In Tartell v. South Florida Sinus and Allergy Center, Inc., the Eleventh Circuit reversed the district court’s finding that the plaintiff’s personal name had acquired distinctiveness as a trademark and that the defendant infringed his protectible trademark interest in it.
This case arose from an acrimonious split in a medical practice. Since 2011, Drs. Paul Tartell and Lee Mandel practiced medicine under the name SOUTH FLORIDA SINUS AND ALLERGY CENTER. After deciding to terminate their association, Dr. Mandel proceeded to register six domain names with variations of his ex-partner’s name, such as ptartell.com, paultartell.com, among others, and configuring those domain names to redirect to Dr. Mandel’s own web page. Additionally, Dr. Mandel purchased “Paul Tartell” and “Paul Tartell, MD” as Google Adwords, which caused his own web page to appear as an advertisement whenever someone searched Dr. Tartell’s name on Google.
After Dr. Tartell learned of his ex-partner’s actions, he filed a complaint against Dr. Mandel personally and against his corporations, asserting five causes of action: federal cybersquatting under 15 USC §1125(d); false designation of origin, unfair competition, and false advertising under 15 USC §1125(a); and unauthorized publication of name and likeness under Fla. Stat. §540.08.
The district court found that Dr. Tartell had a protectible trademark interest in his personal name because it had acquired secondary meaning within South Florida based on the length and prevalence of Dr. Tartell’s use of his name in conjunction with his medical services. The district court entered a judgment in favor of Dr. Tartell for cybersquatting, false designation, unfair competition, and unauthorized publication. Dr. Mandel appealed.
The Court quickly held that the plaintiff’s personal name was not distinctive enough to function as a trademark absent secondary meaning. The parties more or less stipulated as much. The main issue on appeal, therefore, was whether Dr. Tartell’s personal name has acquired distinctiveness as a trademark.
The Circuit explained that “acquired distinctiveness” or “secondary meaning” permits a descriptive term to, “through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer” and that 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.”
To determine whether a mark has acquired distinctiveness, a plaintiff may use direct evidence (such as consumer surveys) or circumstantial evidence. In the Eleventh Circuit, under Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512–13 (11th Cir. 1984), courts look to the following factors to determine if circumstantial evidence establishes that a mark has acquired distinctiveness: (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 owner in promoting a conscious connection between the name and the business; and (4) the degree of actual recognition by the public that the name designates the product or service.
The plaintiff had produced no direct evidence of secondary meaning. In analyzing the plaintiff’s circumstantial evidence, the Court quickly disposed of his claim that his academic lectures and articles (using his name) caused his name to acquire secondary meaning as a trademark – partly because these occurred many years ago, but mostly because the target audience for the lectures were not the relevant consumers of the plaintiff’s medical services, i.e., potential patients.
The Court found that Dr. Tartell produced no substantial evidence relevant to the fourth Conagra factor, “the degree of actual recognition by the public.” The only evidence related to this factor was the plaintiff’s own testimony that some patients told him that they selected him because of his articles and his advertisements at the Bank Atlantic Center at Florida Panthers’ games. The plaintiff stated that he heard that “everybody that [went to the Bank Atlantic Center] knew that [he was] the voice doctor.” The plaintiff’s self-serving testimony was deemed insufficient to support a claim of actual trademark recognition by the public.
The plaintiff further offered evidence of extensive advertisements to support his claim that his personal name had acquired distinctiveness as a trademark. However, the Court noted that Dr. Tartell practiced under the name “SOUTH FLORIDA SINUS AND ALLERGY CENTER” for most of the 13 years before the lawsuit, which was in fact the primary mark by which his services were identified during this period. Dr. Tartell produced no evidence that his use of his name was unique as compared to how another doctor would use his name. “The nature and extent of advertising” failed to establish that the plaintiff’s name had acquired secondary meaning. Although Dr. Tartell’s name appeared on numerous advertisements and other promotional material, his name was not displayed prominently in the manner of a trademark. Thus, Dr. Tartell’s claim to have a protectible trademark interest in his personal name failed, and the district court’s ruling was reversed.
One interesting question is how Dr. Tartell’s claims would have fared if they arose under 15 USC §1052(a), §2(a) of the Lanham Act. While most people are familiar with the normal protections afforded the brand names of products and services from likelihood of confusion, fewer are familiar with protections afforded the names of natural persons or institutions, who do not necessarily sell products or services. While the traditional trademark law in the United States focuses on the goals of protecting the public from source confusion resulting from trade symbols and protecting the trademark owner’s investment in its trademark as property, §2(a) of the Lanham Act protects natural persons and institutions from other persons seeking to register marks reflecting their names or identities, even where those names or identities are not used to sell related goods or services, or any goods and services at all. Section 2(a) does not rely on the trademark test of a likelihood of confusion or require secondary meaning in one’s name. Under the facts presented in this case, §2(a) may have prevented the registration of marks using the name “Tartell”, which remains small comfort to Dr. Tartell in seeking to stop Dr. Mandel from registering domain names with variations of his ex-partner’s name or using “Paul Tartell” and “Paul Tartell, MD” as Google Adwords.