Carefirst of MD Inc v. First Care, P.C. , 434 F.3d 263 ( 2006 )

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
CAREFIRST OF MARYLAND, 
INCORPORATED, d/b/a Carefirst Blue
Cross/Blue Shield,
Plaintiff-Appellant,
v.  No. 04-2493
FIRST CARE, P.C.; FRED C. CRUM,
M.D.; MANSUKHLAL R. RAMOLIA,
M.D.; FAITH E. DEJAO, M.D.,
Defendants-Appellees.

Appeal from the United States District Court
for the Eastern District of Virginia, at Norfolk.
Robert G. Doumar, Senior District Judge.
(CA-04-191-2)
Argued: October 25, 2005
Decided: January 11, 2006
Before MOTZ, TRAXLER, and SHEDD, Circuit Judges.
Affirmed by published opinion. Judge Motz wrote the opinion, in
which Judge Traxler and Judge Shedd joined.
COUNSEL
ARGUED: Christopher Michael Collins, McLean, Virginia, for
Appellant. Jason C. Kravitz, NIXON PEABODY, L.L.P., Boston,
Massachusetts, for Appellees. ON BRIEF: Craig L. Mytelka,
2 CAREFIRST OF MARYLAND v. FIRST CARE
Andrew G. Howell, WILLIAMS MULLEN, Virginia Beach, Vir-
ginia; Barth X. deRosa, STEVENS, DAVIS, MILLER & MOSHER,
L.L.P., Washington, D.C., for Appellant. John Franklin, III, Brian N.
Casey, TAYLOR & WALKER, P.C., Norfolk, Virginia; Kristin
Dulong Kuperstein, NIXON PEABODY, L.L.P., Boston, Massachu-
setts, for Appellees.
OPINION
DIANA GRIBBON MOTZ, Circuit Judge:
CareFirst of Maryland, Inc., a health maintenance organization
associated with Blue Cross Blue Shield, brought this trademark
infringement and dilution action against First Care, P.C., a small
group of family care physicians located in Southeastern Virginia. The
district court granted summary judgment to First Care. We affirm.
I.
The CareFirst mark first appeared in 1977, when Metropolitan Bal-
timore Healthcare began marketing prepaid health care plans under
the CareFirst name to approximately 3,000 of its Maryland members.
In 1989 the then-owner of the CareFirst mark registered "CARE-
FIRST" as a trademark, service mark, and collective membership
mark with the United States Patent and Trademark Office. Blue Cross
and Blue Shield of Maryland acquired the CareFirst mark in 1991.
Approximately 250,000 members then held CareFirst plans, but by
1997 that number had declined to 50,000.
In late 1997, Blue Cross and Blue Shield of Maryland agreed with
other Blue Cross Blue Shield affiliates to operate jointly and collec-
tively under the CareFirst mark. This umbrella organization has spent
millions of dollars advertising its mark; in all of its advertisements,
it denominates itself "Carefirst BlueCross BlueShield," often accom-
panied by the distinctive Blue Cross Blue Shield logo. By the time
CareFirst initiated the present action in March 2004, CareFirst had
become the largest health maintenance organization in the mid-
Atlantic states with 3.2 million members. At least eighty percent of
CAREFIRST OF MARYLAND v. FIRST CARE 3
these members reside in CareFirst’s direct service area, which con-
sists of Maryland, Delaware, the District of Columbia, and Northern
Virginia.
First Care is a Virginia professional corporation of primary care
physicians. In late 1994, it registered its corporate name with the
state. Since 1995, First Care has operated using the "FIRST CARE"
mark. First Care offers traditional family medical services in Ports-
mouth and Chesapeake, Virginia, which are close to but outside of
CareFirst’s direct service area. Approximately 2,500 CareFirst mem-
bers reside in First Care’s trade area. First Care currently consists of
eleven physicians operating out of seven offices; at its height, it had
twelve physicians and nine offices.
First Care’s name and a description of its services appeared several
times in a series of trademark search reports commissioned by Care-
First from January 1996 through November 2000. CareFirst, however,
took no action against First Care until 2004, when First Care submit-
ted a deposition in a separate trademark infringement suit that Care-
First was pursuing against another party.
