trademark use is easier with a suggestive mark than with a descriptive one

Medical Depot, Inc. v. Med Way US, Inc., --- F.Supp.3d ----, 2025 WL 948334, No. 22-CV-01272 (OEM) (SIL) (E.D.N.Y. Mar. 28, 20

This case focuses on trademark “use.” The parties are medical supply companies who use similar marks—“Med-Aire” and “MEDAIR®”—to brand the medical air mattresses they sell.

Plaintiff, dba Drive, has sold air mattresses using the “Med-Aire” mark since 2007. From 2007 to 2023, Drive’s “Med-Aire” mattresses amassed gross sales of $160 million. “Med-Aire” was used on at least some of Drive’s external packaging for its medical air mattress products intermittently since 2007. Drive used the ™ symbol in connection with its “DRIVE” trademark for its “Med-Aire” mattress products between 2007 and 2020. But it didn’t use the ™ symbol in connection with its “Med-Aire” mark until 2020, two years after Med Way started using its “MEDAIR®” mark. “Med-Aire” appeared on at least certain shipping labels for Drive’s air mattress products, alongside product descriptions in the same font, color, size, location, typeset, and style as the rest of the product descriptions, at least intermittently, since 2007. “Med-Aire” appeared inside and on the cover of a user manual included with at least some “Med-Aire” air mattress systems, and on the face plate of the air pump that accompanied the mattress system, which is sold separately. “Med-Aire” also appeared in at least some of Drive’s catalogs and brochures since “as early as 2007.” Drive also distributed monthly promotional “Med-Aire” product catalogs. And “Med-Aire” was displayed in flyers at retailers of “Med-Aire” products since 2011, at trade shows since 2007, and on websites since at least as early as 2009.

Med Way, meanwhile, displayed MEDAIR on its goods in interstate commerce since at least as early as April 1, 2019. Med Way stamps “MEDAIR®” on its medical air mattresses and pumps. In late 2019, Med Way hired counsel to conduct a trademark clearance search for the term “MEDAIR,” and variations thereof, which did not reveal Drive’s “Med-Aire” mark. It filed a use-based application for “MEDAIR” in connection with “air mattresses with pump, for medical purposes” with a first use date of April 1, 2019; it was registered in 2020.

Drive and its affiliates have 67 federally registered trademarks. Drive waited until July 8, 2020, to do a clearance search for the term; having done so, it found MEDAIR and then tried to register Med-Aire for “[m]edical products, namely, therapeutic mattresses” and the like. The PTO ultimately suspended Drive’s application pending disposition of Med Way’s prior-filed application; Drive’s cancellation petition is suspended pending the outcome of this litigation.

The court found that Med-Aire was suggestive because “it requires some imagination and some thought” to understand the kind of goods it refers to; it was obviously medical, but it wasn’t obviously a mattress. This is the wrong standard because it’s only half the question: the appropriate inquiry is, knowing the goods, does it require imagination to connect the goods with the mark? The classic Abercrombie spectrum gets its name from a case in which the court found SAFARI distinctive for some apparel items but not others. Noodles would be descriptive for a restaurant, but arbitrary for a furniture store. Courts often get this wrong, but they shouldn’t. Here, the court was apparently encouraged in its error by both sides.

The court then turned to trademark use. Citing Alexandra J. Roberts, Trademark Failure to Function, 104 IOWA L. REV. 1977 (2019), the court stated: “To merit protection, a trademark must be ‘used in a trademark way,’ meaning that it ‘must appear where consumers expect a trademark to appear, and it must be sufficiently set off from the surrounding text and images to attract notice.’” The court also looked to Jack Daniel’s and the TTAB. A mark “must be used in such a manner that its nature and function [as a trademark] are readily apparent and recognizable without extended analysis or research and certainly without legal opinion.” Scholastic Inc. v. Speirs, 28 F. Supp. 2d 862 (S.D.N.Y. 1998), aff’d, 199 F.3d 1323 (2d Cir. 1999) (cleaned up).

