Doctor Cybersquatting Dispute: Evidence Required For Proving Up Secondary Meaning in a Name

In the recent decision of Tartell v South Florida Sinus and Allergy Center et al (11th Circuit 2015)(Available Here), the Court reversed the district court’s decision in favor of Dr. Paul Tartell. This case stemmed from an apparent aggrieved set of doctors (Dr. Paul Tartell and Dr. Lee Mandel) who practiced together for 13 years. Dr. Tartell alleges, that shortly after the business relationship ended, that Dr. Mandel registered six domain names with different variations of Dr. Tartell’s name, which included redirecting those domain names to Mandel’s new practice website and the purchase of Google Adwords in connection with Dr Tartell’s name. As a result, Dr. Tartell sued for cybersquatting 15 U.S.C. 1125(d), false designation of origin and unfair competition. The day after the lawsuit was filed, Dr Mandel cancelled the domain registrations. Interestingly the 11th Circuit echoed and reiterated that the lower court recognized the apparent ridiculousness of the parties.  “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.’” The District Court entered judgment in favor of Dr. Tartell, of $1,000 statutory damages for each claim of cybersquatting.

The Court focused its decision on whether Dr. Tartell adequately proved that his name acquired secondary meaning. The Court found that the District Court made no specific findings as to the factors that should be considered in whether a mark has acquired secondary meaning. Specifically, the Court focused on the Conagra, Inc. v. Singleton, 743 F.2d 1508,(11th Cir. 1984) factors to determine if circumstantial evidence could esatblish that a mark acquired secondary meaning. Those factors include: (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 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.

Ultimately, the Court found that the lower court erred in finding that Dr. Tartell 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.’” The Court explained that evidence of Dr. Tartell’s reputation amongst his peers was not relevant for secondary meaning amongst consumers. The Court focused on the fourth Conagra factor, namely the degree of actual recognition by the public. “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…’”

The Court reversed the lower court decision and found judgment in favor of Dr. Mandel.

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