On February 13, 2004, after determining that at least ninety Care-
First members had received medical services from First Care, Care-
First sent First Care a cease-and-desist letter. When First Care refused
to give up use of its mark, CareFirst brought this action, alleging that
since 1995 First Care had infringed on and diluted CareFirst’s trade-
mark, see 15 U.S.C. §§ 1114(1), 1125(a), 1125(c) (2000), and seeking
$28 million in damages. In April 2004, First Care applied for state
registration of its mark in Virginia.
After extensive discovery, the parties filed cross-motions for sum-
mary judgment. The district court granted summary judgment to First
Care. See CareFirst of Md., Inc. v. First Care, P.C., 350 F. Supp. 2d
714, 726 (E.D.Va. 2004). The court found that CareFirst had failed
to show that a "likelihood of confusion existed between [the] First-
Care and CareFirst" marks and so rejected CareFirst’s infringement
claim. Id. Additionally, the court concluded that CareFirst had failed
to offer evidence that its mark "was a famous and distinctive mark
prior to 1995," when First Care began operations, and for this reason
rejected CareFirst’s dilution claim. Id.4 CAREFIRST OF MARYLAND v. FIRST CARE
We review the district court’s grant of summary judgment de novo.
Thus, although First Care argues otherwise, we need not defer to fac-
tual findings rendered by the district court. See Patsy’s Brand, Inc. v.
I.O.B. Realty, Inc., 317 F.3d 209, 215-16 (2d Cir. 2003); Seamons v.
Snow, 206 F.3d 1021, 1026 (10th Cir. 2000).
II.
To demonstrate trademark infringement under the Lanham Act, a
plaintiff must prove, first, that it owns a valid and protectable mark,
and, second, that the defendant’s use of a "reproduction, counterfeit,
copy, or colorable imitation" of that mark creates a likelihood of con-
fusion. 15 U.S.C. § 1114(1)(a); Petro Stopping Ctrs., L.P. v. James
River Petroleum, Inc., 130 F.3d 88, 91 (4th Cir. 1997). Indisputably,
CareFirst has established the first element; because more than five
years have passed since its registration of the CareFirst mark with the
United States Patent and Trademark Office, the protectability of its
mark has become incontestable. See 15 U.S.C. §§ 1065, 1115(b)
(2000); Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
191 (1985). Only the second element — likelihood of confusion —
is disputed here.
Likelihood of confusion exists if "the defendant’s actual practice is
likely to produce confusion in the minds of consumers about the ori-
gin of the goods or services in question." KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 125 S. Ct. 542, 547 (2004); see also
Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 318 (4th
Cir. 1992). In conducting the likelihood-of-confusion analysis, a court
does not "indulge in a prolonged and minute comparison of the con-
flicting marks in the peace and quiet of judicial chambers, for this is
not the context in which purchasers are faced with the marks." 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competi-
tion § 23:58 (4th ed. 2005) [hereinafter McCarthy]. Rather, we look
to how the two parties actually use their marks in the marketplace to
determine whether the defendant’s use is likely to cause confusion.
What-A-Burger of Va., Inc. v. Whataburger, Inc., 357 F.3d 441, 450
(4th Cir. 2004).1
1
CareFirst argues that infringement of its collective membership mark
only requires likelihood of confusion among its members. This sugges-
CAREFIRST OF MARYLAND v. FIRST CARE 5
To determine if a likelihood of confusion exists, we look to (1) the
strength or distinctiveness of the plaintiff’s mark as actually used in
the marketplace; (2) the similarity of the two marks to consumers; (3)
the similarity of the goods or services that the marks identify; (4) the
similarity of the facilities used by the markholders; (5) the similarity
of advertising used by the markholders; (6) the defendant’s intent; and
(7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522,
1527 (4th Cir. 1984). Not all of these factors are of equal importance,
"nor are they always relevant in any given case." Anheuser-Busch,
962 F.2d at 320. However, evidence of actual confusion is "often par-
amount" in the likelihood-of-confusion analysis, Lyons P’ship, L.P. v.
