Children's Medical Group Inc v. Lake Country Pediatrics SC

Filing 147

ORDER signed by Judge Lynn Adelman on 10/22/19 that the parties' several motions to restrict documents to case participants 87 , 123 , 131 , 132 are GRANTED. Defendant's renewed motion for summary judgment 88 is DENIED. Plaintiff's motion for summary judgment 122 is GRANTED. (cc: all counsel) (jad)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
______________________________________________________________________
CHILDREN’S MEDICAL GROUP, INC.,
Plaintiff,
v.

Case No. 17-CV-1250

LAKE COUNTY PEDIATRICS, S.C.,
Defendant.
______________________________________________________________________
ORDER

Plaintiff Children’s Medical Group, Inc., d/b/a “Children’s Hospital of Wisconsin”
(“CHW”), brought this action seeking a declaratory judgment that CHW’s use of the
phrase “Delafield Pediatrics” to identify its primary care practice in Delafield, Wisconsin,
does not constitute trademark infringement or unfair competition under the Lanham Act
or Wisconsin common law. Defendant Lake Country Pediatrics (LCP) filed a
counterclaim alleging claims for false designation of origin in violation of Section 43(a)
of the Lanham Act, common law unfair competition and common law trademark
infringement. The action is before me on the parties’ cross motions for summary
judgment.
I. BACKGROUND
In July 1998, Dr. Mark Kamsler established Delafield Pediatrics, S.C., a
pediatric medical clinic located in Delafield, Wisconsin. ECF # 134, ¶ 81. The clinic
offered its patients an “integrated approach to health care,” including “the use where
appropriate of supplements, herbals, tinctures, teas, essential oils, massage, probiotics
and educational services,” and a “willingness to work with patients who had concerns
about vaccines.” ECF # 129-1, ¶¶ 27-30. The clinic’s integrated approach to pediatric
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health care attracted patients from across the State of Wisconsin, and from Illinois. Id., ¶
30. The clinic used the name Delafield Pediatrics to identify itself in the phone directory,
on medical forms, and on letterhead. Id., ¶ 21. Kamsler also relied on word of mouth
advertising to promote the Delafield Pediatrics Clinic. Id., ¶ 24-25.
In 2010, Dr. Kamsler sold the practice to LCP. Dr. Gregory Moyer had founded
LCP in 1997 in Oconomowoc, Wisconsin, which is close to Delafield, and continued to
operate a clinic there. Id., ¶ 38. The asset purchase agreement specified that Moyer
and Kamsler intended that rights to the name Delafield Pediatrics would transfer to LCP
as part of the purchase; the parties dispute whether Kamsler in fact owned any such
rights and whether the asset purchase agreement constituted valid transfer. After the
purchase, LCP continued to offer integrative health care services at the same location in
Delafield previously used by Dr. Kamsler and Delafield Pediatrics. Id., ¶ 51. In
December 2010, LCP announced its purchase of the Delafield Pediatrics medical
practice in an advertisement published in a local parenting magazine. Id., ¶ 49. LCP
also sent a letter to all patients of Delafield Pediatrics advising them of the purchase
and of Dr. Kamsler’s ongoing availability as a physician associated with LCP. Id., ¶ 51.
Many patients of Dr. Kamsler and Delafield Pediatrics remained patients of the clinic
after it was purchased by LCP. Id., ¶ 52.
The parties dispute the extent to which LCP used the phrase “Delafield
Pediatrics” to identify or advertise the Delafield clinic following the purchase. LCP
contends that it continued to use the phrase “Delafield Pediatrics” to describe the clinic,
but provides little evidence for that assertion. The sign outside the building reads “Lake
Country Pediatrics,” not “Delafield Pediatrics”; LCP contends that this is because it
already owned the Lake Country Pediatrics sign and it would be too expensive to
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purchase a new sign. ECF # 91, ¶ 45. LCP also acknowledges that newspaper ads it
published after the purchase did not use the phrase “Delafield Pediatrics,” but rather
referred to the clinic as LCP’s “Delafield Location,” comparable to its “Oconomowoc
Location.” Id., ¶ 48. In his deposition, Dr. Moyer stated that “Delafield Pediatrics didn’t
advertise much at all until Children’s came into the picture” in 2014, and that before that
time word of mouth had been its primary mechanism for advertising. ECF # 127-16 at
*32-33. CHW has submitted as exhibits many examples of LCP print ads that provide
contact and address information for the Delafield location without using the phrase
“Delafield Pediatrics.” LCP has also submitted some examples of print ads that do
contain the phrase “Delafield Pediatrics,” but does not specify the date of publication of
these ads. ECF # 91-3. As for online advertising, an employee of LCP’s marketing and
advertising agency testified that she first created a “Delafield Pediatrics” page for the
LCP website in 2017; before then, the website had referred only to a “Delafield
Location” and an “Oconomowoc Location”. ECF # 127-49 at *22. LCP’s “Delafield
Pediatrics” Facebook page was also created in 2017. ECF # 127-35. LCP contends that
its employees continued to answer the phone using the phrase “Delafield Pediatrics”
and it is undisputed that the phrase “Delafield Pediatrics” was used in word-of-mouth
advertising.
CHW is a large provider of pediatric medical services comprising two hospitals
and several clinics, including primary care clinics, located throughout southeastern
Wisconsin. Many (though not all) of its primary care clinics have names that pair the
word “pediatrics” with the name of the community or neighborhood in which the clinic is
located. For example, CHW operates Oak Creek Pediatrics in the city of Oak Creek,

