The U.S. District Court for the District of Delaware recently handed firm client Under Armour a major victory in a trademark infringement and dilution action filed by Chicago-based healthcare consulting firm Healthbox Global Partners, LLC ("HGP"). Healthbox Global Partners, LLC v. Under Armour, Inc., No. 1:16-cv-00146, (D. Del. July 19, 2016).
HGP filed suit alleging trademark infringement, unfair
competition, state dilution, and deceptive trade practice claims
against Under Armour in March 2016, just two months after Under
Armour launched its new connected-fitness offering under the
HEALTHBOX/UA HEALTHBOX mark. HGP
is a VC and consulting firm offering advisory, incubation, and
funding for start-ups and existing businesses in the healthcare
industry and the owner of a 2013 registration for HEALTHBOX
covering such services. Under Armour, on the other hand, is a
sports product company targeting athletes and fitness-minded
consumers. It uses the
HEALTHBOX/UA HEALTHBOX mark to
identify a box containing a "connected fitness system"
with various devices designed to measure aspects of one's
health for sale directly from Under Armour and national retailers,
including Best Buy, Dick's Sporting Goods, and Target.
In its preliminary injunction motion, HGP argued that because
its consulting services are aimed at the healthcare industry,
defendant's products are health oriented, and plaintiff's
HEALTHBOX mark appears on some of the websites of its portfolio
companies, consumers were likely to experience either forward or
reverse confusion. It offered evidence of increased traffic on its
website following the launch of
HEALTHBOX/UA HEALTHBOX, and of a
solicitation letter send from defendant to plaintiff inquiring
about "aligning strategic partners" with HGP clients as
evidence of overlap. HGP sought a recall of all
HEALTHBOX/UA HEALTHBOX products
from store shelves, as well as cessation of the mark pending
conclusion of the case on the merits.
In response, through arguments, factual declarations, and expert
testimony, Under Armour outlined the different meaning of the two
marks in their respective contexts, the conceptual and commercial
weakness of the HEALTHBOX mark in plaintiff's healthcare
market, the relevance of its consistent use of the famous
logo and UA mark on all
product advertising and packaging, the disparate nature of the
parties' actual product and service offerings and trade
channels (healthcare executives looking for advice or financing
versus athletes), the high degree of care exercised by both
parties' consumers, and the varied irreparable and financial
harms it would suffer if forced to recall and rebrand its
product.
Finding that the majority of the governing likelihood-of-confusion factors weighed in Under Armour's favor or were neutral, the court found HGP unlikely to succeed on the merits of its confusion or dilution claims, and denied HGP's motion for preliminary injunction. The court also found that HGP failed to establish the required irreparable harm for a preliminary injunction, let alone that the balance of hardships tipped in its favor.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
