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Health New England, Inc. v. Trinity Healh - New England, Inc.

United States District Court, D. Massachusetts

September 14, 2016

HEALTH NEW ENGLAND, INC., Plaintiff,
v.
TRINITY HEALH - NEW ENGLAND, INC., and TRINITY HEALTH CORPORATION, Defendants.

          MEMORANDUM AND ORDER REGARDING PLAINTIFFS' MOTION FOR PRELIMINARY INJUNCTION, (Dkt. No. 38)

          MARK G. MASTROIANNI United States District Judge

         I. Introduction

         Health New England (“HNE”) brings this trademark infringement action[1] against Trinity Health - New England, Inc. and Trinity Health Corporation (together, “Trinity”). Presently before the court is HNE's Motion for Preliminary Injunction, in which it asks the court to enjoin Trinity

from using the HEALTH NEW ENGLAND mark, and/or any singular, spaced, un-spaced, hyphenated, and/or possessive variant of the HEALTH NEW ENGLAND mark, and/or any other confusingly similar marks, including the TRINITY HEALTH NEW ENGLAND and the TRINITY-HEALTH NEW ENGLAND marks, in commerce, to include marketing products, advertisement, promotional materials, internet website, domains, other products or materials.

(Dkt. No. 38.)

         The court held a hearing on September 1, 2016. At the hearing, the court had an extensive colloquy with counsel regarding the propriety of holding an evidentiary hearing. Both parties requested the court decide HNE's motion in the absence of an evidentiary hearing. Even after the court warned each party that the lack of an evidentiary hearing could prove detrimental to its position, both parties reaffirmed their request that evidence not be taken. Largely for this reason- HNE's failure to develop its assertions during an evidentiary hearing or otherwise-the court concludes HNE has not carried its burden to show that it is entitled to a preliminary injunction.

         II. Background

         HNE is a nonprofit corporation licensed as a Health Maintenance Organization (“HMO”) in Massachusetts. It operates in the health care markets of Massachusetts as well as (through a subsidiary) Connecticut and has been in business for over thirty years. HNE owns a federal registration for its HEALTH NEW ENGLAND MARK on the principal register under U.S. Trademark Registration No. 1, 426, 061 (the '061 mark) for “operating a health maintenance organization which arranges health and medical care for its members through a network of selected hospitals and physicians.” (Dkt. No. 40, Ex. 9.) The '061 mark was registered on January 20, 1987, with a first use in commerce date listed as January 1, 1986. Trinity is a health care services company which operates multiple health care facilities in twenty-one states. In 2015, Trinity merged with St. Francis Care, Inc., a health care company located in Hartford, Connecticut, and began using the regional name “Trinity Health New England” and “Trinity Health - New England.”

         III. Standard of Review

         “[A] preliminary injunction is an extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.” Mazurek v. Armstrong, 520 U.S. 968, 972 (1997) (emphasis in original; internal quotation marks omitted). “To obtain a preliminary injunction, the plaintiff[] bear[s] the burden of demonstrating (1) a substantial likelihood of success on the merits, (2) a significant risk of irreparable harm if the injunction is withheld, (3) a favorable balance of hardships, and (4) a fit (or lack of friction) between the injunction and the public interest.” Nieves-Marquez v. Puerto Rico, 353 F.3d 108, 120 (1st Cir. 2003). “The first factor, the plaintiff's likelihood of success, is ‘the touchstone of the preliminary injunction inquiry.'” Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 11 (1st Cir. 2008) (quoting Philip Morris, Inc. v. Harshbarger, 159 F.3d 670, 674 (1st Cir. 1998)). “This is especially so in a trademark infringement case, since ‘the resolution of the other three factors will depend in large part on whether the movant is likely to succeed in establishing infringement.'” Swarovski Aktiengesellschaft v. Bldg. No. 19, Inc., 704 F.3d 44, 48 (1st Cir. 2013) (quoting Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 115 (1st Cir. 2006)). Nevertheless, the plaintiff retains the burden of satisfying each factor. See Mass. Coal. of Citizens with Disabilities v. Civil Def. Agency & Office of Emergency Preparedness of Com. of Mass., 649 F.2d 72, 74 (1st Cir. 1981).

         IV. Discussion

         A. Likelihood of Success on the Merits

         “To establish infringement successfully, a trademark plaintiff must demonstrate that the defendant used an imitation of its protected mark in commerce in a way that is ‘likely to cause confusion, or to cause mistake, or to deceive.'” Bldg. No. 19, 704 F.3d at 48 (quoting 15 U.S.C. § 1114(1)(a)). Thus, “[a] successful infringement action requires the plaintiff to prove both (1) that its mark merits protection and (2) that the allegedly infringing use of its mark is likely to result in consumer confusion.” Id. at 49 n.1. The second prong requires “‘more than the theoretical possibility of confusion.'” Bos. Duck Tours, 531 F.3d at 12 (quoting Int'l Ass'n of Machinists & Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 200 (1st Cir. 1996)). Rather, “the allegedly infringing conduct must create a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Id. (quoting Winship Green Nursing Ctr., 103 F.3d at 201). Eight factors guide the inquiry into likelihood of confusion:

(1) the similarity of the marks; (2) the similarity of the goods; (3) the relationship between the parties' channels of trade; (4) the relationship between the parties' advertising; (5) the classes of prospective purchasers; (6) evidence of actual confusion; (7) the defendant's intent ...

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