Blue Sky Endeavors, LLC v. Henderson County Hospital Corporation
1:23-cv-00097
| W.D.N.C. | Oct 21, 2024Background
- Blue Sky Endeavors, LLC and LaMond Family Medicine (LFM) allege that Henderson County Hospital Corporation (Pardee Hospital) and Blue Ridge Community Health Services infringed their trademark "Blue Sky MD" by using the mark "Pardee BlueMD."
- Plaintiffs filed the initial complaint in April 2023, but waited until July 2024 to seek a preliminary injunction, after learning the defendants planned to expand services.
- LFM's registered mark is associated mainly with weight management, hormone therapy, and some primary care; Pardee provides a wide range of primary healthcare to all patients regardless of ability to pay.
- Evidence of confusion between the marks included anecdotal reports and an internal (unverified) survey by LFM showing some confusion among patients.
- Plaintiffs requested either an injunction prohibiting all use of "Pardee BlueMD" or against expanding services under that mark.
- The Court denied the preliminary injunction, finding no irreparable harm and no likelihood of success on the merits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Irreparable Harm | Delay justified by ongoing discovery, evidence of confusion | Delay in seeking relief shows no urgent need; services differ | Plaintiffs failed to show irreparable harm |
| Likelihood of Success on Merits | Marks similar and there is actual confusion | Marks are distinct, services and markets differ | Plaintiffs unlikely to succeed on infringement |
| Balance of Equities | Defendants should stop using confusing mark or expand services | Name change would harm hospital operations and public | Equities favor the defendants |
| Public Interest | Public has interest in preventing deception/confusion | Injunction would harm patient access to critical care | Injunction not in public interest |
Key Cases Cited
- Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 (sets preliminary injunction standard: likelihood of success, irreparable harm, equities, public interest)
- Nken v. Holder, 556 U.S. 418 (first two factors most critical for injunctions)
- Rosetta Stone Ltd v. Google, Inc., 676 F.3d 144 (recites elements of trademark infringement and likelihood of confusion)
- George & Co., LLC v. Imagination Ent. Ltd., 575 F.3d 383 (lists 4th Circuit's likelihood-of-confusion factors)
- Perini Corp. v. Perini Constr., Inc., 915 F.2d 121 (secondary meaning as evidence of mark strength)
- Lamparello v. Falwell, 420 F.3d 309 (distinguishes between actionable and non-actionable (initial interest) confusion)
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (likelihood of confusion is inherently factual)