Morris Costumes, Inc., 243 F.3d 789, 804 (4th Cir. 2001). It certainly
is of critical importance in the case at hand, as evidenced by the atten-
tion given to it by the parties. Accordingly, we turn first to analysis
of that factor.
A.
CareFirst concedes that the only evidence it has proffered of actual
confusion is a survey by Dr. Myron Helfgott, which CareFirst com-
missioned for this litigation.2 The Helfgott survey interviewed 130
people by telephone, drawn from a list of CareFirst members in or
near First Care’s place of business. In the unaided portion of the sur-
vey, the surveyors asked the respondents whether they had heard of
tion is contrary to the rule that "[l]ikelihood of confusion of collective
marks with other types of marks is determined according to the standard
rules of trademark law." 3 McCarthy, supra, § 19:101. The cases cited
by CareFirst do not hold to the contrary. For example, In re Code Con-
sultants, Inc., 60 U.S.P.Q.2d 1699 (T.T.A.B. 2001), merely states that the
likelihood-of-confusion analysis for collective membership marks should
not be limited to purchasers; it nowhere suggests that this analysis should
be limited to members instead. Indeed, the decision notes that "‘relevant
persons’ would encompass all who might know of their services." Id. at
1701 (quoting Elec. Design & Sales v. Elec. Data Sys., 954 F.2d 713,
716 (Fed. Cir. 1992)).
2
We note at the outset that Dr. Helfgott never intended that his survey
show actual confusion; indeed, he was careful to note that "this is a like-
lihood of confusion study, and not a study of actual confusion." How-
ever, our criticism of the Helfgott survey applies regardless of how the
survey is characterized.
6 CAREFIRST OF MARYLAND v. FIRST CARE
First Care, whether they thought First Care was related to or affiliated
with another health organization, and whether they thought First Care
needed permission from another health organization to use its name.
The surveyors then repeated these unaided questions, focusing on
CareFirst on this second pass. In the aided portion of the survey, the
surveyors asked the respondents whether they thought First Care and
CareFirst were related to or affiliated with each other.
The Helfgott survey does not supply evidence of actual confusion.
At best, it shows merely a de minimis level of confusion. Only two
of the 130 respondents had both heard of First Care and thought that
it was related to or affiliated with CareFirst. One additional respon-
dent had not heard of First Care but, judging by its name alone,
thought that it might be affiliated with CareFirst. Assuming that all
three of these respondents were confused, the survey only shows a
confusion rate of 2 percent, hardly a sufficient showing of actual con-
fusion.
CareFirst argues that two other groups of respondents should also
be considered actually confused: 28 respondents who stated that First
Care was affiliated with Blue Cross Blue Shield; and 16 separate
respondents who answered "yes" when asked in the aided portion of
the survey whether CareFirst and First Care were related. We do not
believe that the responses of either of these groups show actual confu-
sion between CareFirst and First Care. CareFirst offers no evidence
besides mere speculation that when the 28 respondents indicated that
First Care was affiliated with "Blue Cross Blue Shield," they were
actually referring to CareFirst. Indeed, the only evidence on this point
suggests the opposite inference: at least two other respondents who
indicated First Care’s affiliation with "Blue Cross Blue Shield" speci-
fied that they were thinking of Anthem Blue Cross Blue Shield, and
both parties agree that First Care is part of Anthem’s network. Simi-
larly, CareFirst offers no evidence that the 16 aided respondents were
confused in a way relevant to the likelihood-of-confusion analysis.
CareFirst’s counsel admitted at oral argument that CareFirst covers
the expenses of members who receive medical treatment at First Care
clinics, and we know that CareFirst has in fact done so for at least
ninety of its members in Southeastern Virginia. The two entities
therefore are related, and no evidence suggests that the aided respon-
CAREFIRST OF MARYLAND v. FIRST CARE 7
dents’ answers reflect anything other than this proper — and not con-
fused — understanding of the relationship between the parties.
