the other Natural
Footwear

factors.

Defendants

also

contend

that

the

typical

geographic reach of a chiropractic office is three to five miles.
Plaintiff also has produced evidence that as of July 10, 2007,
he had advertised in several local newspapers in Monroe County and
in the Yellow Pages of the Rochester telephone book.

The precise

geographic reach of the Rochester Yellow Pages at the time he
placed his advertisements prior to July 10, 2007 is not in the
record.

Plaintiff also served as the team chiropractor to several

local sports teams, and his advertisements were featured during
broadcasts

of

their

advertisements

games.

extended

The

beyond

geographic

Monroe

County

reach

of

these

and

the

five

contiguous counties, however, it is unclear what, if any, effect
such

advertisements

had

on

the

general

population

of

this

geographic area.
The Court finds that the number of patients and the volume of
advertising outside of Monroe County prior to July 10, 2007 is

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insufficient to conclusively establish, at the summary judgment
stage, that Plaintiff is entitled to exclusive trademark rights in
Monroe County and the five contiguous counties. However, the Court
finds that Plaintiff has submitted sufficient evidence to raise a
material issue of fact as to the geographic extent of his exclusive
trademark rights, including whether the entirety of Monroe County
and the five contiguous counties should be included within his zone
of natural expansion. Accordingly, the parties’ respective motions
for summary judgment on this issue are denied.

ALL OF THE ABOVE IS SO ORDERED.
S/ MICHAEL A. TELESCA
HON. MICHAEL A. TELESCA
United States District Judge
Dated:

Rochester, New York
December 26, 2012

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