Plaintiff Guthrie operates medical facilities, Defendant ContextMedia provides a digital network for advertiser (read: pharma)-sponsored medical information displayed on screens in doctors’ offices. Plaintiff operates in the Twin Tiers region, which is Southern New York and Northern Pennsylvania. Defendant operates in all 50 states. At the District Court level, Defendant was enjoined from doing business in the Twin Tiers region, but could continue to use its mark both outside the region and in its online activities (website and social media). Plaintiff appealed.
Second Circuit: The logos are ‘jaw droppingly similar.’ Droppingly is a word – I looked it up. No evidence that similarity between the logos was more than coincidental. Plaintiff demonstrated a probability of confusion.
However: the lower court performed the Dawn Donuts analysis incorrectly. The Dawn Donuts doctrine provides that a plainitff cannot obtain injunctive relief beyond the area where it has proven a likelihood of confusion (which can create strange fact patterns involving slow-to-expand regional plaintiffs and ‘remote junior users’).
Here, while Plaintiff operated facilities only within the area of the injunction, it demonstrated the present possibility of harm outside the region. For example, Plaintiff promoted its marks both to potentials donors and to potential hires nationwide. Plaintiff takes pains to signify its ‘impartiality’ which could be damaged if donors perceived an erroneous association with a pharma-sponsored content network. Furthermore – unlike the original Dawn Donuts plaintiff, this defendant did not establish that it was highly unlikely that Plaintiff would expand beyond its present region any time soon.
Case remanded to the district court to tailor a proper injunction taking these facts into account.
Bonus Discussion: Similarity analysis when marks in question are compound marks consisting of [similar logo] plus [differing word marks].