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Beacon Mut. Ins. Co. v. OneBeacon Ins. Group

Beacon Mut. Ins. Co. v. OneBeacon Ins. Group

United States Court of Appeals for the First Circuit

July 12, 2004, Decided

No. 03-2671

Opinion

 [***1642]   [*9]  LYNCH, Circuit Judge. This is a case of first impression for this circuit on several issues under the Lanham Act, 15 U.S.C. § 1051 et seq.

The plaintiff, formerly known as the State Compensation Insurance Fund, was chartered in 1990 by the Rhode Island legislature as the workers' compensation insurer of last resort in the state. In 1992, it adopted the name The Beacon Mutual Insurance Company ("Beacon Mutual") and, since then, has sold workers' compensation insurance in Rhode Island under the marks "The Beacon Mutual Insurance Company," "Beacon Insurance," and "The [**2]  Beacon," with an accompanying lighthouse logo. The name change was brought about by increased competition following the resolution of a crisis in the state workers' compensation market.

In June 2001, the defendant OneBeacon Insurance Group ("OneBeacon"), which sells various forms of commercial insurance nationwide, switched to its current name and adopted a lighthouse logo as  [*10]  well, albeit in a different font and arrangement. The name change resulted from the sale of the company, then called CGU Corporation, to another company; the terms of the sale required CGU to change its name. OneBeacon is a direct competitor of Beacon Mutual in the Rhode Island market for workers' compensation insurance.

Beacon Mutual brought suit one month after OneBeacon's name change, alleging violations of the Lanham Act, 15 U.S.C. § 1125(a), and state trademark laws. On November 14, 2003, the district court granted summary judgment in favor of OneBeacon on all counts on the ground that Beacon Mutual had not demonstrated a substantial likelihood of confusion. Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241, 252 (D.R.I. 2003). Beacon Mutual now appeals.

 [**3]  ] For likelihood of confusion to be actionable, the "confusion has to exist in the mind of a relevant person." Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1207 (1st Cir. 1983). The primary issue in this appeal is the relevance of evidence submitted by Beacon Mutual showing 249 instances of confusion between the two companies in the sixteen months following OneBeacon's adoption of its current name. Most of the confusion involved misdirected premium checks, claim forms, medical records, and legal correspondence. OneBeacon argues that those incidents do not demonstrate confusion among relevant persons because the confused persons were not those who made purchasing decisions and there was no evidence that their confusion caused Beacon Mutual to lose sales. OneBeacon's argument impermissibly narrows the scope of the court's inquiry into both the harm suffered by the plaintiff and the persons among whom confusion exists. [***1643]  

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376 F.3d 8 *; 2004 U.S. App. LEXIS 14256 **; 71 U.S.P.Q.2D (BNA) 1641 ***

THE BEACON MUTUAL INSURANCE COMPANY, Plaintiff, Appellant, v. ONEBEACON INSURANCE GROUP, Defendant, Appellee.

Subsequent History: As Amended July 15, 2004

On remand at, Injunction granted at Beacon Mut. Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251, 2005 U.S. Dist. LEXIS 14228 (D.R.I., July 15, 2005)

Prior History:  [**1]  APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF RHODE ISLAND. [Hon. William E. Smith, U.S. District Judge].

Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241, 2003 U.S. Dist. LEXIS 20605 (D.R.I., 2003)

Disposition: Reversed and remanded.

CORE TERMS

goodwill, marks, summary judgment, trademark, workers' compensation, reputation, purchasers, reasonable inference, likelihood of confusion, infer, factfinder, sales, commercial interest, district court, instances, premiums, factors, Lanham Act, similarity, insured, providers, unfair competition, customers, coverage, dilution, delays, lost sales, misdirected, survive summary judgment, healthcare provider

Trademark Law, Likelihood of Confusion, Consumer Confusion, General Overview, Federal Unfair Competition Law, Trade Dress Protection, Conveyances, Unfair Competition, False Advertising, Business & Corporate Compliance, False Designation of Origin, Elements of False Designation of Origin, Lanham Act, Civil Procedure, Summary Judgment, Burdens of Proof, Movant Persuasion & Proof, Evidence, Ultimate Burden of Persuasion, Appellate Review, Standards of Review, Motions for Summary Judgment, Appeals, Standards of Review, De Novo Review, Similarity of Marks, Appearance, Meaning & Sound, Factors for Determining Confusion, Intent of Defendant to Confuse, Infringement Actions, Remedies, Palming Off, Corporate Formation, Corporate Names, Requirements, Comparison of Advertising, Admissibility, Circumstantial & Direct Evidence, Causes of Action Involving Trademarks, Dilution of Famous Marks