IP Law Daily, TRADEMARK—E.D. Ky.: Nursing education provider’s use of competitor’s trademark in search engine keyword advertising not enjoined pending trial, (Aug 25, 2023)

By Donielle Tigay Stutland, J.D.

The court concluded that confusion was unlikely between marks used in Google Ads, given the weakness of the mark, high degree of purchaser care, and a lack of intent to confuse.

A Kentucky district court denied a request for a temporary injunction by Nursing CE Central LLC (“CE Central”) prohibiting competitor Colibri Healthcare, LLC (“Colibri”) from using its business name and registered trademark in online digital advertisements. CE Central, which provides nursing continuing education, alleged that Colibri infringed on its trademark by using its “Nursing CE Central” trademark in the text of its Google ads to divert consumers away from the CE Central's website and to Colibri’s website. Upon weighing the relevant factors, the court concluded that there was not a likelihood of confusion, as several factors, including the weakness of CE Central’s mark, likely high degree of purchaser care, and lack of intent did not show a likelihood of confusion. Further, the court noted that there was not a likelihood of imminent harm, as Colibri indicated that it had it instructed Google, its third-party ad manager, to “discontinue AdWords campaigns that referenced” CE Central’s trademarked name once it learned of this dispute. As Colibri’s ads no longer referenced CE Central’s trademark at the time of the hearing, the court found speculative future harm was insufficient to warrant injunctive relief (Nursing CE Central, LLC v. Colibri Healthcare, LLC, August 24, 2023, Reeves, D.).

The court began its analysis by indicating that in order for CE Central to be granted an injunction for trademark infringement, it must establish its mark is “protectible” and that the defendant’s conduct creates a likelihood of confusion for consumers regarding the origin of the goods or services resulting from defendant’s use of the disputed mark.

In analyzing whether there was a likelihood of confusion between the two marks, the court relied on the test from Frisch, which examines the following factors: (1) strength of the plaintiff’s mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. The court also noted that in this case, the strength of the mark, similarity between the marks, and evidence of actual confusion often are the “most important factors.”

Strength of mark. Looking at the strength of the mark, the court first indicated that CE Central’s mark is not entitled to a presumption of distinctiveness because it has not risen to the level of “incontestable” status contemplated by Congress given its relatively recent trademarking.” Further, the court determined it was a descriptive mark, as it “specifically describes a characteristic or ingredient” of the offered service, which is continued nursing education in this case.

However, even if CE Central’s mark was conceptually strong, the court noted that “a mark’s commercial strength depends on public recognition, or the extent to which people associate the mark with the product or service it offers.” The court determined that CE Central had not shown that the public, or even those consumers in the market in which it competes, readily recognize its name. The court weighed this factor against a likelihood of confusion.

Relatedness of goods. The court indicated that both companies offer the same nursing continuing education services, so this factor weighed in favor of a likelihood of confusion.

Similarity of the marks. The court noted that use of the term “nursing ce central” in Colibri’s ads, despite the use of lowercase, is nearly identical to the “CE Central” in trademark, which used uppercase. Further, the court noted that any use of “Nursing Ce Central” creates at least some likelihood of confusion. Consumers could reasonably believe that the Colibri’s website was that of CE Central’s or that the two were affiliated based on use of the same name in the online ad. This factor weighs in the plaintiff’s favor.

Actual confusion. The court indicated that CE Central had not presented any evidence of actual or past confusion among consumers in the market for continued nursing education service. As such, the court found this factor to be neutral.

Marketing channels used. The court concluded that both companies used the same marketing channels, as both rely on the internet as a sales tool. The court found this factor weighed in favor of confusion.

Degree of purchaser care. The court looked at the degree of purchaser care and concluded the parties’ purchasers used a high degree of care. The services offered by both parties target licensed and practicing nurses searching for a way to fulfill continuing education requirements. This means that a higher standard likely applies. The court determined that based on their level of consumer sophistication to the more careful customer, Colibri’s use of CE Central’s name in its ads, which also contained reference to its own marks for which it has requested trademarks, likely does not trick the customer into believing it’s purchasing CE Central’s services. The consumer operating with a higher degree of purchaser care would likely understand that clicking on the Colibri’s ad would bring them to Colibri’s website, which contains no reference to the CE Central or its services. The court weighed this favor in Colibri’s favor.

Intent. CE Central suggests that Colibri’s use of “Nursing Ce Central” amounts to an intentional effort to deceive consumers following a failed joint business venture and, therefore, benefit the defendant financially by posing as the plaintiff to lure potential customers. But Colibri argues that it lacked knowledge of reference to the plaintiff’s trademarked name in its ads prior to CE Central’s request for judicial intervention because a third party, through Google, manages its online marketing activities. The court found that because the third party had placed the ad, CE Central had not shown Colibri intended to deceive consumers.

Upon weighing the relevant factors, the court concluded that CE Central had not carried its burden of proving that the Colibri’s use of the CE Central trademarked name would create a sufficient likelihood of confusion for consumers. While the similarity of the marks weighed heavily in favor of CE Central, the court found that “multiple factors to which courts give serious weight––the strength of Plaintiff’s mark, likely degree of purchaser care, and defendant’s intent––result in a conclusion that the plaintiff has not demonstrated a sufficient degree of likely consumer confusion.”

Irreparable harm. The court also rejected CE Central’s argument that a restraining order is necessary to prevent Colibri from continuing to use its business name in digital advertisements, which it claims causes irreparable harm to its reputation and to its competitiveness in the industry. The court pointed out that once Colibri learned of the dispute, it instructed Google, its third-party ad manager, to “discontinue AdWords campaigns that referenced” CE Central’s trademarked name. At the time of the hearing, Colibri’s online ads no longer referenced CE Central’s trademarked name. The court concluded that speculative future harm is insufficient to warrant injunctive relief.

The Case is No. 5:23-cv-00232-DCR.

Attorneys: Ava M. Abner (Frost Brown Todd LLC) for Nursing CE Central LLC. J. Mark Wilson (Moore & Van Allen, PLLC) for Colibri Healthcare, LLC.

Companies: Nursing CE Central LLC; Colibri Healthcare, LLC

Cases: TechnologyInternet Trademark KentuckyNews