Because we conclude that the Helfgott survey has little probative
value, CareFirst lacks any evidence of actual confusion. Although
proof of actual confusion is not necessary to show a likelihood of con-
fusion, the absence of any evidence of actual confusion over a sub-
stantial period of time — here, approximately nine years — creates
a strong inference that there is no likelihood of confusion. See Scotch
Whisky Ass’n v. Majestic Distilling Co., Inc., 958 F.2d 594, 598 (4th
Cir. 1992). This important factor thus weighs heavily against Care-
First.
B.
We next consider the strength of the plaintiff’s mark, a factor that
CareFirst emphasizes. The strength of a mark is the degree to which
a consumer in the relevant population, upon encountering the mark,
would associate the mark with a unique source. "The ‘strength’ of the
trademark is evaluated in terms of its conceptual strength and com-
mercial strength." Goto.com, Inc. v. Walt Disney Co., 202 F.3d 1199,
1207 (9th Cir. 2000).3 Measuring a mark’s conceptual or inherent
3
CareFirst argues that its incontestable registration conclusively estab-
lishes the strength of its mark. That contention "confuses the issue of a
trademark’s validity with the separate inquiry into a mark’s strength for
purposes of the likelihood of confusion determination." Petro Stopping
Ctrs., L.P. v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir.
1997). "[I]ncontestability alone does not establish that the trademark is
strong and therefore likely to cause the consumer confusion necessary for
a finding of trademark infringement." Lone Star Steakhouse & Saloon,
Inc. v. Alpha of Va., Inc., 43 F.3d 922, 934 (4th Cir. 1995) (citing cases).
Moreover, although the inquiry into whether a mark has secondary
meaning sufficient to be protectable under the Lanham Act is similar to
the commercial-strength inquiry, see 2 McCarthy, supra, § 11:83, the
two are analytically independent. Thus, like the plaintiff in Petro, see
130 F.3d at 92-94, although CareFirst need not show secondary meaning,
it still must demonstrate commercial strength. See Therma-Scan, Inc. v.
Thermoscan, Inc., 295 F.3d 623, 632 (6th Cir. 2002) ("Even where a
trademark is incontestable . . . the significance of its presumed strength
will depend upon its recognition among members of the public.").
8 CAREFIRST OF MARYLAND v. FIRST CARE
strength focuses on the linguistic or graphical "peculiarity" of the
mark, Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir.
1990), considered in relation to the product, service, or collective
organization to which the mark attaches. See U.S. Search, LLC v. U.S.
Search.com Inc., 300 F.3d 517, 524 (4th Cir. 2002). The commercial-
strength inquiry, by contrast, looks at the marketplace and asks "if in
fact a substantial number of present or prospective customers under-
stand the designation when used in connection with a business to refer
to a particular person or business enterprise." See Perini, 915 F.2d at
125 (quoting Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301
F.2d 156, 160-61 (4th Cir. 1962)).
CareFirst focuses on its registered mark "CareFirst," standing
alone, and argues that this mark is both conceptually and commer-
cially strong. The record evidence renders this argument untenable.
CareFirst contends that its registered mark "CareFirst" is conceptu-
ally strong simply because the text "CareFirst" is assertedly "sugges-
tive," as defined by Judge Friendly’s classic delineation in
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11
(2d Cir. 1976). The designation of "CareFirst" as "suggestive" may or
may not be correct, but this designation does not resolve the mark’s
conceptual strength. This is so because many third parties in the
health care field have previously used in their own marks the text of
the CareFirst mark. "[T]he frequency of prior use of [a mark’s text]
in other marks, particularly in the same field of merchandise or ser-
vice," illustrates the mark’s lack of conceptual strength. Pizzeria Uno,
747 F.2d at 1530-31; see also First Sav. Bank, F.S.B. v. First Bank
Sys., Inc., 101 F.3d 645, 654 (10th Cir. 1996); Amstar Corp. v. Domi-
no’s Pizza, Inc., 615 F.2d 252, 259 (5th Cir. 1980). "A strong trade-
mark is one that is rarely used by parties other than the owner of the
trademark, while a weak trademark is one that is often used by other
parties." Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d
1527, 1533 (10th Cir. 1994) (quoting Exxon Corp. v. Tex. Motor
Exch., 628 F.2d 500, 504 (5th Cir.1980)).
