Paul B. Tartell, M.D. v. South Florida Sinus and Allergy Center, Inc.
790 F.3d 1253
| 11th Cir. | 2015Background
- Drs. Paul Tartell and Lee Mandel jointly practiced at South Florida Sinus and Allergy Center from 1998–2011; they split in 2011 after a contentious separation.
- After the split, Mandel incorporated the practice name and registered six domain names using variations of Tartell’s name, forwarding most to a site Mandel controlled and buying Google AdWords for "Paul Tartell."
- Tartell sued Mandel and two Mandel-owned corporations for cybersquatting (15 U.S.C. § 1125(d)), false designation of origin and unfair competition (15 U.S.C. § 1125(a)), false advertising, and unauthorized use of name/likeness under Florida law.
- Mandel cancelled the domain registrations the day after Tartell filed suit; the case proceeded to a four-day bench trial on liability and damages.
- At trial Tartell introduced evidence of academic publications/lectures, community talks, advertisements for the joint practice (including promotions tied to the Florida Panthers), directory listings, and limited anecdotal patient testimony about name recognition.
- The district court found Tartell’s name had acquired secondary meaning, entered judgment for Tartell on most claims, and awarded statutory cybersquatting damages ($1,000 per domain); the court awarded no actual damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Tartell’s personal name acquired secondary meaning (required for descriptive mark protection) | Tartell argued long use, advertising (including Panthers marketing), publications, lectures, and patient/doctors’ recognition show the name denotes a single source | Mandel argued Tartell presented no consumer-survey or substantial evidence that ordinary patients associate the name with Tartell personally rather than the joint practice | Court held there was clear error: Tartell failed to produce substantial evidence of what the name denotes to consumers; academic/reputation evidence and non‑prominent use in ads insufficient to prove secondary meaning |
| Whether statutory cybersquatting and related claims were supported | Tartell asserted trademark protection via secondary meaning supported his claims and statutory damages for cybersquatting | Mandel contended absence of protectable mark and lack of actual damages; actions (domain cancellation) undercut harm | Because secondary meaning was not proven, judgment for Tartell reversed; the court rendered judgment for Mandel and his corporations |
| Whether evidence supported actual damages beyond statutory award | Tartell relied on anecdotal patient statements and advertising reach to show consumer confusion/harm | Mandel pointed to lack of concrete evidence linking domain registrations to lost business or measurable harm | District court had awarded only statutory damages; appellate court reversed all relief because the threshold of protectable mark was not met |
Key Cases Cited
- Tana v. Dantanna’s, 611 F.3d 767 (11th Cir. 2010) (defines secondary meaning and Conagra four-factor test)
- Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519 (11th Cir. 1991) (circumstantial evidence and advertising must show major consumer inroads)
- Conagra, Inc. v. Singleton, 743 F.2d 1508 (11th Cir. 1984) (prominence of name in advertising/packaging relevant to secondary meaning)
- Am. Television & Communications Corp. v. Am. Communications & Television, Inc., 810 F.2d 1546 (11th Cir. 1987) (secondary meaning requires consumer association of product with single producer)
- Flynn v. AK Peters, Ltd., 377 F.3d 13 (1st Cir. 2004) (academic achievements and limited anecdotal recognition insufficient to show secondary meaning)
- HGI Assocs., Inc. v. Wetmore Printing Co., 427 F.3d 867 (11th Cir. 2005) (bench-trial factual findings reviewed for clear error)
- Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir. 2007) (secondary meaning explained as consumer perception that name denotes producer)