Heartsprings, Inc. v. Heartspring, Inc.

143 F.3d 550, 1998 Colo. J. C.A.R. 1961, 46 U.S.P.Q. 2d (BNA) 1481, 1998 U.S. App. LEXIS 7635, 1998 WL 201538
CourtCourt of Appeals for the Tenth Circuit
DecidedApril 20, 1998
Docket97-3011
StatusPublished
Cited by51 cases

This text of 143 F.3d 550 (Heartsprings, Inc. v. Heartspring, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Tenth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 1998 Colo. J. C.A.R. 1961, 46 U.S.P.Q. 2d (BNA) 1481, 1998 U.S. App. LEXIS 7635, 1998 WL 201538 (10th Cir. 1998).

Opinion

PORFILIO, Circuit Judge.

Plaintiff Heartsprings produces and sells books, pamphlets and educational materials designed primarily to teach children to resolve conflicts nonviolently. Defendant Heartspring runs a school in which physically disabled children are taught basic life skills such as dressing, bathing, and eating. Plaintiff claims defendant’s use of the name “Heartspring” is likely to cause consumers to confuse defendant Heartspring’s services with plaintiff Heartsprings’ materials in violation of § 43(a) of the Lanham Act. 1 After considering the parties’ cross motions for summary judgment, the district court concluded no likelihood of confusion exists and granted summary judgment for defendant Heartspring. Plaintiff Heartsprings appeals. We affirm.

The Parties

We begin with a brief description of the parties and the events leading to the current action. 2 Plaintiff Heartsprings is a for-profit *553 Arizona corporation created in March 1991. Plaintiffs products consist primarily of print-' ed materials, such as books, pamphlets, and comic books, designed to help children acquire better relationships in life, school, and the community. Plaintiff actively markets these products under the prominent titles of “PATHWAYS TO RESILIENCY,” “STORY WORKBOOK,” and “PEACEBUILDERS.” See, e.g., Figure 1.

Each of plaintiffs titled publications discusses a specific topic (e.g., “I bring peace to Tucson.”). These individual topics are organized under separate “segments” (e.g., “Social Competence”), and the segments are further organized into separate titled programs (e.g., “STORY WORKBOOK”). Plaintiff generally seeks sponsors to support each topic publication it produces and will print a sponsor’s corporate logo on the cover of the supported publication in exchange for the sponsor’s contribution. See, e.g., Figúre 1. Past sponsors include Pizza Hut, Delta Airlines, The Arizona Daily Star, and Desert Hills Center for Youth & Families.

Defendant Heartspring is a private, nonprofit organization based in Wichita, Kansas. Defendant operates a residential school solely for physically disabled children. Prospective students submit to an extensive diagnostic screening process, and children suffering from psychological ailments are referred elsewhere. The cost of defendant’s services ranges from $90,000 to $150,000 per .year.Defendant Heartspring also runs a number' of outpatient programs, which diagnose disabled children, provide referrals, and provide parents with information about their child’s educational rights.

Defendant originally operated under the name “Institute of Logopedics.” In Spring 1992, however, defendant decided the word “logopedics” was unclear to the public and the word “institute” had unpleasant connotations which “did not reflect [defendant’s] focus of helping children gain independence and better integrate into their communities.” In search of a name to invoke- “more positive feelings towards children,” defendant recruited an advertising agency to compile a list of 50 to 60 prospective names. Defendant submitted the list to its Board of Trustees, and each board member voted on the names he or she- liked best, generating a short list, which was in turn submitted to a series of focus 'groups. Using information obtained from the focus groups, defendant tentatively selected the name “Heartspring.” At defendant’s request, an intellectual property attorney conducted a trademark search. Because plaintiff had hot registered its own trade name, however, the search did not reveal plaintiffs use of the name “Heartsprings.” Defendant subsequently changed its corporate name to ‘-‘Heartspring” and spent nearly $200,000 promoting its new identity. Defendant attempted to register-the name as a service trademark for a “non-profit school for disabled children,” but plaintiff Heartsprings filed a notice of opposition, spawning the current suit.

Applicable Law

The district court granted summary judgment for defendant Heartspring on the ground no likelihood of confusion exists. We must affirm the district court’s order if the record reveals no genuine dispute of material fact and defendant Heartspring is éntitled to judgment as a matter of law. Fed.R.Civ.P. 56(c) (“The judgment sought shall be rendered [if the record shows] that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”). A genuine issue of material fact. exists if a reasonable fact finder could return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Plaintiff Heartsprings contends a genuine dispute of material fact remains on the issue of likelihood of confusion.

Likelihood of confusion is a question of fact we review for clear error. Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 967 (10th Cir.1996); see also Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 923 n. 2 (10th Cir.1986) (discussing the circuit split regarding appropriate standard of review for likelihood of confusion and reaffirming Tenth Circuit’s general rule of treating the issue as a question of fact subject to review for clear error). *554 In this case, the district court found consumers were unlikely to confuse the two marks at issue. If this finding is not clearly erroneous, the plaintiffs claim fails. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 2757-58, 120 L.Ed.2d 615 (1992) (“[Liability under § 43(a) requires proof of the likelihood of confusion.”); Jordache Enterprises v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir.1987) (‘“Confusion occurs when consumers make an incorrect mental association between the involved commercial products or their producers.’ ” (quoting with approval San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 564, 107 S.Ct. 2971, 2995, 97 L.Ed.2d 427 (1987) (Brennan, J., dissenting))).

This court considers the following factors relevant to a determination whether a likelihood of confusion exists:

(a) the degree of similarity between the marks, including the marks’ appearance, pronunciation, suggestion, and manner of display;
(b) strength or weakness of the plaintiffs mark;
(c) the intent of the alleged infringer in adopting its mark;
(d) similarities and differences of the parties’ goods, services and marketing strategies;

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143 F.3d 550, 1998 Colo. J. C.A.R. 1961, 46 U.S.P.Q. 2d (BNA) 1481, 1998 U.S. App. LEXIS 7635, 1998 WL 201538, Counsel Stack Legal Research, https://law.counselstack.com/opinion/heartsprings-inc-v-heartspring-inc-ca10-1998.