Paul B. Tartell, M.D. v. South Florida Sinus and Allergy Center, Inc. , 790 F.3d 1253 ( 2015 )

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[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 14-13178
________________________
D.C. Docket No. 0:12-cv-61853-WPD
PAUL B. TARTELL, M.D.,
Plaintiff-Appellee,
versus
SOUTH FLORIDA SINUS AND ALLERGY CENTER, INC.,
LEE M. MANDEL, M.D., INC.,
a Florida Corporation,
LEE M. MANDEL, M.D.,
Individually,
Defendants-Appellants.
________________________
Appeals from the United States District Court
for the Southern District of Florida
_______________________
(June 23, 2015)
Before WILLIAM PRYOR, JULIE CARNES, and SILER, ∗ Circuit Judges.
WILLIAM PRYOR, Circuit Judge:
∗
Honorable Eugene E. Siler, Jr., United States Circuit Judge for the Sixth Circuit, sitting by
designation.
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This appeal requires us to decide whether the district court clearly erred
when it found that a physician’s name had acquired “secondary meaning,” Tana v.
Dantanna’s, 611 F.3d 767, 774 (11th Cir. 2010) (internal quotation marks
omitted). Dr. Paul B. Tartell and Dr. Lee M. Mandel jointly practiced medicine in
South Florida until 2011. After they split their practices, Dr. Mandel registered six
domain names with variations of Dr. Tartell’s name. Dr. Tartell then filed a
complaint against Dr. Mandel, his incorporated practice, and another corporation
owned by Dr. Mandel for cybersquatting, 15 U.S.C. § 1125(d), false designation of
origin, id. § 1125(a), and unfair competition. Dr. Mandel canceled the registration
for the domain names the day after Dr. Tartell filed his complaint, but the parties
persisted in this litigation. At a bench trial, Dr. Tartell presented evidence that his
name had appeared on several advertisements for their joint practice, but Dr.
Tartell presented no substantial evidence about the effect of those advertisements
on consumers. The district court ruled that Dr. Tartell’s name had acquired
secondary meaning, but awarded him only statutory damages for cybersquatting in
the absence of any evidence of actual damages. Because Dr. Tartell failed to
present substantial evidence that his name had acquired secondary meaning in the
minds of consumers, the district court clearly erred. We reverse and render a
judgment in favor of Dr. Mandel and his corporations.
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I. BACKGROUND
From 1998 to 2011, Dr. Tartell and Dr. Mandel practiced together as part of
Tartell & Mandel, M.D., LLC., under the name South Florida Sinus and Allergy
Center. In February 2011, the doctors split their practices, and the split was
contentious.
After the split of their practices, Dr. Mandel incorporated the name of their
practice, South Florida Sinus and Allergy Center, Inc., without Dr. Tartell’s
knowledge, and Dr. Mandel registered six domain names that used some variation
of Dr. Tartell’s name: ptartell.com, paultartellmd.net, paultartellmd.com,
paultartell.net, paultartell.com, and tartell.net. Dr. Mandel configured five of the
domain names to forward users to sfsac.com, a domain name he controlled. Dr.
Mandel also purchased Google AdWords for “Paul Tartell” and “Paul Tartell,
MD,” which caused sfsac.com to appear as an advertisement whenever someone
searched with those terms on Google.
After Dr. Tartell discovered the registered domain names, he filed a
complaint against Dr. Mandel; Dr. Mandel’s professional corporation, Lee M.
Mandel, M.D., Inc.; and South Florida Sinus and Allergy Center, Inc. Dr. Tartell
asserted five causes action: federal cybersquatting, 15 U.S.C. § 1125(d); false
designation of origin, id. § 1125(a); unfair competition; false advertising, id. §
1125(a); and unauthorized publication of name and likeness, Fla. Stat. § 540.08.
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Dr. Mandel cancelled the domain names the day after Dr. Tartell filed his
complaint. But as the district court aptly described, “this action continued all the
way through [a four-day bench] trial because Dr. Mandel refused to take
responsibility for his antics while Dr. Tartell sought a statutory windfall for a
short-lived and largely pointless deceit.”
To prove that his name had acquired “secondary meaning,” Tana, 611 F.3d
at 774 (internal quotation marks omitted), Dr. Tartell presented evidence of his
academic and community activities, evidence of commercial advertisements of his
practice with Dr. Mandel, and testimony about patient and doctor recognition of
his name. For example, Dr. Tartell presented evidence that he gave 39 lectures
from 1990 to 1997 and 11 presentations from 1988 to 1995 and that he published
ten articles in medical journals between 1989 and 1999. Dr. Tartell also testified
that he gave “[d]ozens” of non-academic lectures to various groups with “50 or so”
people and that he participated in charitable organizations. But Dr. Tartell provided
no details about his non-academic lectures. Dr. Tartell also presented evidence that
his name appeared on a variety of promotional materials, including several
advertisements for the Center that appeared at the Bank Atlantic Center, where the
Florida Panthers play professional hockey; advertisements for the Center that
appeared on concession items at the Arena; a biography of Dr. Tartell that
appeared in the program and on the website for the Panthers; advertisements for
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the Center in the Sun Sentinel newspaper and on the radio; and listings of Dr.
