2d Circuit: Jaw Droppingly New Dawn Donuts Analysis of Injunction – Guthrie v ContextMedia


context health

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].



The background of the ESCAPE FROM ALCATRAZ Triathalon seems to be complex, according to the Wikipedia entry at least. Here, defendant triathalon director split from plaintiff triathalon promoter, to organize another triathalon taking place on Alacatraz and calling it the ALCATRAZ TRIATHALON. Plaintiff sues based on its registered rights in ESCAPE FROM ALCATRAZ.
Complaint Escape From Alcatraz


"Chief Katonah's Descendants Join Fight Against Martha Stewart Trademark"

I will bet that the original opinion letter clearing the mark didn’t see this one coming. Via our hometown paper, the Journal News.


I Would Not Mind If Martha Stewart Used ARMONK As A Trademark

TMBrandingCap.com reports that the village of Katonah (about ten miles from here) and at least one housewares business within Katonah, will take action against local resident Martha Stewart’s applications for the mark KATONAH for housewares. Background here.
I wouldn’t mind if Martha Stewart used my home town’s name as a trademark. If the product wasn’t junk, it could help property values.


Katonah's Time In The Spotlight

Our offices are located in Mt. Kisco. The next town up is Bedford Hills and then Katonah. Katonah, named after an Indian chief, has a nice art museum. The houses are a little more affordable than in mid-Westchester, but the commute to the city is long (definitely over an hour). Martha Stewart is usually reported as living in Bedford (really big properties) but apparently she lives in Katonah.
Her company has now filed several applications for the mark KATONAH covering various housewares.
If the examiner had uncovered information suggesting that Katonah is known as a source of housewares, which it isn’t, then the application would have been in trouble. In this case, it gets an office action that says:
“Applicant must specify whether the mark has any significance a specific field, trade or industry, or any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Specifically, Applicant must indicate specifically whether the goods will be manufactured, produced or sold in, or will have any other connection with, the geographic location named in the mark. 37 C.F.R. §2.61(b); TMEP §1210.03. See attached article noting that Martha Stewart lives in Katonah, New York. ”
So then Applicant has to respond:
“Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah.”
And the application is approved for publication, where Katonah resident Terry McAulliffe (Hi Terry! Remember me? I did about three seconds of work on a matter for you when you were at Nynex, about 17 years ago) notices it and brings it to the world’s attention.
Then the town of Katonah gets a little concerned, afraid that the crazy woman in the haunted house has stolen the name of their town, so, carrying pitchforks and torches, they raze her mansion to the ground.
No, just kidding. The town expresses concern as to the effect that Martha Stewart’s ownership of the KATONAH trademark. However, there will be no effect. The local businesses will continue to be able to truthfully claim that they are located in Katonah, even the furniture stores. They, like us, however, will not be able to use KATONAH as a trademark for the goods covered by Stewart’s registrations. So, in the end, it’s a good thing.
More on the use of geopgraphic terms as trademarks here.