IP Law Daily, TRADEMARK—E.D.N.Y.: ‘MEDAIR®’ mark for medical mattress products succumbs to cancellation challenge, (Apr 1, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Users of MED-AIRE mark established priority; MEDAIR® was likely to confuse consumers.

A federal district court in New York granted in part and denied in part cross-motions for summary judgment in a trademark dispute between two national suppliers of medical air mattresses and related products. Medical Depot, Inc., doing business as Drive Medical, prevailed on its claims for federal trademark infringement and cancellation, securing a permanent injunction against defendant Med Way US, Inc. The court found that Drive held prior common law rights in the ‘Med-Aire’ mark and that Med Way’s use of the MEDAIR® mark was likely to cause confusion. The court declined, however, to award monetary damages or find bad faith sufficient to support an unfair competition claim. All of Med Way’s counterclaims were dismissed due to the finding of infringement (Medical Depot, Inc. v. Med Way US, Inc., No. 2:22-cv-01272-OEM-SIL (E.D.N.Y. Mar. 28, 2025)).

Background. The plaintiff, Medical Depot, is a national distributor of durable medical equipment, including hospital beds, mobility aids, and therapeutic support surfaces such as alternating pressure air mattresses. Its products are sold to healthcare facilities, retailers, and individual consumers through various distribution channels. The defendant, Med Way, is a Florida-based company and is also engaged in the distribution of medical devices and equipment, including therapeutic air mattresses imported from overseas manufacturers and sold within the United States.

The dispute centers on two similarly named marks used in connection with medical mattress systems. Since at least 2007, Drive has marketed its air mattress products under the ‘Med-Aire’ mark, which it has displayed on product packaging, promotional materials, catalogs, invoices, and major e-commerce platforms. Although the mark was never federally registered, Drive claimed continuous and widespread commercial use. Med Way began using the MEDAIR® mark on similar air mattress systems in 2018 and obtained a federal trademark registration for the mark in 2022 (U.S. Reg. No. 6,116,976). The marks differ only by a hyphen, and both are used for functionally similar products targeted at overlapping customer bases.

In 2022, Drive filed a petition before the USPTO to cancel Med Way’s MEDAIR® registration, asserting prior rights in its Med-Aire mark. It also filed the present action alleging trademark infringement under the Lanham Act and unfair competition under common law and requesting cancellation of Med Way’s registration as a remedy. In response, Med Way filed counterclaims seeking declaratory judgment of non-infringement, cancellation of Drive’s asserted rights, and damages for alleged trademark dilution, tortious interference, and unfair competition. Following the close of discovery, both parties moved for summary judgment.

Validity and priority of the Med-Aire mark. The court found that Drive had established a protectable common law interest in the “Med-Aire” mark. Acknowledging that common law rights arise from actual use in commerce, the court credited Drive’s evidence of continuous nationwide sales and brand presence since at least 2007. Med Way argued that Drive's usage lacked the qualities of trademark use and that Drive had abandoned the mark prior to Med Way's adoption, but the court rejected both assertions. Applying the framework from ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 146–47 (2d Cir. 2007), the court held that Drive had priority because it began using the mark more than a decade before Med Way’s first use.

Although Med Way argued that the term “Med-Aire” was merely descriptive and lacked secondary meaning, the court determined that it was at least suggestive, requiring “some imagination and some thought” to connect it to the nature of the product. The court also noted that Med Way's own counsel conceded in oral argument that “Med-Aire” was distinctive.

Likelihood of confusion. The court found the marks MED-AIRE and MEDAIR® to be visually and phonetically similar, differing only by a hyphen. The parties stipulated to a likelihood of confusion, and both sold similar medical mattresses to overlapping markets using similar distribution methods. As a result, the court concluded that the likelihood of confusion element was met, satisfying the standard under the Lanham Act.

Having found that Drive had (1) a valid and protectable mark, (2) priority of use, and (3) a likelihood of confusion, the court granted Drive summary judgment on its federal trademark infringement claim.

Cancellation of the MEDAIR® registration. The court also granted Drive’s request to cancel Med Way’s federal registration under 15 U.S.C. § 1119. A plaintiff has standing to seek cancellation where it uses a similar mark in commerce and has been blocked from registering its own mark. Drive had submitted evidence that its attempt to register "Med-Aire" was rejected due to Med Way's registered mark and that both parties marketed competing goods under near-identical marks. Because Med Way's mark was likely to cause confusion with the senior mark, the court concluded that a valid basis existed to cancel the registration. The court cited Patsy’s Italian Restaurant, Inc. v. Banas, 575 F. Supp. 2d 427 (E.D.N.Y. 2008), aff’d, 658 F.3d 254 (2d Cir. 2011), for the principle that federal registration is impermissible when confusion with a prior user is likely.

Unfair competition and bad faith. The court denied Drive’s motion on its unfair competition claim, which under New York law requires not only a showing of trademark infringement but also bad faith or intent to misappropriate goodwill. Drive relied on testimony that Med Way’s CEO, Dr. Ahmed Alawad, had encountered Drive’s Med-Aire mattresses before choosing the MEDAIR® mark. However, Med Way presented evidence that it relied on a trademark clearance search and advice of counsel before using the mark. The court, citing Rosenthal A.G. v. Ritelite, Ltd., 986 F. Supp. 133, 144 (E.D.N.Y. 1997), held that prior knowledge of a mark does not alone establish bad faith and concluded that Drive had failed to produce sufficient evidence of intentional copying. Therefore, summary judgment on the unfair competition claim was granted in Med Way's favor.

Injunction and damages. The court granted Drive’s request for a permanent injunction, enjoining Med Way from using the MEDAIR® mark or any confusingly similar variation. The court found that Drive had shown irreparable harm through ongoing confusion and damage to its brand identity.

However, the court denied Drive’s request for monetary damages, noting the absence of evidence of actual confusion, lost sales, or diverted customers. Without such evidence, the court held that an equitable remedy sufficed.

Counterclaims. Med Way’s eleven counterclaims were dismissed in their entirety. These included claims for federal and state trademark infringement, dilution, unfair competition, declaratory relief, and tortious interference. Because the court found that Drive had priority in the Med-Aire mark, the trademark-based counterclaims failed as a matter of law. The court also found no evidence of malice or bad faith supporting tortious interference or unfair competition.

Conclusion. Thus, the court granted Drive’s motion for summary judgment on its claims for federal trademark infringement and cancellation of the MEDAIR® registration and issued a permanent injunction. It denied Drive’s unfair competition and damages claims. Med Way’s counterclaims were dismissed, and its motion for partial summary judgment was granted only with respect to the unfair competition claim.

The Case is No. 2:22-cv-01272-OEM-SIL.

Judge: Merchant, O.

Attorneys: Dyan M. Finguerra-Ducharme (Pryor Cashman LLP) for Medical Depot, Inc. Ben D. Manevitz (Manevitz Law Firm LLC) for Med Way US, Inc.

Companies: Medical Depot, Inc.; Med Way US, Inc.

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