Monday, February 28, 2022

unrelatedness of goods trumps use of identical name for health records app, hand sanitizer

Healthvana, Inc. v. Telebrands Corp., 2022 WL 562265, No. CV 20-04305 DDP (SKx) (C.D. Cal. Feb. 23, 2022)

Healthvana operates a health app, Healthvana, and has a trademark (registration) for use in connection with software and software as a service. The app initially focused on delivering the results of HIV tests, and tests for other sexually transmitted diseases, to patients. Healthvana then shifted the focus of its digital platform to Covid test records, and later vaccination records. “At all times, Healthvana’s customers have not included end users of software or the Healthvana app, but rather governmental entities, healthcare firms, medical officers, laboratories, and employers.”

Telebrands markets and sells “As Seen on TV” consumer household products via websites, phone numbers, and big box retailers. Among its products is a line of “Hempvana” products. Telebrands made a pandemic-related effort to market and sell a hand sanitizer product, but retailers were historically reluctant to carry products associated with hemp, so it used “Healthvana” for its hand sanitizer. Its marketing efforts included a “direct response” TV commercial and a website, and later expanded to big box stores.

In March 2020, Healthvana objected, and Telebrands’ counsel indicated that it would rebrand as “Handvana.” “By April 17, Telebrands represented that all changes had been made. Several hundred thousand bottles of hand sanitizer, however, had already been produced with the older, ‘Healthvana’ label. Those bottles were filled and shipped to big box customers sometime after April 17.” Healthvana sued in May 2020 for trademark infringement, unfair competition, and false advertising in violation of both federal and state law, as well for cybersquatting under ACPA.

Telebrands won summary judgment.

Strength: “fanciful or perhaps suggestive,” so “some degree of protection”; no discussion of marketplace strength, which probably tells you how this might go.

Relatedness of goods: “Products and services related to a general industry may, in some cases, be related to each other, insofar as consumers are likely to associate one party’s products with the other party.” But “health” as part of a name was related to the industry, so “the fact that both parties’ products relate to the same, very general industry is of little moment.” Plus, “the universe of health-related products and services” is very broad. Nor was the relevant universe “Covid-related products,” since hand sanitizer is not “Covid hand sanitizer” but indisputably general hand sanitizer. Telebrands’ TV ad didn’t use the word “Covid” [I bet litigation counsel is grateful for FDA compliance efforts carried out in writing the copy!]. And even if Telebrands focused on the Covid-related market, the court was “skeptical that Healthvana’s phone app software would necessarily be ‘related to’ every other product in the universe of arguably Covid-related products, including hand wipes, cleaning solutions, masks, gloves, face shields, prescription medicines, vaccines, pulse oximeters, UV-sanitizers, thermometers, and so on.”


defendant's logo that somehow got uploaded first: Brown "health," black "vana" with part of v replaced by leaf [probably the hemp link coming back] and an umlaut over the middle a

plaintiff's logo: gray text with blue heart logo that has an internal outline of a checkmark

The court compared the marks as used in the marketplace, with different color, font, and imagery. The marketplace itself differed: Healthvana’s mark was on an app, and Telebrands’ in the physical market. Similarity only weighed “very slightly” in favor of confusion.

Actual confusion: The court rejected most of Healthvana’s purported “hundreds of instances of actual confusion.” “[S]tand-alone enquiries and misdirected communications” are not evidence of actual consumer confusion. Especially in electronic formats, such evidence may demonstrate only that consumers were “inattentive or careless, as opposed to being actually confused” about the source of a product. However, there was evidence that some consumers did believe that Healthvana was the company selling Healthvana-brand hand sanitizer, favoring a finding of confusion.

Marketing channels: Sharing the internet as marketing channel wasn’t enough; this factor disfavored likely confusion.

Consumer care: Consumers of Healthvana’s software product “are sophisticated entities such as governments and laboratories who, if Healthvana’s revenues are any indication, pay non-negligible amounts for Healthvana’s services and products.” Telebrands’ consumers, “on the other hand, are not likely to be sophisticated or to exercise a high degree of care when purchasing a relatively inexpensive bottle of hand sanitizer.” Using the least sophisticated consumer as the measure, this factor weighed somewhat in favor of a likelihood of confusion. [This analysis shows the weakness of choosing “least sophisticated party” in all circumstances. That only makes sense if the least sophisticated party is a plausible purchaser of both sets of goods/services. Anyone thinking of contracting with Healthvana—regardless of how careful or careless they were tossing goods into a cart at Wal-Mart—would take a lot more care.]

Intent: Minimally important, and there was no evidence that Telebrands intended to confuse or deceive either its own or Healthvana’s customers. “Although Healthvana makes much of the fact that Telebrands shipped out ‘Healthvana’ labeled bottles even after agreeing to change its branding, the evidence is undisputed that the bottles had already been produced. A de-identification period spanning a matter of weeks hardly constitutes evidence of any bad intent on Telebrands’ part.”

Product line expansion: No evidence of intent to expand; weighed against confusion.

Balancing the factors: Actual confusion weighed in favor of confusion; mark strength, mark similarity, and degree of care weighed slightly in favor of confusion; but the other factors were either neutral or weighed against confusion, and the unrelatedness of the goods weighed “heavily” against likely confusion. Telebrands was entitled to summary judgment. [Surprised? I think it’s really unrelatedness+degree of care used for the more expensive product doing the work.]

False advertising: This analysis is interesting mostly because it makes clear how much higher the causation standards are in §43(a)(1)(B) than in §32/§43(a)(1)(A) analysis. Competition wasn’t required for liability as long as there was commercial injury, including harm to reputation, but injury must be shown to come “as a result of the false statement.”

Although [Healthvana’s] evidence certainly indicates reputational harm to Healthvana, the link between consumer anger and the allegedly false statements is less clear. Healthvana’s First Amended Complaint alleges that Telebrands falsely stated that its version of Healthvana was a “trusted brand since 2015,” had “over 100 million satisfied customers,” that Telebrands’ sanitizer contained an ingredient used in hospitals, and that Telebrands had maintained a website since 2019, when in reality the website went live in 2020.

But Healthvana didn’t identify any complaint related to any of the allegedly false statements.

Cybersquatting:  Healthvana challenged Telebrands’ registration and use of but could not show bad faith:

Healthvana appears to rely on the fact that Telebrands’ website was still operational on April 4, four days after Telebrands voluntarily agreed to change its Healthvana branding. As discussed above, a de-identification period of less than one week hardly demonstrates bad faith or intent. Furthermore, given the court’s trademark analysis, above, Telebrands’ belief that its use of the domain name was lawful was a reasonable one.

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