Monday, August 18, 2008

Fifth Circuit finds Urgent Care to be generic for providers of urgent care medical services

The Fifth Circuit Court of Appeals reversed a lower court’s decision granting a preliminary injunction enjoining an urgent care medical provider from using the term “Urgent Care.” See Urgent Care, Inc. et al v. South Mississippi Urgent Care, Inc. et al, 2008 U.S. App. LEXIS 17411, Case No. 08-60155 (5th Cir. Aug. 13, 2008) (unpublished)

Lydia King Rayner began operating Urgent Care, Inc. in Mississippi in 1985 and registered the name “Urgent Care, Inc” as a servicemark with the Mississippi Secretary of State in 2001, but not with the United States Patent and Trademark Office (“USPTO”). Rayner later formed “Urgicare, Inc” and registered the mark mark “UrgiCare” with both the Mississippi Secretary of State and the USPTO.

Rayner filed suit against two companies that started up medical clinics using the name Urgent Care (Apple Urgent Care Occupational Clinic and South Mississippi Urgent Care, Inc.) claiming infringement of the above state and federal registrations. The district court granted Rayner’s Motion for Preliminary Injunction against South Mississippi Urgent Care after determining that Rayner had established the required elements for preliminary injunctive relief, including substantial likelihood of success on the merits due to a likelihood of confusion between each of the parties’ marks and implicitly finding that the marks were protectable in the first place (i.e., not generic and that they had acquired a secondary meaning if descriptive).

In finding that the the district court had erred in its determination, the Court analyzed each of the marks at issue. With respect to the mark “Urgent Care,” the Court of Appeals concluded that the term had not become distinctive of Rayner’s goods and indeed was generic and therefore not entitled to any trademark protection. The court focused on the number of other medical providers that have adopted the word “Urgent Care” in their name as well as a definition of “Urgent Care Medicine” by the American Academy of Urgent Care Medicine. Such extensive use by others shows that others are equally entitled to use such nondistintive words to identify their own services. Finding the “Urgent Care” mark to be generic, the Court of Appeals found the district court’s injunction to be in error and an abuse of discretion.

As for Rayner’s other claimed mark for “UrgiCare,” Rayner’s argument for likelihood of confusion was that because “UrgiCare” sounds like the phrase “urgent care,” the use of the phrase “urgent care” infringed the “UrgiCare” mark. Having found the term “Urgent Care” to be generic, the Court rejected this argument stating that Raynor cannot prevent companies from using a generic term by obtaining a registration on a similar-sounding, but differently spelled mark. The Court further found that “South Mississippi Urgent Care” is sufficiently distinct from UrgiCare that Rayner’s trademark rights were not infringed. As such, the Court reversed the district court’s preliminary injunction with respect to the “UrgiCare” mark as well.

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