UHS of Delaware, Inc. v. United Health Services, Inc.

Filing 267

ORDER DENYING UHS' MIL 172 seeking to exclude evidence or argument that trademarks owned by pltf UHS Delaware are "incontestable." (See order for complete details.) Signed by Chief Judge Christopher C. Conner on 3/8/17. (ki)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
UHS OF DELAWARE, INC.,
Plaintiff
v.
UNITED HEALTH SERVICES,
INC., et al.,
Defendants

:
:
:
:
:
:
:
:
:
:

CIVIL ACTION NO. 1:12-CV-485
(Chief Judge Conner)

ORDER
AND NOW, this 8th day of March, 2017, upon consideration of the
motion (Doc. 172) in limine by defendants United Health Services, Inc., United
Health Services Hospitals, Inc., Professional Home Care, Inc., Twin Tier Home
Health, Inc., Ideal Senior Living Center, Inc., Ideal Senior Living Center Housing
Corporation, Inc., Delaware Valley Hospital, Inc., and United Medical Associates
(collectively “United Health Services”), seeking to exclude evidence or argument
that trademarks owned by plaintiff UHS of Delaware, Inc., (“UHS Delaware”), are
“incontestable,” wherein United Health Services asserts that such evidence is both
irrelevant and unduly prejudicial, (id.), and the motion having been fully briefed
and all parties thus having been heard by the court, (Docs. 173, 204, 221), and the
court observing that relevant evidence is that which has a tendency to make a fact
of consequence “more or less probable than it would be without the evidence,” FED.
R. EVID. 401, but that the court may, in its discretion, “exclude relevant evidence if
its probative value is substantially outweighed by a danger of . . . unfair prejudice,
confusing the issues, [or] . . . misleading the jury,” FED. R. EVID. 403, and turning

first to United Health Services’ relevance argument, the court observing that to
prevail on a trademark infringement claim under both the Lanham Act and state
law, UHS Delaware must prove that (1) the marks in dispute are valid and legally
protectable; (2) UHS Delaware owns the marks; and (3) United Health Services’
use of a similar mark generates “a likelihood of confusion,” A&H Sportswear, Inc.
v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000), and the court
finding that incontestability is directly relevant to the first and second elements,
which are presumptively proven when a mark achieves incontestable status, Del.
Valley Fin. Group, Inc. v. Principal Life Ins. Co., 640 F. Supp. 2d 603, 622 n.9 (E.D.
Pa. 2009) (citing Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 194
(3d Cir. 1990)); see also Pocono Int’l Raceway, Inc. v. Pocono Mountain Speedway,
Inc., 171 F. Supp. 2d 427, 431 (M.D. Pa. 2001), and the court further finding that
incontestable marks are prima facie distinctive, see CSC Holdings, LLC v. Optimum
Networks, Inc., 731 F. Supp. 2d 400, 408 n.3 (D.N.J. 2010); First Keystone Fed. Sav.
Bank v. First Keystone Mortg., Inc., 895 F. Supp. 456, 461 (E.D. Pa. 1995); Barnes
Group, Inc. v. Connell Ltd. P’ship, 793 F. Supp. 1277, 1301 (D. Del. 1992); (see also
Doc. 235 at 14), a factor material to the likelihood of confusion calculus, and the
court concluding that evidence of the “UHS” marks’ incontestable status is directly
relevant to UHS Delaware’s claims sub judice, and turning second to United Health
Services’ concern regarding prejudicial effect, the court noting that this matter will
be tried as a bench trial rather than a jury trial, and that, in the bench trial context,
courts generally should not exclude evidence under Rule 403 on unfair prejudice

2

grounds, because a judge is able to objectively assess probative value and reject any
improper inferences, see Suter v. Gen. Accident Ins. Co. of Am., 424 F. Supp. 2d 781,
790-91 (D.N.J. 2006) (citations omitted), and the court determining that there is no
risk of prejudice from admission of or reference to the marks’ incontestable status,
it is hereby ORDERED that United Health Services’ motion (Doc. 172) in limine is
DENIED.

/S/ CHRISTOPHER C. CONNER
Christopher C. Conner, Chief Judge
United States District Court
Middle District of Pennsylvania