National Association Of Healthcare Communications, Inc. v. Central Arkansas Area Agency On Aging, Inc.

257 F.3d 732 (8th Cir. 2001)

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Nature of the Case

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Facts

P was the first to use the mark nationally. It has a federal service mark registration pending but must rely in this case on its common law trademark rights as enforced under the Lanham Act. D was the first to use the mark in six counties in central Arkansas and has registered its mark under the Arkansas trademark statutes. P is an Illinois corporation that provides remote electronic monitoring devices and emergency response services for at-home clients in twenty-five States, including Arkansas. P solicits local hospitals and home health care agencies to become members and each member’s subscribers are offered a variety of CareLink at-home emergency response services. D is a private, nonprofit Arkansas corporation organized to provide a broad range of support services to elderly and disabled persons in a six-county region in central Arkansas. D has 750 employees and 300 volunteers who assist some 10,000 elderly persons in the region. D has never provided personal emergency response services, but it has occasionally paid for such services being provided to D clients. In January 1995, D adopted the trade name 'CareLink' to use in lieu of its corporate name, which had proved awkward and hard to remember, and which created the misimpression that D is a government agency. P began marketing emergency response services under the CareLink service mark in 1991 or early 1992. From 1992 to 1995, D made only one sale in Arkansas. P had no Arkansas customers from April 1994 to September 1995. P entered into a contract with North Arkansas Regional Medical Center in Harrison and by 1999 had contracts with seven Arkansas health care providers and served 350 individual subscribers. Its total Arkansas revenues in 1999 would be just over $82,000. P has never had a customer for its CareLink services located within the six-county region served by D. P applied for federal trademark registration on May 4, 1999, and its application is pending. D adopted the name and logo in early 1995. D registered its CareLink mark with the Arkansas Secretary of State on March 23, 1995, and has used the mark in promoting all of its services, except hospice care. All of D's clients reside in its six-county region, but its activities are publicized beyond central Arkansas. D did not know of P's prior usage. D sent a cease-and-desist letter to P. P sued D alleging common law trademark infringement and unfair competition seeking an injunction barring D from using the mark and cancellation of D's state registration. D sought an injunction prohibiting P from using the mark in Arkansas or, in CA's six-county region. The district court dismissed P's claims because its use of the mark in Arkansas prior to Ds state registration was de minimis. D was granted a permanent injunction prohibiting P from using the mark anywhere in Arkansas. P appealed.