IP Law Daily, TRADEMARK NEWS: Blue Cross and Blue Shield of Florida sues to protect its GUIDEWELL mark, (Nov 5, 2013)

By Peter Reap, J.D., LL.M.

Blue Cross and Blue Shield of Florida, Inc., d/b/a Florida Blue (“Florida Blue”) has filed suit in the federal district court in Miami, alleging that Defendants Charles A. Valcarce-Stuart, Guidewell Mutual Holding Company, LLC, Guidewell Health Group, Inc. and Guidewell Health, Inc. (collectively, the “Defendants”), are infringing its federally registered GUIDEWELL trademark that it has used for years in connection with the advertising, promotion, distribution and sale of health, wellness, and nutrition-related goods and services.

According to the complaint, on June 11, 2013, Florida Blue filed with the Florida Office of Insurance Regulation (“OIR”) an application for approval of a Plan of Reorganization, pursuant to which Florida Blue would reorganize into a mutual insurance holding company structure. On August 16, 2013, OIR authorized Florida Blue to form a mutual insurance holding company to be named “GuideWell Mutual Holding Company” and an intermediary holding company subsidiary to be named “GuideWell Health Group, Inc.” Shortly thereafter, Florida Blue sent a Notice to its members that at the September 10, 2013 Annual Meeting, Florida Blue’s members would vote on whether to approve the Plan of Reorganization. Defendant Valcarce-Stuart is a member of Florida Blue.

As the complaint continues, on or about August 31, 2013, promptly after receiving Florida Blue’s Notice of its intention to form Florida companies called “GuideWell Mutual Holding Company” and “GuideWell Health Group, Inc.,” Defendant Valcarce-Stuart formed two Florida companies using Florida Blue’s identical names, i.e., “Guidewell Mutual Holding Company, LLC” and “Guidewell Health Group, Inc.” On or about September 4 and 5, 2013, Defendant registered those entities with the Florida Secretary of State, Division of Corporations.

On October 1, 2013, Defendants sent a letter via U.S. certified mail to Florida Blue’s Chairman and CEO, Mr. Patrick J. Geraghty, with a subject heading “Re: Businesses for sale.” In that letter, Defendant Valcarce-Stuart identified the Florida entities that he formed and registered a month before, and he offered to sell those entities to Florida Blue. The complaint alleges that then, on October 12, 2013, Defendant Valcarce-Stuart, as President of GMHC, signed and filed Application No. 86090131 in the USPTO for GUIDEWELL MUTUAL HOLDING COMPANY for “providing personal support services for caregivers, partners, wives and husbands of the chronically ill and/or disabled, namely, companionship and emotional support.” That same day, Defendant Valcarce-Stuart, as President of GHG, also signed and filed “intent-to-use” Application No. 86090129 in the USPTO for GUIDEWELL HEALTH GROUP, INC. for “verifying and monitoring the credentials of doctors and other medical professionals for public safety purposes.”

Because of the existence of the Defendants’ improper Florida business registrations, Florida Blue alleges that it was forced to amend the names of the Florida entities formed pursuant to the Plan of Reorganization to “GuideWell Mutual Holding Corporation” and “GuideWell Group, Inc. d/b/a GuideWell Health Group, Inc.” so that the entities could be registered with the Division of Corporations, which was done on October 23, 2013. On October 25, 2013, two days after Florida Blue was forced to amend one of its corporate names to “GuideWell Mutual Holding Corporation,” Defendant Valcarce-Stuart, on behalf of GMHC, filed Application No. 86102350 in the USPTO for Florida Blue’s identical name: GUIDEWELL MUTUAL HOLDING CORPORATION for “assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization relating to micro credits, micro finance and energy products.”

The Defendants’ alleged use and registration of and applications for GUIDEWELL and GUIDEWELL-formative names and marks is causing a likelihood of confusion with Florida Blue and Florida Blue’s GUIDEWELL marks, the complaint asserts. Further, the Defendants’ intentionally unlawful conduct has caused and is continuing to cause substantial irreparable injury to Florida Blue and Florida Blue’s GUIDEWELL marks.

Florida Blue brings claims under the Lanham Act against the Defendants for trademark infringement, unfair competition, and false designation of origin. It also asserts several common law claims, including trademark infringement and passing off, and a claim for fraud on the USPTO.

Florida Blue requests an injunction requiring the Defendants to withdraw their offending trademark applications bearing on Florida Blue’s GUIDEWELL marks, refrain from interfering, using, or attempting to register those marks, and to cancel their state business registrations that bear on the GUIDEWELL marks. It also requests monetary damages in the form of treble actual damages, reasonable costs, and attorney fees.

The complaint in Blue Cross and Blue Shield of Florida, Inc. v. Valcarce-Stuart, Civil Action No. 1:13-cv-23981-UU, was filed November 1, 2013.

Attorneys: Marcos Daniel Jimenez (McDermott Will & Emery LLP) for Blue Cross and Blue Shield of Florida, Inc.

Companies: Blue Cross and Blue Shield of Florida, Inc.

News: Trademark FloridaNews