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A claim of trademark infringement under the Lanham Act is analyzed under a two-prong test. The first prong looks to whether the senior user's mark is entitled to protection; the second to whether the junior user's use of its mark is likely to cause consumers confusion as to the origin or sponsorship of the junior user's goods. As to the first prong, a certificate of registration with the United States Patent and Trademark Office is prima facie evidence that the mark is registered and valid (i.e., protectable), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce. The likelihood-of-confusion prong turns on whether ordinary consumers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the junior user's mark. Satisfaction of the likelihood-of-confusion standard requires a probability of confusion, not a mere possibility.
Plaintiff Guthrie Healthcare System (“Guthrie”) and Defendant ContextMedia ("CMI") each appealed from the judgment of the United States District Court for the Southern District of New York which, following a bench trial, imposed on CMI a limited injunction. CMI contested the finding of liability, and Guthrie contested the limited scope of the injunction. The complaint alleged trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114, unfair competition, and a number of related claims, on the basis that CMI’s trademark logo was confusingly similar to Guthrie’s trademark. The court ruled in Guthrie’s favor, finding that a likelihood of confusion resulted from CMI’s use of trademarks similar to Guthrie’s. The court accordingly granted permanent injunctive relief, prohibiting CMI from using its marks within Guthrie’s geographic service area ("Guthrie Service Area") (covering the "Twin Tiers" region of Northern Pennsylvania and Southern New York), but held that CMI may continue to use its marks everywhere outside the Guthrie Service Area, as well as without restriction in Internet transmissions, on CMI’s websites and on social media.
Did CMI infringe Guthrie’s mark?
The circuit court agreed with the district court's liability determination to the extent it found that CMI infringed Guthrie’s mark. The circuit court concluded that there was a likelihood of confusion between Guthrie’s and CMI’s trademarks. However, in restricting the scope of the injunction, the district court misapplied the law, and failed to adequately protect the interests of Guthrie and the public from likely confusion. The circuit court expanded the scope of the injunction to include two New York counties where Guthrie maintained patient treatment facilities.