CareFirst Trademark Was Not Infringed Or Diluted By First Care

Case: CareFirst of Maryland, Inc. v. First Care, P.C., No. 04-2493 (4th Cir. 1/11/06)

The One Sentence Summary: Affirms summary judgment in favor of professional corporation of family care physicians, finding defendant did not infringe or dilute the trademark of one of the largest HMOs in the nation.

What They Were Fighting About: CareFirst, an HMO affiliated with Blue Cross Blue Shield contended that consumers were likely to be confused by defendant's "First Care" trademark.

Fourth Circuit Holdings:

• Umbrella organization of Blue Cross Blue Shield affiliates operating jointly and collectively under the CareFirst mark had spent millions of dollars advertising its mark, denominating itself "CareFirst Blue Cross Blue Shield." At least 80% of its members reside in CareFirst's direct service area, consisting of Maryland, Delaware, the District of Columbia and Northern Virginia.
• First Care is a professional corporation of less than a dozen physicians operating close to but outside of CareFirst's direct service area.
• CareFirst had notice of First Care's name and services since 1996, but took no action until 2004, when First Care submitted a deposition in a separate lawsuit CareFirst was pursuing against a third party.
• The protectability of CareFirst's mark was incontestable because more than five years had passed since registration.
• CareFirst's only evidence of actual confusion was a survey that showed only a de minimis level of confusion at best. Only two of the 130 respondents had both heard of First Care and thought that it was related to or affiliated with CareFirst.
• The CareFirst mark lacked conceptual strength because the record showed substantial third-party use of the words "Care," "CareFirst," "First," and "First Care" in the health care industry. This also demonstrated a lack of commercial strength in many parts of the country.
• Although millions of dollars were spent on advertising CareFirst, in accord with company policy, the "CareFirst" mark always appeared with "Blue Cross Blue Shield" and usually with a distinctive corporate logo. Thus, this evidence did not show that the "CareFirst" mark, standing alone, had commercial or conceptual strength.
• The two marks at issue were very different in appearance because the CareFirst mark was almost always paired with the Blue Cross Blue Shield language, while the First Care mark was always by itself or with the suffix "P.C."
• The services offered by the parties were dissimilar because First Care only provides direct medical services to individuals and CareFirst does not. Rather, CareFirst contracts with participating providers to treat its members.
• District Court did not err in granting defendant summary judgment on plaintiff's trademark infringement and dilution claims.