WORLDCARE Trademark Injunction Part II
Written by Jay Lewis
Probability of Success on the Merits
Worldcare established trademark infringement by proving, “it ha[d] ownership or rights in the trademark and that the defendant ha[d] used the mark in connection with goods or services in a manner [that] cause[d] consumer confusion as to the source and sponsorship of the goods or services.” Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, 634 F.3d 1005, 1008-09 (8th Cir. 2011). The parties agreed that Worldcare had acquired rights in the mark. The parties disagreed that confusion existed with use of the WORLDCARE mark. The following is the six-factor test used by the Eighth Circuit to determine whether a trademark is likely to cause confusion:
- Strength of the owner’s mark;
- the similarity between the owner’s mark and the alleged infringer’s mark;
- the degree to which the products compete with each other;
- the alleged infringer’s intent to ‘pass off’ its goods as those of the trademark owner;
- incidents of actual confusion;
- the type of product, its cost, and conditions of purchase.
Frosty Treats v. Sony Computer Ent. Am. Inc., 426 F.3d 1001, 1008 (8th Cir. 2005). Not all factors must be satisfied.
The Court determined that the WORLDCARE mark was both conceptually and commercially strong. The mark fell into the “suggestive” category under the conceptual strength test. “A suggestive mark is one that requires some measure of imagination to reach a conclusion regarding the nature of the product.”
The second factor, the similarity of the owner’s mark and the alleged infringer’s mark, was clearly met in this case. The United State Patent and Trademark Office (“PTO”) had rejected Defendant’s trademark application. The PTO found that the wording was identical and believed that consumers would likely be confused as to the source of the services.
The third factor compared the degree of competition between the products. Both companies operate in the insurance industry. Worldcare’s products are sold as a rider to health insurance policies. Likewise, Defendant’s product is sold as a medical insurance plan. The Court determined that the products were aligned closely enough to create confusion among consumers.
The Court found no evidence that Defendant intended to pass off its products as those of Worldcare. Although Defendant knew of the protected mark, knowledge is not equivalent to intent. General Mills, Inc. v. Kellog Co., 824 F.2d 622, 627 (8th Cir. 1987).
Under factor five, Worldcare attempted to show evidence of actual confusion in the form of alleged misdirected phone calls received in the summer of 2009. Worldcare claimed these calls were in regards to insurance products. The Court found this evidence limited and could not conclude actual confusion. However, Worldcare was not required to show incidents of actual confusion to succeed in an infringement case. Sunsient Tech. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754 (8th Cir. 2010).
The sixth and final factor the Court examined was the condition of purchase and the degree of care expected of customers. “In considering this factor, [the Court] must stand in the shoes of the ordinary purchaser; buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.” Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 831 (8th Cir.1999). The Court found this factor weighed in favor of Worldcare stating: “When selecting medical coverage and related products, a customer or potential customer may not recognize that distinct products with different WORLDCARE marks would come from different sources.” Worldcare, Case No. 8:11CV99 (D.
The Court found that customer confusion between the marks was likely in this case. The marks were identical and both companies sold their products in the insurance market. Therefore, Worldcare would likely succeed on the merits of their claim.
Part III will examine the remaining elements of the Injunction.