Here, the record undeniably reveals substantial third-party use of
the words "Care," "CareFirst," "First," and "First Care" in the health
care industry. CareFirst’s own Thomson & Thomson trademark
search reports state that many health-care-related businesses across
CAREFIRST OF MARYLAND v. FIRST CARE 9
the country use these marks. In addition, First Care has submitted
dozens of web page print-outs from health-care-related businesses
named CareFirst or First Care, as well as an investigator’s report con-
firming that many businesses with these names are currently active.
Cf. U.S. Search, 300 F.3d at 525 (finding a mark "generic, or at most,
descriptive" based on web page print-outs, Thomson & Thomson
trademark search reports, media references, and other evidence of
common usage). If the CareFirst mark were truly a distinctive term,
it is unlikely that so many other businesses in the health care industry
would independently think of using the same mark or similar variants
of it. That so many health care businesses have denominated them-
selves CareFirst or First Care indicates that "CareFirst" is not a dis-
tinctive or unusual term in the industry, and hence not conceptually
strong.
This evidence of extensive third-party use also demonstrates that
CareFirst’s mark lacks commercial strength in many parts of the
country. In addition, we find unpersuasive the other evidence that
CareFirst has adduced to show the commercial strength of its regis-
tered mark standing alone. CareFirst points to the $50 million it has
spent on advertising in the mid-Atlantic region over the last decade,
its membership of several million individuals, and hundreds of press
articles that mention its mark. Most of this evidence, however, does
not involve CareFirst’s registered mark standing alone. The record
reveals that, at least since 1998, company policy has mandated that
CareFirst’s registered mark — "CareFirst" — always appear in public
coupled with "Blue Cross Blue Shield." This joint branding — the
subject of CareFirst’s multi-million-dollar publicity campaign for the
last several years — has appeared in all advertisements as well as in
provider directories and marketing materials. In addition, CareFirst’s
registered mark, accompanied by the Blue Cross Blue Shield lan-
guage, is usually presented in a corporate logo with a distinctive type-
face and a graphic of a blue cross and shield. This sophisticated logo
appears to be the standard configuration that CareFirst has used to
communicate with the millions of new members it has attracted in the
last several years.
CareFirst’s evidence of strength thus consists almost entirely of
materials that pair the CareFirst mark with the Blue Cross Blue Shield
10 CAREFIRST OF MARYLAND v. FIRST CARE
language, usually in a sophisticated corporate logo.4 This evidence
does not show that CareFirst’s registered mark, standing alone, has
conceptual or commercial strength.
C.
The public face of CareFirst’s mark is also relevant in evaluating
another factor — the similarity of the parties’ marks. To determine
whether two marks are similar, "we must examine the allegedly
infringing use in the context in which it is seen by the ordinary con-
sumer." Anheuser-Busch, Inc., 962 F.2d at 319; see also Restatement
(Third) of Unfair Competition § 21(a)(I) (1995). The two marks at
issue in this case are mirror images of one another; thus, the bare text
of the two is similar. But because the likelihood-of-confusion analysis
looks to the actual use of competing marks, a comparison of the texts
of the two marks alone is insufficient if the marks have different
appearances in the marketplace. See Luigino’s, Inc. v. Stouffer Corp.,
170 F.3d 827, 830 (8th Cir. 1999); Elvis Presley Enters., Inc. v.
Capece, 141 F.3d 188, 198 (5th Cir. 1998).