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Kenosha Pediatrics in the city of Kenosha, and North Shore Pediatrics in the North
Shore suburbs of Milwaukee.
In 2014, CHW began construction of a new clinic in Delafield. ECF# 129-1, ¶ 78.
Since the clinic opened, the outside signage has stated “Children’s Hospital of
Wisconsin Delafield Clinic.” Id., ¶ 80. However, CHW also uses the name “Delafield
Pediatrics” in marketing the services offered at the facility. The parties dispute the
nature of this use: LCP claims that the name “Delafield Pediatrics” is used to market all
services at the clinic, whereas CHW claims that the name is used only to describe and
promote the primary care office located within the clinic, which also contains several
offices that offer various sorts of pediatric specialty care. Id., ¶¶ 86-87.
In the spring of 2017, Dr. Moyer contacted CHW regarding CHW’s use of the
name Delafield Pediatrics; the parties dispute the nature of the communications that
ensued, but they concluded with the filing of this lawsuit.

II. LEGAL STANDARDS
a. Summary Judgment
Summary judgment is required where “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). When considering a motion for summary judgment, I view the evidence in the
light most favorable to the non-moving party and must grant the motion if no reasonable
juror could find for that party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 255
(1986).
When the nonmovant is the party with the ultimate burden of proof at trial, that
party retains its burden of producing evidence which would support a reasonable jury
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verdict. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). Evidence relied upon must
be of a type that would be admissible at trial. See Gunville v. Walker, 583 F.3d 979, 985
(7th Cir. 2009). To survive summary judgment, a party cannot rely on his pleadings and
must set forth specific facts showing that there is a genuine issue for trial. Anderson,
477 U.S. at 248.
b. Trademark Infringement and Unfair Competition
LCP moves for summary judgment on its statutory and common law claims of
trademark infringement and unfair competition. CHW moves for summary judgment on
its action for declaratory judgment that its use of the “Delafield Pediatrics” name does
not constitute trademark infringement or unfair competition.
To prevail on a trademark infringement claim under either the Lanham Act or the
common law, LCP must establish (1) that it owns a protectable trademark, and (2) that a
likelihood of confusion exists between its use and CHW’s use of the mark. Meridian
Mut. Ins. Co. v. Meridian Ins. Group, 128 F.3d 1111, 1115 (7th Cir. 1997). The analysis
is essentially the same for unfair competition under the Lanham Act and under the
common law. CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 673-74 (7th Cir. 2001)(to
establish unfair competition, a plaintiff must establish that (1) its mark is protectable and
(2) the defendant’s use of the mark is likely to cause confusion among consumers);
Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1266 (7th Cir. 1989)(to
establish common law unfair competition, a plaintiff must prove (1) validity of the mark in
question; and (2) infringement). However, “a court doesn’t even reach the question of
likelihood of confusion until persuaded that the putative mark is sufficiently distinctive to
warrant prima facie protection as a trademark.” Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc.,
781 F.2d 604, 610 (7th Cir. 1986).
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A mark is only entitled to protection under trademark law when “that mark
specifically identifies and distinguishes one company’s goods and services from those
of its competitors.” Platinum Home Mortgage Corp. v. Platinum Financial Grp., Inc., 149
F.3d 722, 726 (7th Cir. 1998). When, as here, the mark is not registered with the United
States Patent and Trademark Office, the burden is on the claimant to establish that it is
entitled to protection. Id. at 727.
Marks are classified into five categories of generally increasing distinctiveness:
(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). The level of protection afforded to a
mark depends on where it falls on the spectrum of distinctiveness. Id. Generic marks
are the least distinctive category; they are commonly used, do not identify any particular
source, and are not entitled to any trademark protection. Platinum Home, 149 F. 3d at
727. Further along the spectrum of distinctiveness, descriptive marks describe “the