Tartell’s name in directories for patients and medical professionals. Dr. Tartell
testified that, “not infrequent[ly],” patients “come to [him] saying that the reason
they’re coming to [him] . . . is because they searched [him], and they found . . .
article[s] that [he] had written” and that “everybody that [went to the Bank Atlantic
Center] knew that [he was] the voice doctor[].” He testified that his academic
activities caused other doctors to contact him with questions or to refer patients to
him. And two referring doctors testified that other doctors “thought very highly of”
Dr. Tartell, that their patients were usually “happy with the results” when referred
to Dr. Tartell, and that other doctors gave “the utmost praise” when talking about
Dr. Tartell.
The district court found that “Dr. Tartell’s name has acquired secondary
meaning within South Florida” based on “the length and prevalence of Dr. Tartell’s
overall public use of his name in conjunction with his medical services—including
his widespread advertisements through affiliation with the Florida Panthers.” The
district court mentioned the evidence submitted by Dr. Tartell, but it made no
specific findings with respect to each of the four factors that courts should consider
when determining whether a mark has acquired secondary meaning, see id. at 776.
The district court entered a judgment in favor of Dr. Tartell for
cybersquatting, false designation, unfair competition, and unauthorized publication
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of name and likeness, but against his claim for false advertising. The district court
awarded Dr. Tartell $1,000 in statutory damages for each claim for cybersquatting,
for a total of $6,000, but it awarded Dr. Tartell no other relief because he failed to
prove actual damages. The district court later ruled that Mandel, Inc., and South
Florida Sinus and Allergy Center, Inc., were liable to the same extent that Dr.
Mandel was liable.
II. STANDARDS OF REVIEW
“After a bench trial, we review the district court’s conclusions of law de
novo and the district court’s factual findings for clear error.” Proudfoot Consulting
Co. v. Gordon, 576 F.3d 1223, 1230 (11th Cir. 2009). “The existence of secondary
meaning is a question of fact,” which we review “under the clearly erroneous
standard.” Am. Television & Commc’ns Corp. v. Am. Commc’ns & Television, Inc.,
810 F.2d 1546, 1549 (11th Cir. 1987). A factual finding is clearly erroneous “if,
after viewing all the evidence, we are left with the definite and firm conviction that
a mistake has been committed.” HGI Assocs., Inc. v. Wetmore Printing Co., 427
F.3d 867, 873 (11th Cir. 2005) (internal quotation marks and citation omitted).
III. DISCUSSION
A plaintiff must prove that his service mark is “distinctive” to establish a
claim for cybersquatting, 15 U.S.C. § 1125(d)(1)(A)(ii)(I), for false designation of
origin, Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512–13 (11th Cir. 1984), and
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for unfair competition, Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d
641, 652 (11th Cir. 2007). We “recognize[] four categories of distinctiveness” for
marks, but the parties agree that Dr. Tartell’s name is a “descriptive” mark, which
is a “mark[] that identif[ies] the characteristic or quality of a product or service.”
Tana, 611 F.3d at 774. Although a descriptive mark is not “inherently distinctive,”
it “may become sufficiently distinctive to enjoy trademark protection by acquiring
‘secondary meaning.’” Id.“A name has acquired secondary meaning when the primary significance of
the term in the minds of the consuming public is not the product but the producer.”
Id. (quoting Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir.
2007)). In other words, secondary meaning requires that a “name denotes to the
consumer or purchaser ‘a single thing coming from a single source.’” Am.
Television, 810 F.2d at 1549 (quoting Am. Heritage Life Ins. Co. v. Heritage Life
Ins. Co., 494 F.2d 3, 12 (5th Cir. 1974)). A plaintiff may prove secondary meaning
with direct evidence, such as consumer surveys, or circumstantial evidence.
Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519,
1525 (11th Cir. 1991). A court should consider the four Conagra factors to
determine if circumstantial evidence establishes that a mark has acquired
secondary meaning:
(1) the length and nature of the name’s use, (2) the nature and extent
of advertising and promotion of the name, (3) the efforts of the
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proprietor to promote a conscious connection between the name and
the business, and (4) the degree of actual recognition by the public
that the name designates the proprietor’s product or service.
Tana, 611 F.3d at 776 (internal quotation marks and citation omitted). The “minds
of the consuming public,” id. at 774 (internal quotation marks and citation
omitted), define what, if any, secondary meaning is attributed to a mark, and as
such, the owner of a mark must adduce evidence of what “the [mark] denotes to
the consumer,” Am. Television, 810 F.2d at 1549.