4
CareFirst seeks to counter this inevitable conclusion by noting that its
mark appears unadorned and without the Blue Cross Blue Shield lan-
guage in unsolicited press accounts and word-of-mouth referrals, and that
it promoted its name for 24 years without the Blue Cross Blue Shield
language. This argument is unpersuasive. Every mark will appear in pub-
lic in a variety of formats, and companies frequently change the public
presentation of their marks. In considering the appearance of a mark for
purposes of the likelihood-of-confusion analysis, we must weigh more
heavily the predominant manner in which the contemporary public per-
ceives the mark. For the last decade, the CareFirst mark coupled with the
Blue Cross Blue Shield language and logo has been the subject of $54.5
million in advertising and promotion in a wide variety of media and has
been attached to approximately 12 million newsletters annually. The
impact of this voluminous, expensive campaign decidedly outweighs
unsolicited press accounts and verbal referrals. Furthermore, CareFirst
changed the public presentation of its mark to include the Blue Cross
Blue Shield text and logo at least seven years ago; its previous marketing
of the CareFirst mark standing alone reached a relatively small number
of people compared to the millions exposed to its joint brand during the
last few years of explosive growth. The record thus shows that the Care-
First mark, standing alone, no longer has a significant presence with the
contemporary public.
CAREFIRST OF MARYLAND v. FIRST CARE 11
The two marks at issue here have very different appearances in the
marketplace because the CareFirst mark is almost always paired with
the Blue Cross Blue Shield language, while the First Care mark is
always presented by itself, or at most with the suffix "P.C." In con-
trast to the accouterments surrounding CareFirst’s mark in its public
appearances, First Care presents its mark plainly and without any
graphics.
If one of two similar marks is commonly paired with other mate-
rial, that pairing will serve to lessen any confusion that might other-
wise be caused by the textual similarity between the two marks. See,
e.g., Autozone, Inc. v. Tandy Corp., 373 F.3d 786, 797 (6th Cir.
2004); Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 581-
82 (2d Cir. 1991); Amstar Corp., 615 F.2d at 261. This effect is most
significant when, as here, the allegedly infringed mark, "CareFirst,"
has little independent strength. Because CareFirst’s registered mark is
weak, consumers encountering "CareFirst BlueCross BlueShield," on
the one hand, and "First Care," on the other, are more likely to focus
on the differences between the two, particularly when the most salient
difference — the addition of "BlueCross BlueShield" — is itself a
prominent mark.5 See 3 McCarthy, supra, § 23:48; cf. Duluth News-
Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 1097 (8th Cir. 1996)
(conducting comparison of marks using "Duluth News-Tribune"
rather than "News-Tribune" alone because "News-Tribune" was a
weak mark). Thus, the substantial differences in the public presenta-
tions of these marks significantly reduce the likelihood of confusion,
notwithstanding their textual similarity. See Petro, 130 F.3d at 94(finding two uses of "Petro" not confusing due to the marks’ different
colors, different accompanying words, and different graphics).
5
Indeed, CareFirst’s survey suggests that its own members strongly
identify CareFirst with "BlueCross BlueShield" rather than with "Care-
First." When asked to give the name of their health care company, 44
percent of the CareFirst members surveyed said their insurance came
from "BlueCross BlueShield"; 10 percent answered "CareFirst BlueCross
BlueShield"; and only 10 percent answered "CareFirst" alone. These
responses suggest that even among CareFirst’s own members, the Blue
Cross Blue Shield language is more distinctive than the CareFirst mark.
12 CAREFIRST OF MARYLAND v. FIRST CARE
D.
As with the similarity of the marks, we measure the similarity of
services with respect to each party’s actual performance in the mar-
ketplace. See Anheuser-Busch, 962 F.2d at 319.6 Although this factor
does not particularly assist First Care’s defense, neither does it aid
CareFirst.
The services offered by the parties here are no closer than the ser-
vices we found dissimilar in Petro. The defendant in that case only
sold fuel, while the plaintiff offered multiple other services in addi-
tion to selling fuel. Petro, 130 F.3d at 95. We held that despite this
overlap, the parties offered dissimilar services. Id. Here, the actual
services offered by the parties do not even overlap. First Care only
offers direct medical services to individuals. CareFirst does not;
rather, it contracts with participating providers who agree to treat
CareFirst members.
But we recognize that in Petro we were reviewing a district court’s
factual findings after trial and so applied a more deferential standard
of review in reaching our conclusion about dissimilarity of services.
