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In order to prevail on a trademark infringement and unfair competition claims, a plaintiff must establish that the defendant's trademark creates a likelihood of confusion regarding the origin of the goods or services offered by the plaintiff and the defendant. The touchstone of liability under 15 U.S.C.S. § 1114 is whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties. A party seeking to avoid summary judgment in a case alleging trademark infringement and unfair competition, in violation of 15 U.S.C.S. §§ 1114, 1125(a), must establish that genuine factual disputes exist concerning those factors that are material to whether confusion is likely in the marketplace as a result of the alleged infringement.
Therma-Scan, Inc. (TSI) performed infrared thermal-imaging examinations of the human body. After analyzing the resulting images, TSI prepares diagnostic reports that are provided to its clients or their physicians in single metropolitan area. On November 1, 1988, TSI received the formal registration of its "THERMA-SCAN" trademark from the United States Patent and Trademark Office. Although TSI has sold various medical devices in the past, it no longer markets any products. TSI promotes its services primarily through maintaining and developing contacts with physicians. In addition, it seeks to cultivate relationships with individuals who conduct radio news programs on which TSI's services might be mentioned. TSI does not, however, advertise in any magazines, professional journals, or other publications. Thermoscan, Inc., a Georgia corporation, that began its operations in March of 1989, manufactures hand-held electronic ear thermometers. Sales of these devices increased from $ 3 million in 1991 to over $ 147 million in 1996. During the same period, Thermoscan's advertising and promotional expenses increased from $ 1.2 million to over $ 20 million. On November 16, 1989, Thermoscan filed an application to register "THERMOSCAN" as a trademark for use on its thermometers. It began using the "THERMOSCAN" trademark on its thermometers in 1990, prior to the completion of the trademark registration process. The United States Patent and Trademark Office accepted Thermoscan's application and published it for opposition on January 15, 1991. A registration for THERMOSCAN was issued on September 24, 1991. TSI brought this lawsuit for trademark infringement and unfair competition against Thermoscan. TSI sought monetary damages and injunctive relief, as well as cancellation of Thermoscan's allegedly infringing trademark. The district court granted Thermoscan's motion to enforce a purported settlement that the parties reached during oral argument on Thermoscan's motion for summary judgment. After allowing the parties to file supplemental briefs, the district court granted summary judgment in favor of Thermoscan.
Did Thermoscan's trademark infringe on TSI’s?
In weighing the factors relevant to a determination of whether a likelihood of confusion existed, the circuit court held that the similarity between the trademarks provided the strongest support for infringement. Three other factors marginally supported a finding of likelihood of confusion. However the two factors with the most relevance in these circumstances--the relatedness of the goods and services and the marketing channels used--both weighed strongly against finding a likelihood of confusion. Therefore the circuit court concluded that the district court did not err in granting Thermoscan's motion for summary judgment.