ingredients, qualities, or characteristics of an article of trade or service.” Id. Descriptive
marks do not receive trademark protection unless the mark “acquires secondary
meaning in the collective consciousness of the relevant community.” Id. (internal
citations omitted). “A descriptive mark acquires secondary meaning when it has been
used so long and so exclusively by one company in association with its products or
services in that particular industry that the word, term, name, symbol or device has
come to mean that those products or services are that company’s trademark.” Platinum
Home, 149 F.3d at 728.
Secondary meaning can be established through direct consumer testimony,
consumer surveys, length and manner of use, amount and manner of advertising, place
in the market, and proof of intentional copying. Spraying Systems Co. v. Delavan, Inc.,
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975 F.2d 387, 393 (7th Cir. 1992). These factors are relevant because they provide
insight as to how the consuming public regards the mark in question. Gimix, Inc. v. JS &
A Grp., Inc., 699 F.2d 901, 907 (7th Cir. 1983). Further, “[s]econdary meaning is a timerelated concept: it exists at a specific time, in a specific place, among a specific group of
people who recognize that specified matter indicates commercial origin of a specified
type of product or service from one unique commercial source.” 4A Callman on Unfair
Competition, Trademarks and Monopolies § 20.23 (4th ed. 2017)(cited in Royal Crown
Company, Inc. v. The Coca-Cola Company, 892 F.3d 1358, 1371 (Fed. Cir. 2018).
Therefore, evidence of consumer perceptions is only probative “if it deals with
conditions at the appropriate time.” Id.

III. ANALYSIS
The parties dispute whether the phrase “Delafield Pediatrics” as used by LCP is
generic (and thus not entitled to protection) or descriptive (and thus entitled to protection
only if it has acquired secondary meaning). I need not resolve the question, because,
even if the phrase is descriptive, LCP has not presented evidence sufficient to support a
finding that the phrase “Delafield Pediatrics” has acquired secondary meaning and is
entitled to trademark protection. LCP’s secondary meaning argument fails because
LCP has not presented sufficient evidence of consumer perception in 2014, i.e. at the
time CHW opened its clinic in Delafield and began using the name Delafield Pediatrics
to identify the clinic’s primary care practice.
For example, to establish secondary meaning through length and manner of use,
LCP must present evidence that it was actively using the Delafield Pediatrics mark
when CHW opened its Delafield Clinic. “To establish ownership of a mark, the prior user
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must establish not only that at some date in the past it used the mark, but that such use
has continued to the present.” 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 16.9 (5th ed. 2019). See also Converse, Inc. v. International Trade
Commission Skechers U.S.A., Inc., 909 F.3d 1110, 1120 (Fed. Cir. 2018) (“The
secondary meaning analysis primarily seeks to determine what is in the mind of
consumers as of the relevant date, and [the use factor] must be applied with this
purpose in view. The most relevant evidence will be the trademark owner’s and third
parties use in the recent period before first use or infringement.”). But LCP has only
meager evidence of active use of the Delafield Pediatrics mark in 2014 and immediately
before. LCP points to a letter that it sent to patients in 2010 announcing its purchase of
the Delafield Pediatrics practice. It also published a magazine advertisement and a
Facebook announcement with information about the purchase at roughly the same time.
But following that brief flurry of announcements in 2010, LCP provides no hard evidence
that it used the Delafield Pediatrics mark at all, except to assert that patients used the
name in word-of-mouth advertising and that staff used the name when they answered
the phone. The next documentary evidence of LCP’s use of the phrase “Delafield
Pediatrics” is a print advertisement published in 2017, after LCP had become aware that
CHW was using the name Delafield Pediatrics to identify the primary care practice at its
Delafield clinic. Thus, LCP presents evidence of only minimal and inconsistent use of
the Delafield Pediatrics mark following its purchase of the practice, and such minimal
use is not sufficient to “alert any significant number of consumers that [Delafield
Pediatrics] had a definite referent.” Custom Vehicles, Inc. v. Forest River, Inc. 476 F.3d
481, 485 (7th Cir. 2007).