Id. at 91-92. Thus, we do not believe that Petro mandates a holding
that the services offered by CareFirst and First Care are so dissimilar
as to militate against a finding of likelihood of confusion. Based on
the record before us, however, we cannot hold that CareFirst signifi-
cantly advances its likelihood-of-confusion claim by comparing its
6
Because the marketplace provides the relevant forum for comparing
services, there is no merit to CareFirst’s claim that we should conduct
this analysis using the services enumerated in CareFirst’s federal regis-
trations. The case upon which CareFirst principally relies — Team Tires
Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831 (10th Cir. 2005) — is inappo-
site. The district court in that case had "never analyzed the likelihood of
confusion caused by the defendant’s use of the Tires Plus name," id. at
833, in part because it had incorrectly interpreted the language of the
plaintiff’s federal registration. Id. at 834-35. The Tenth Circuit reversed
and ordered the district court to engage in the likelihood-of-confusion
analysis that it had avoided. Id. at 835. At no point did the court suggest,
as CareFirst does here, that the district court’s analysis of the likelihood-
of-confusion factors should ignore the plaintiff’s actual use of its mark.
CAREFIRST OF MARYLAND v. FIRST CARE 13
services — health plans offered by a multi-million-member HMO —
to those of First Care — direct medical care offered by a small group
of physicians.
E.
None of the other Pizzeria Uno factors offer any support for Care-
First’s infringement claim.
CareFirst contends that the parties have similar facilities because
First Care’s offices are similar to the doctors’ offices of CareFirst’s
participating providers. Even assuming that this comparison is appro-
priate, this factor does not weigh in CareFirst’s favor when there are
"basic differences between plaintiff’s and defendant’s modes of dis-
tributing their products" at these facilities. Amstar Corp., 615 F.2d at
262. First Care displays its mark on the outside of each of its doctors’
offices and provides direct medical services under its name. By con-
trast, CareFirst’s mark enjoys no similarly prominent placement with
its participating providers,7 and nothing in the record suggests that its
participating providers directly market CareFirst’s health care policies
in their offices. Even if the offices of First Care’s doctors and Care-
First’s participating providers were otherwise identical, the significant
differences between how consumers encounter the parties’ respective
marks in these facilities reduce the weight of this factor. See Petro,
130 F.3d at 95.
CareFirst also argues that the parties have similar advertising. In
comparing advertising, we look at a variety of factors: the media
used, the geographic areas in which advertising occurs, the appear-
ance of the advertisements, and the content of the advertisements.
Petro, 130 F.3d at 95; Pizzeria Uno, 747 F.2d at 1535. Here, at least
three of these four factors show significant differences between the
two parties.
First, CareFirst concedes that First Care "advertises" primarily
through word of mouth, and at any rate spends less than $2,000 per
year on advertising. By contrast, CareFirst spends millions of dollars
7
CareFirst once operated a line of CareFirst-branded clinics, but it dis-
continued the clinics before First Care began operating.
14 CAREFIRST OF MARYLAND v. FIRST CARE
every year to advertise extensively in print, television, radio, the
Internet, and elsewhere. Second, CareFirst advertises primarily in its
direct service area, which does not include First Care’s location in
Southeastern Virginia. First Care only advertises in its local area. That
there is some spillover of CareFirst’s advertising into First Care’s area
does not make their advertising similar. See Pizzeria Uno, 747 F.2d
at 1535. Third, based on the record before us, CareFirst’s profession-
ally designed advertisements contrast sharply with First Care’s adver-
tising, which is limited to "external and internal signage, basic listings
in local telephone directories, and running announcements in local
newspapers."
CareFirst next argues that First Care engaged in bad faith by using
the First Care mark. CareFirst acknowledges that First Care initially
used the mark in good faith but contends that First Care evidenced
bad faith by applying to register the mark in Virginia in April 2004,
one month after CareFirst had filed this suit. The intent of a junior
user is relevant only if the junior user intended to capitalize on the
good will associated with the senior user’s mark. See Sara Lee Corp.
v. Kayser-Roth Corp., 81 F.3d 455, 466 (4th Cir. 1996); Pizzeria Uno,
747 F.2d at 1535. CareFirst proffers no evidence as to why First Care
filed the state application. The fact of the state application, in and of
itself, simply does not show an intent to capitalize on the good will
associated with CareFirst’s mark. The state registration would do
nothing to assist First Care in trading on CareFirst’s good will since
the Lanham Act registration preempts any registration under state
law. We cannot infer from this mere filing for state registration that
First Care intended to capitalize on CareFirst’s good will when this
action would have done nothing to achieve that purpose.
