Both sides filed motions for summary jugment. On the trademark claim, the court ruled that jury issues precluded summary judgment. The Lanham Act protects trademarks, whose infringement can be established by a showing that its mark was used in commerce by the defendant without consent and that the use was likely to deceive, cause confusion or result in mistake. There are three elements to winning a trademark claim (1) first use of the trademark in the same market, (2) validity of the trademark and (3) likelihood of confusion. The court found jury issues on the last two of the three elements.
Regarding the validity of the trademark, the plaintiff's mark is a geographically descriptive mark, which is a subset of descriptive marks. In order to show validity, the plaintiff must show that its mark has acquired secondary meaning before the infringement began. Secondary meaning is the connection in the consumer's mind between the mark and the provider of the product or service. Determining whether there is secondary meaning requires analysis of four things: (1) length and manner of use, (2) nature and extent of advertising and promotion, (3) efforts made by claimant to promote a conscious connection with the public's mind between the name and plaintiff's product, and (4) the extent to which the public actually identifiies the name with plaintiff's product.
On the first element the court noted the undisputed use of the mark since 1996. The Defendant attacked the mark by pointing out the common third party usage of its individual terms such as "Atlanta," "allergy" and "asthma." The defendant pointed out that another clinic opened named Atlanta ENT Allergy and Asthma Associates, using all of the words in plaintiff's name, and the plaintiff countered that the name had been changed after a cease and desist letter from the plaintiff. Ultimately the court rejected the defendant's attempt to deconstruct the words in the name, stating that the validity of the mark is analyzed by looking at the mark as a whole, not its parts. However, the court then found that it could not conclude on summary judgment that the length and manner of plaintiff's use of the mark established secondary meaning.
On the second element the court noted that it would consider in its analysis the plaintiff's claim that it had spent approximately $1.4 million on advertising and promoting its mark. The court noted, however, that it is not the amount of money spent that matters but rather the results achieved from the expenditure in looking at secondary meaning. On the third element, the court noted evidence of many promotional activites, such as media events, the pollen count service, the use of a consultant to build patient referrals. Plaintiff stated that from 2007 to 2009 its consultant met with about 310 medical providers and only 14 were unfamiliar with the plaintiff. The defendant argued that the plaintiff's marketing to doctors was not targeting the public or consumers and thus there was no evidence the activity promotes a conscious connection with consumers between the mark and the services. The court found that the plaintiff had established that it "has made a concerted effort to promote its mark" but also held that standing alone this did not establish secondary meaning.
On the fourth element, public identity between the mark and the product, the plaintiff offered a survey that it contended showed that 73% of survey respondents made an association between the name and the services of the plaintiff. On the basis of this the expert (a marketing professor at Georgia State, Dr. Kenneth L. Bernhardt) concluded that the mark has acquired a substantial level of awareness and recognition in the marketplace. The survey was aimed at physicians, who presumably are the source of much of the plaintiff's business through referrals. The defendant, under a Daubert motion to exclude the expert's findings, attacked this aspect of the survey, arguing that by focusing on doctors the survey did not look at actual or potential customers. Thus, argued the defendant, the universe of survey respondents was improper because it excluded all actual or potential allergy patients. The court rejected the argument that focusing on doctors made the survey fatally flawed, stating that the defendant's argument goes to the weight the survey deserves, not its admissibility.
The defendant also attacked the survey claiming that it failed to tet whether respondents identified a single source of services because it tested whether plaintiff' was the most commonly associated party to the mark. The court rejected this, finding that the survey was probative of secondary meaning because it gathered evidence of awareness and familiarity with the plaintiff's name. Defendant also claimed that the survey failed to follow accepted scientific principles and methods for survey evidence, and once again the court said the argument goes to the weight of the survey, not its admissibility.
The court ultimately found that the plaintiff had presented "some evidence of confusion" between its mark and the defendant's name. Thus, the court denied the defendant's motion for summary judgment. However, the court also stated that plaintiff had not established as a matter of law that its mark had secondary meaning, and thus it could not obtain summary judgment that it has a valid and protectible trademark. Because summary judgment was not reached on the validity issue, the court declined to make a ruling on likelihood of confusion. Therefore, in the end the court found two issues for trial, (1) whether plaintiff's mark has secondary meaning and is thus valid and protectable, and (2) whether the defendant's name infringes on the plaintiff's mark because it is likely to cause confusion.
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