The United States District Court for the Southern District of Ohio denied Defendant’s Motion for Partial Summary Judgement, which was based upon the argument that Plaintiff’s claimed service mark, VNA, was generic.  The Court’s threshold question was whether the term “VNA” is generic.  The Defendant argued it was generic for Visiting Nurse Association and offered evidence of such use.  This followed denial of Plaintiff’s attempt at a preliminary injunction.  However, the Court quickly determined that a “term may be considered generic in certain regions of the country and not in others.”  Thus, given Plaintiff’s Ohio trademark registration and disputed issues of fact surrounding use in the Ohio region, the Court denied summary judgement on the issue of genericness.   In doing so, the Court noted: “While the Defendant makes a compelling case for summary judgment because the evidence supports a finding that the term “VNA” is generic, Plaintiff has yet to complete discovery. Moreover, Defendants failed to cite any case where a court made a factual finding as to genericness before the close of discovery or at least until after an evidentiary hearing.”

Ultimately, the Court seems to be sending a signal that Plaintiff better come up with evidence to support that its VNA mark is not generic, at least in the Ohio region.  Regardless, this is a good reminder to trademark attorneys litigating cases involving claims of genericness involving common law trademark rights that such trademark rights may differ by region.

Visiting Nurse Ass’n of Greater Cincinnati & N. Kentucky v. Healthtrends of Ohio, LLC, 1:13-CV-585, 2014 WL 3734329 (S.D. Ohio July 29, 2014).

 

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