“Common indicators suggesting that a word or phrase might be viewed by the public as a trademark include large font relative to surrounding text, all capital letters or initial capitals, distinctive print style, use of color, and prominent position on a label or in an advertisement. In short, a mark must stand out from the surrounding text.” Advertising expenditures can also be circumstantial evidence, as can sales. (Though you still need to know which part of the sales experience counts as a trademark!)

Conceptual strength also matters.  “For example, where a mark is fanciful, ‘even though [the mark] may be embedded in other text, there is no danger that [the mark] will be interpreted as merely descriptive or informational matter ... As such, its only purpose is to provide a unique identifier to a product that is otherwise identified only by a generic name and technical explanatory, information’” (citing In Re Eli Lilly & Co., 2015 WL 4241138 (T.T.A.B. 2015)).

Using these principles, plaintiff used “Med-Aire” as a trademark. “Med-Aire” “consistently appears as the first word or phrase in product descriptions, uses initial capital letters, appears at the product point of sale listings, appears in advertising and promotional materials, is referred to by consumers as ‘Med-Aire’ in voluminous consumer communications, is suggestive, and products bearing the mark have amassed millions of dollars in sales, all of which supports finding that the mark has been used as a source identifier.”

The court distinguished Jaymo’s Sauces LLC v. Wendy’s Co., 19-CV-01026, 2021 WL 4712685, at *4 (C.D. Ill. Oct. 8, 2021), which held that “S’Awesome” was not an adequate source identifier for sauce in part because of the term’s nonprivileged placement, the sauce label’s emphasis on other (descriptive) terms, and the comparatively small, plain font of “S’Awesome,” as well as marketing materials that featured only “occasional” use of the “S’Awesome” term. Here, Drive used “Med-Aire” as an individual product mark and also used a house mark on its products; that’s fine. “Drive does not emphasize other non-trademarked phrases, images, or terms relative to ‘Med-Aire’ on labels and in promotional materials,” and frequently used “Med-Aire” in promotional materials.

The lack of brand awareness surveys or marketing experts was not dispositive, nor was it dispositive that consumers often refer to “Drive” mattresses or product numbers. Drive also submitted evidence of consumer communications about “Med-Aire” products, demonstrating that consumers did perceive “Med-Aire” as a source identifier.

“Size, location, and other characteristics may be determinative for trademark use for descriptive terms that have acquired secondary meaning,” but were less important for suggestive terms.

With nothing else in serious dispute, Drive had priority and showed likely confusion as well as its entitlement to cancellation of Med Way’s registration.

But its state law unfair competition claim, which required bad faith, failed because Med Way presented evidence that it relied on a trademark clearance search and advice from counsel. There was also no fraud on the PTO.

Med Way’s dilution counterclaim also failed because Drive was the senior user and because Med Way’s mark was not famous.

State law false advertising counterclaims also failed for want of public injury. “Med Way’s evidence consists of a reference to ‘mediocre reviews,’ but many products receive ‘mediocre reviews,’” and anyway there was no showing of how Med Way’s mattress reviews compared.  

The court declined to award disgorgement. There was no finding of extreme difference in quality or bad faith, or even that Med Way benefited from its infringement. Even though Med Way’s principal physically examined Drive mattresses to see what a competitor’s mattresses looked like, “a person could reasonably examine the physical mattress alone—without the point of sale listing, or the user manual, or an advertising flyer—and not encounter the ‘Med-Aire’ mark” based on Drive’s own exhibits. And, though Med Way continued its use after Drive’s objection, Med Way’s CEO and Med Way’s attorneys expressed a genuine belief that although Drive used “Med-Aire,” it was not the senior user of the mark.

Although Drive didn’t delay in protecting its rights or have unclean hands, the balance of the equitable factors weighed against profit disgorgement. Instead, it was entitled to a permanent injunction.