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

Filing 271

ORDER DENYING UHS Delaware's MIL 250 to preclude evidence of "continued use" proffered in supp of the junior user defense asserted sub judice by defts (collectively "United Health Services)." (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

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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. 250) in limine by plaintiff UHS of Delaware, Inc. (“UHS Delaware”), seeking
to preclude evidence of “continued use” proffered in support of the junior user
defense asserted sub judice 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”), and the motion having been fully briefed
and all parties thus having been heard by the court, (see Docs. 252, 257, 263-1), 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 exercise its discretion to “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
it appearing that UHS Delaware’s argues, in essentia, that the court’s analysis (and

ultimate denial) of United Health Services’ summary judgment motion on its junior
user defense precludes United Health Services from introducing certain evidence in
support of that defense at trial, and argues specifically that the court “categorically”
rejected two types of evidence, to wit: evidence of United Health Services’ domain
name, and third-party newspaper references to “UHS,” as insufficient to establish
the junior user defense, but the court observing that UHS Delaware’s argument
misapprehends the court’s discussion of this evidence at summary judgment, at
which juncture the court was bound to and did “[c]onstru[e] the Rule 56 record
in favor of UHS Delaware” as the nonmoving party, (Doc. 235 at 34), and wherein
the court held only that United Health Services’ evidence of isolated, third-party
newspaper references and its registered URL address, without evidence of an
intent thereby to preserve or commercially exploit the “UHS” trademark, did not
independently suffice to entitle United Health Services to judgment, especially
when measured against ample competing evidence presented by UHS Delaware,
(see id. at 33-34), but wherein the court also observed that third-party newspaper
references may combine with “independent commercial use of the mark by the
owner” to establish continued use, (id. at 33 (citing Nat’l Cable Television Ass’n,
Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577-78 (Fed. Cir. 1991); Diarama
Trading Co., Inc. v. J. Walter Thompson U.S.A., Inc., No. 01-2950, 2005 WL 2148925,
at *7 (S.D.N.Y. Sept. 6, 2005))), and that a URL address may couple with evidence
that a trademark owner intended the domain name to identify the source of the
services to show ongoing use, (id. at 32 (citing Lockheed Martin Corp. v. Network

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Solutions, Inc., 985 F. Supp. 949, 956 (C.D. Cal. 1997); 5 J. THOMAS MCCARTHY,
TRADEMARKS AND UNFAIR COMPETITION § 25A:18 (4th ed. 2016))), and the court
concluding that the newspaper and domain name evidence proffered by United
Health Services remains relevant to United Health Services’ junior user defense,
and concerning UHS Delaware’s argument that this evidence, in particular United
Health Services’ domain name, has the potential to mislead or confuse the trier of
fact, the court noting that this matter will be tried as a bench trial rather than by
jury, and that, in the bench trial context, Rule 403 is generally inapplicable, because
the judge is unlikely to be misled or confused by legal or factual nuance and 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 thus determining that Rule 403 does not bar admission of
the newspaper and domain name evidence, it is hereby ORDERED that UHS
Delaware’s motion (Doc. 250) in limine is DENIED.

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