The district court clearly erred when it found that Dr. Tartell’s name had
acquired secondary meaning. Because Dr. Tartell offered no consumer surveys, he
had to rely on circumstantial evidence to prove that his name had acquired
secondary meaning. Although Dr. Tartell produced some evidence relevant to the
Conagra factors, he failed to produce any substantial evidence of what his name
“denotes to the consumer,” id. As a result, “we are left with the definite and firm
conviction that a mistake has been committed,” HGI Assocs., 427 F.3d at 873(internal quotation marks and citation omitted).
As a threshold matter, Dr. Tartell’s evidence about the use of his name in
academic settings and evidence about his reputation among other medical
professionals are not probative of whether his name had acquired secondary
meaning. The target audience for Dr. Tartell’s academic activities, most of which
occurred more than two decades ago, was not consumers of his medical services—
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that is, potential patients. And nothing in the record suggests that, “present-day
[potential patients] would specifically associate [his] name with [his services],”
Tana, 611 F.3d at 777, based on his academic activities. See also Flynn v. AK
Peters, Ltd., 377 F.3d 13, 20–21 (1st Cir. 2004) (holding that academic activities
are not evidence of secondary meaning where “consumers [are not] aware of [the]
academic achievements”). Likewise, evidence that Dr. Tartell is respected by his
peers “suggests nothing more than that [his] name . . . may have a familiar ring to a
discrete group,” Tana, 611 F.3d at 777.
Dr. Tartell produced no substantial evidence relevant to the fourth Conagra
factor, “the degree of actual recognition by the public,” id. at 776 (internal
quotation marks and citation omitted), which bears directly on what his name
“denotes to the consumer,” Am. Television, 810 F.2d at 1549. The only evidence
related to this factor was Dr. Tartell’s self-serving testimony that some patients
told him that they selected him because of his articles and that “everybody that
[went to the Bank Atlantic Center] knew that [he was] the voice doctor[].” But Dr.
Tartell’s “generalized self-serving statements as to [his] reputation . . . add no
material evidence . . . that is relevant to the secondary-meaning inquiry,” Tana,
611 F.3d at 777; see also Flynn, 377 F.3d at 21 (explaining that a plaintiff’s
testimony “that a handful of strangers have told her that they recognized her from a
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talk or that they had read her [work]” is “limited anecdotal evidence [that] does
little to establish that her name has acquired secondary meaning”).
Dr. Tartell’s remaining evidence says nothing about the perceptions of
consumers. For example, “there is nothing significant about the manner of [Dr.
Tartell]’s use of” his name, Investacorp, 931 F.2d at 1525. Dr. Tartell practiced
under the name “South Florida Sinus and Allergy Center” for most of the 13 years
before this action, so Dr. Tartell’s name was not the primary mark by which his
services were identified during this period. See J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 7.3 (4th ed. 2009) (“[T]he prominence of a
word or symbol is certainly an important element in determining whether it creates
a separate commercial impression on the average buyer.”). Dr. Tartell produced no
evidence that his use of his name was unique as compared to how another doctor
would use his name. See id. § 13.2 (explaining that, in “professions where the use
of personal names as identifiers is traditional,” such as the medical profession, it is
more difficult to establish secondary meaning). And, “the nature and extent of
advertising,” Tana, 611 F.3d at 776 (internal quotation marks and citation omitted),
of Dr. Tartell’s name fails to establish that his name had acquired secondary
meaning. Although Dr. Tartell’s name appeared on numerous advertisements and
other promotional material, his name was not displayed “prominently.” See
Conagra, 743 F.2d at 1513 (stating that the “prominen[ce]” of a name on
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packaging may support a finding of secondary meaning). All of the advertisements
instead displayed the name of the Center or its logo more prominently. “South
Florida Sinus and Allergy Center” was written in larger font, and the visual
features of each advertisement drew the reader’s attention to that mark. Dr.
Tartell’s name appeared in smaller font, near the bottom of the advertisements,
alongside Dr. Mandel’s and a physician assistant’s names. These advertisements
fail to suggest that ‘a single thing[, sinus and allergy services at the Center,]
com[es] from a single source[, Dr. Tartell],’” Am. Television, 810 F.2d at 1549(internal quotation marks and citation omitted). Dr. Tartell also failed to present
any evidence about his “efforts . . . to promote a conscious connection between
[his] name and [his services],” Tana, 611 F.3d at 776 (internal quotation marks and
citation omitted). Dr. Tartell testified that he chose the content of the
advertisements to create a connection between sinus and allergy services and his
name, but those advertisements prominently featured the name of the Center, not
Dr. Tartell’s name. Although Dr. Tartell also mentioned various lectures he gave in
the community, his “generalized self-serving statements,” id. at 777, failed to
provide any details about these lectures. Moreover, “[d]ozens” of lectures to “50 or
so” people cannot establish that his name had acquired a secondary meaning with a
significant portion of potential patients in densely populated South Florida. Dr.
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Tartell presented no evidence that “advertising campaigns made major inroads to
the consumer psyche.” Investacorp, 931 F.2d at 1526.
IV. CONCLUSION
We REVERSE the judgment in favor of Dr. Tartell and RENDER a
judgment in favor of Dr. Mandel and his corporations.
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