Dawn Geske Jul. 12, 2016, 10:13am


NEW YORK – The U.S. Court of Appeals for the Second Circuit has expanded the geographic reach of an injunction in a trademark infringement case involving a company that operates hospitals in Pennsylvania.

Plaintiff Guthrie Healthcare System filed a suit against ContextMedia Inc. regarding the similarity of its logo with theirs. The two parties both serve the health care field with Guthrie operating hospitals, medical clinics and specialized care facilities in the Twin Tiers region of Pennsylvania and New York. ContextMedia operates throughout the U.S. by providing health-related content to physicians located nationally.

The two companies’ logos bared similarity in that they both used a stylized human figure, which the district court found “jaw-droppingly” similar. While the two trademarks differed by wording on the logos, it was ruled that there was a likelihood of confusion between the two trademarks.

An injunction was provided for Guthrie, prohibiting ContextMedia from using the trademark in the Twin Tiers region, but allowing it to use the logo elsewhere and without restriction on the Internet.

Guthrie appealed the decision, which the Second Circuit Court contended that the two logos did create a likelihood of confusion, but the lower court had made an error with the geographic reach of the injunction.

While the Second Circuit expanded the scope of the injunction to cover all of the counties in which Guthrie operates, it remanded the case to the district court to review if ContextMedia should be allowed to use the trademark outside these counties and on the internet. 

The court also reviewed the intent of ContextMedia and whether it was using the trademark to exploit the work of Guthrie. The court found that this wasn’t intentional, but said this could have been avoided if ContextMedia had performed a trademark search.

“What was a little bit surprising and what caught my attention was those marks had words in them,” Sandra Edelman, partner at Dorsey & Whitney, told the Pennsylvania Record. “The court found the design aspect so similar in a way it overcame that different words were being used with each design. Guthrie is a distinctive word. It’s not like Acme.

“But, ContextMedia had different forms of the mark. Some of the forms used their name, ContextMedia, which is also distinctive. It’s not Acme either. Some were very generic medical terms. I think that could have played a roll, although each design accompanied by words were not all that distinctive.”

Geographic scope of Guthrie also played a part in the ruling as while its facilities may only be in the Twin Tiers region, its reach outside these counties was eminent as it recruited doctors, nurses and students from outside this region.

 “This is not an entirely local business,” Edelman said. “They had the ability to project their trademark beyond where their brick and mortar facilities were.

"They had to look at what the national reach of Guthrie Healthcare. It’s not just where they have bricks and mortar healthcare facilities. Somebody that only has brick and mortar or a building or a shop in a local area might have more wide spread geographic reach. In this case the courts decided Guthrie did.”

Organizations in this Story

U.S. Second Circuit Court of Appeals
40 Foley Square
New York, NY 10007

U.S. District Court for the Southern District of New York New York Division
500 Pearl Street
New York, NY 10007

Dorsey & Whitney LLP
1801 K Street Northwest
Washington, DC 20006

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