F.
In sum, none of the Pizzeria Uno factors weigh in CareFirst’s
favor, and most — including absence of evidence of actual confusion,
lack of strength of CareFirst’s mark, and lack of similarity between
the two marks — weigh heavily against a finding of likelihood of
confusion. For these reasons, we can only hold that the district court
did not err in granting summary judgment to First Care on CareFirst’s
infringement claim.
CAREFIRST OF MARYLAND v. FIRST CARE 15
III.
The district court also granted summary judgment to First Care on
CareFirst’s dilution claim. The Trademark Dilution Act provides that
"[t]he owner of a famous mark" can enjoin "another person’s com-
mercial use in commerce of a mark or trade name, if such use begins
after the mark has become famous and causes dilution of the distinc-
tive quality of the mark." 15 U.S.C. § 1125(c)(1). Dilution means "the
lessening of the capacity of a famous mark to identify and distinguish
goods or services." Id. § 1127. The statutory scheme makes clear that
a court may find dilution even if it would not find any likelihood of
confusion. Id.
The Supreme Court has held that the dilution statute "unambigu-
ously requires a showing of actual dilution, rather than a likelihood
of dilution." Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433
(2003). CareFirst offers only two arguments in its attempt to establish
that it could prove actual dilution. Neither is persuasive.
First, CareFirst maintains that the similarity of CareFirst’s and First
Care’s marks provides circumstantial evidence of actual dilution. The
Supreme Court has suggested that "where the junior and senior marks
are identical," there would be "circumstantial evidence" of actual
dilution. Moseley, 537 U.S. at 434 (emphasis added). "[E]very federal
court to decide the issue has ruled that a high degree of similarity,
ranging from ‘nearly identical’ to ‘very similar,’ is required" to meet
this standard. Autozone, 373 F.3d at 806. Thus, "a mere similarity in
the marks — even a close similarity — will not suffice to establish
per se evidence of actual dilution." Savin Corp. v. The Savin Grp.,
391 F.3d 439, 453 (2d Cir. 2004). In addition, "the issue of whether
the marks are identical will be context- and/or media-specific and fac-
tually intensive in nature." Id. Here, the text of the two marks is simi-
lar but not identical. Furthermore, as they appear in the marketplace
to the average consumer, the two marks are not even "very similar"
— company policy requires that CareFirst’s mark always appear as
"CareFirst BlueCross BlueShield," while the First Care mark appears
unadorned. Therefore, the similarity of the marks provides little cir-
cumstantial evidence of actual dilution here.
CareFirst’s second argument — that the Helfgott survey provides
evidence of actual dilution — is no more convincing. As noted above,
16 CAREFIRST OF MARYLAND v. FIRST CARE
the Helfgott survey was designed to measure likelihood of confusion,
not dilution. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868,
875 (9th Cir. 1999) ("In the dilution context, likelihood of confusion
is irrelevant."); 4 McCarthy, supra, § 24:94.2 (describing surveys that
might measure dilution). Thus, the survey at best measured whether
consumers believe that First Care is associated with CareFirst, not
whether First Care’s mark has "reduce[d] the capacity of the [Care-
First] mark to identify the [services] of its owner." Moseley, 537 U.S.
at 433. The survey’s results provide no forecast of actual dilution. See
Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div.
of Travel Dev., 170 F.3d 449, 462-63 (4th Cir. 1999) (finding that a
survey designed only to show "mental association" between compet-
ing marks was not evidence of dilution).
Accordingly, the district court did not err in granting First Care
summary judgment on CareFirst’s dilution claim.
IV.
For the foregoing reasons, the judgment of the district court is
AFFIRMED.