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LCP also presents no evidence that it was using the Delafield Pediatrics mark in
advertising at the time CHW opened its Delafield clinic. Indeed, other than the
advertisements mentioned above announcing the purchase of the Delafield Pediatrics
practice in 2010, LCP has not presented a single example of a print or online
advertisement between 2010 and 2017 in which it uses the phrase “Delafield
Pediatrics.” Instead, the advertisements from that time period use the house mark “Lake
Country Pediatrics” and provide location and contact information for a Delafield clinic
and an Oconomowoc clinic. LCP argues that this was merely an error which it failed to
catch and correct because it is a lean organization with no marketing staff. ECF # 133 at
10. But advertising is relevant to secondary meaning for what it reveals, albeit
circumstantially, about how the consuming public perceives the mark. Gimix, 699 F.2d
at 907. The only advertising evidence LCP presents that explicitly draws a connection
between the Delafield Pediatrics mark and LCP’s services dates from 2017 or later—
after CHW had entered the market and begun using the Delafield pediatrics name. This
post-2017 advertising does not support an inference that, in 2014, “Delafield Pediatrics”
was established in the minds of the public through advertising as LCP’s exclusive mark.
In support of its secondary meaning argument, LCP also presents declarations of
parents of LCP patients who associate the Delafield Pediatrics mark with integrative
medical care. These declarations also have very limited probative value as to public
perception of the Delafield Pediatrics name at the time CHW entered the market. Dr.
Moyer testified at his deposition that his team recruited these particular parents of
patients to give declarations because they “were patients of Delafield Pediatrics during
the Kamsler era and are continued patients now that are still part of the whole umbrella,
Lake Country Pediatrics team.” ECF # 127-16 at *45. Thus, these parents of patients
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formed their association between the phrase “Delafield Pediatrics” and integrative care
in 2010 or before, when Dr. Kamsler was running the business under that name, and
not during the time period that Lake Country Pediatrics was operating the clinic. Moyer
also testified that “a lot of the patients” who had been patients of Dr. Kamsler had “aged
out” of pediatric care. Id. This suggests that patients who had remained with the practice
since the time of Dr. Kamsler are rather uniquely positioned with respect to their
perception of the Delafield Pediatrics name, and not representative of current pediatric
care consumers in the relevant geographic market as a whole. Testimony of consumers
who formed their perception of the Delafield Pediatrics name in 2010 or before, when
the name was the primary business name of Dr. Kamsler’s clinic, reveals little about
general public perception of the name in 2014, especially given LCP’s minimal use of
the name following its purchase of the practice in 2010. See Royal Crown, 892 F.3d at
1371 (five-year-old consumer survey had little value in proving contemporary public
perception, especially given substantial third-party use of the mark in question in the
intervening years).
LCP also argues that current and former employees of LCP and CHW associate
the phrase “Delafield Pediatrics” with integrative medical care. The testimony of these
medical professionals is of very limited value for establishing secondary meaning, as it
is not probative of a strong connection in the mind of the consuming public between the
phrase “Delafield Pediatrics” and integrative medical care. See Gimix, 699 F.2d at 907.
LCP has not proffered any consumer survey evidence.
Finally, LCP argues that CHW intentionally copied LCP’s mark in order to
confuse consumers, which supports an inference that CHW knew the mark had
secondary meaning. See Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 611
