4th Circuit Decision on Likelihood of Confusion Factors

In a relatively straightforward decision, the 4th Circuit recently affirmed summary judgment of non-infringement in CareFirst of Maryland, Inc. v. First Care, P.C., No. 04-2493 (4th Cir. Jan. 11, 2006). In CareFirst, the plaintiff was a a large HMO and the defendant was a small group of primary care doctors. The 4th Circuit, in performing its analysis, primarily rested its decision on the following factors:

• Lack of proof that the plaintiff's mark was strong, despite $50 million in advertising over the last 10 years, having millions of customers covered by plaintiff's health plan, and hundreds of press mentions. The court heavily discounted this circumstantial evidence of strength because the CareFirst mark almost always appeared together with the distinctive Blue Cross Blue Shield design.
• The court also discounted the fact that the marks at issue used the same two words, although in different order, for similar reasons: the fact that the CareFirst mark almost always appeared with the distinctive Blue Cross Blue Shield design "serve[s] to lessen any confusion that might otherwise be caused by the textual similarity between the two marks."
• The court also found persuasive that the two marks had coexisted for 9 years without any known instances of actual confusion. The court also found that plaintiff's survey failed to show enough confusion to be probative.