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(7th Cir. 1986). This argument requires evidence of CHW’s intent. Id. LCP’s proferred
evidence that CHW intended to copy its mark is an alleged statement by a CHW
representative to an LCP representative that “CHW was free to use DELAFIELD
PEDIATRICS because Dr. Kamsler was no longer operating his clinic using
DELAFIELD PEDIATRICS.” ECF # 89 at 9; ECF # 33, ¶ 10. This statement does not in
any way suggest that CHW copied LCP’s mark in order to confuse consumers. If
anything, it suggests that CHW began using the mark since it understood that the mark
was no longer in use by another party and thus was not likely to confuse consumers.
To summarize: LCP is the nonmoving party with respect to CHW’s motion for
summary judgment. It is LCP’s burden at trial to establish that it has a protectable
trademark right in the phrase “Delafield Pediatrics.” Platinum Home, 149 F.3d at 727.
When the nonmovant is the party with the ultimate burden of proof at trial, that party
retains its burden of producing evidence which would support a reasonable jury verdict.
Celotex Corp., 477 U.S. at 324. LCP has presented the following evidence in support of
its argument that the phrase “Delafield Pediatrics” had secondary meaning at the time
CHW entered the Delafield market in 2014: (1) Dr. Kamsler’s use of the name in
advertising, on letterhead, on signage outside his building, and so on, until he sold the
business to LCP in 2010; (2) LCP’s 2010 advertising announcing that it had purchased
the Delafield Pediatrics clinic; (3) LCP’s use of the phrase “Delafield Pediatrics” in print
and online advertising beginning in 2017; (4) Dr. Moyer’s assertion that the phrase
“Delafield Pediatrics” when employees answered the phone; (5) an undisputed but
undeveloped claim that the phrase was used in word of mouth advertising; (6)
declarations of an unrepresentative portion of LCP’s client base who had formed their
impression of the phrase “Delafield Pediatrics” when the phrase was being used by Dr.
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Kamsler as the name of the business; and (7) an unsubstantiated allegation that CHW
copied the name in order to confuse customers. This is not sufficient evidence for a trier
of fact to find that the phrase “Delafield Pediatrics” had secondary meaning in the
collective consciousness of the community in 2014. CHW is therefore entitled to
summary judgment on the narrow question of secondary meaning.
Because LCP does not have protectable trademark rights in the phrase “Delafield
Pediatrics,” I need not consider whether CHW’s use of the phrase constituted
infringement. This resolves the case.

IV. MOTIONS TO RESTRICT DOCUMENTS
The parties have also filed several motions to restrict various documents filed in
connection with this lawsuit. Ordinarily, those records that influence or underpin a
judicial decision are open to public inspection unless they meet the definition of trade
secrets or other categories of bona-fide long term confidentiality. Baxter Intern., Inc. v.
Abbott Laboratories, 297 F.3d 544, 545 (7th Cir. 2002). In reaching the present
decision, I did not rely on any of the materials identified by the parties in their motions to
restrict. Therefore, the materials are not subject to the presumption of public access,
and I will grant the parties’ motions.

V. CONCLUSION
For the foregoing reasons, IT IS ORDERED that the parties’ several motions to
restrict documents to case participants (ECF # 87, 123, 131, 132) are GRANTED.
IT IS FURTHER ORDERED that defendant’s renewed motion for summary
judgment (ECF # 88) is DENIED.
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IT IS FURTHER ORDERED that plaintiff’s motion for summary judgment (ECF #
122) is GRANTED. The Clerk of Court shall enter judgment accordingly.

SO ORDERED at Milwaukee, Wisconsin, this 22nd day of October, 2019.

s/Lynn Adelman___
LYNN ADELMAN
District Judge

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