1993-1994 brochure, the plaintiff described the defendant as follows: "Columbia was recently identified as the fourth fastest growing company in the United States." Mr. Scott was reappointed to the Health Sciences Advisory Council in 1994 and in 1995. (Def.'s Exs. BH, BJ, BK; UF P 4r.)
46. In September 1995, the plaintiff's School of Nursing gave Mr. Scott its "Second Century Award." (UF P 4r; Def.'s Exs. BL, BM, HE(c).) After the awards ceremony, Mr. Scott met with Dr. Rose, who is Director of the Surgical Service at the Presbyterian Hospital, Chairman of the Department of Surgery at the Columbia University College of Physicians and Surgeons, and Surgeon-in-Chief at the Columbia-Presbyterian Medical Center. (Rose. W.S. P 1; Rose Trial Test. at 134.) Mr. Scott told Dr. Rose that the defendant would like to expand into the New York area if the legal prohibitions against such expansion were removed and that he expected that it eventually would happen. (Rose Trial Test. at 135-36.)
47. Prior to September 13, 1996, the day this action was filed, the plaintiff did not express any objection to the defendant regarding the defendant's use of the word "Columbia." (UF P 4s.)
CONCLUSIONS OF LAW
1. The plaintiff's first and second claims for relief are for trademark infringement and false designation of origin under Section 32(1) and Section 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a). Section 32(1) provides protection against the "reproduction, counterfeit, copy, or colorable imitation of a registered mark" and its application to "labels, signs, prints, packages, wrappers, receptacles or advertisements" where "such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1). Section 43(a) protects both registered and unregistered marks against the use of any symbol or mark that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ...." 15 U.S.C. § 1125(a).
2. To succeed on its claims, the plaintiff must, as a preliminary matter, show that it has a valid mark that is entitled to protection. See Estee Lauder Inc. v. Gap, Inc., 108 F.3d 1503, 1997 WL 134414, at *5 (2d Cir. 1997); Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); Les Ballets Trockadero de Monte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 569 (S.D.N.Y. 1996). The plaintiff claims that its use of the mark "Columbia," alone and in combination with other words and phrases, is entitled to protection in the field of medical or healthcare services.
3. The plaintiff is not entitled to a presumption of an exclusive right to use the Columbia mark in connection with medical or healthcare services. According to Section 7(b) of the Lanham Act, a certificate of registration of a trade or service mark issued by the United States Patent and Trademark Office is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate ...." 15 U.S.C. § 1057(b). Although the plaintiff has obtained federal service mark protection for the name "Columbia University" for educational services, "the presumption of an exclusive right to use a registered mark extends only to the goods and services noted in a registration certificate." Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 397 (2d Cir. 1995); see also McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 (2d Cir. 1979). The plaintiff does not own any federal trademark registrations for Columbia, Columbia-Presbyterian, Columbia University, or any other mark in connection with medical or healthcare services.
4. Where a mark is not registered, the plaintiff has the burden of proving that its mark is a valid trademark. See Reese Publishing Co., Inc. v. Hampton Int'l Communications, Inc., 620 F.2d 7, 11 (2d Cir. 1980); GMT Prods., L.P. v. Cablevision of New York City, Inc., 816 F. Supp. 207, 210 (S.D.N.Y. 1993). The strength of a trademark in the marketplace and the degree of protection to which it is entitled are analyzed under four categories of marks that indicate increasing distinctiveness and protectability: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful. See Estee Lauder, 108 F.3d 1503, 1997 WL 134414, at *5; Sports Auth., 89 F.3d at 961. Arbitrary or fanciful are sometimes described as separate categories. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992). Generic marks are not protectable. Descriptive terms are protectable only with evidence of secondary meaning. Suggestive, arbitrary, and fanciful marks are eligible for protection without proof of secondary meaning. See Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 212-13 (2d Cir. 1985); Les Ballets Trockadero, 945 F. Supp. at 569.
5. The mark "Columbia," used alone and in combination with other words and phrases, is arbitrary. It has a dictionary meaning -- "the United States" -- that bears no relationship to medical or healthcare services. See Gruner Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075-76 (2d Cir. 1993) ("An arbitrary term is one that has a dictionary meaning -- though not describing the product -- like IVORY for soap."); Jordache Enters., Inc. v. Levi Strauss & Co., 841 F. Supp. 506, 515 (S.D.N.Y. 1993) ("Arbitrary marks consist of words that neither suggest nor describe any characteristic of the particular good or service with which it is used."). The mark "Columbia" is therefore eligible for protection without proof of secondary meaning.
6. Once a mark is found to be entitled to protection under the Lanham Act, the central question is whether "numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the defendant's mark," Gruner, 991 F.2d at 1077; see also Estee Lauder, 108 F.3d 1503, 1997 WL 134414, at *7; Sports Auth., 89 F.3d at 960; Arrow Fastener, 59 F.3d at 390-91, "or that there may be confusion as to [the] plaintiff's sponsorship or endorsement of the junior mark." Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 502 (2d Cir. 1996); see also Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979). Proof of actual confusion is not necessary. See Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987); Web Printing Controls Co., Inc. v. Oxy-Dry Corp., 906 F.2d 1202 (7th Cir. 1990). However, proof of actual confusion is probative of a likelihood of confusion. See Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 (7th Cir. 1965); David Sherman Corp. v. Heublein, Inc., 340 F.2d 377, 380 (8th Cir. 1965).
7. The plaintiff alleges that there is a likelihood of both forward confusion and reverse confusion. Forward confusion is the traditional form of confusion in which the junior user uses the mark to sell goods or services based on the misperception that they originate with the senior user. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740 (2d Cir. 1994); Sunenblick v. Harrell, 895 F. Supp. 616, 625 (S.D.N.Y. 1995), aff'd, 101 F.3d 684 (2d Cir.), cert. denied, 136 L. Ed. 2d 303, 117 S. Ct. 386 (1996). "Reverse confusion exists when a subsequent user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the prior user are produced by the subsequent user." Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 583 (2d Cir. 1991); see also Sterling Drug, 14 F.3d at 741 ("Allowing such confusion claims comports with the dual purposes of the Act -- namely, to protect the public from confusion as to the source of goods, and at the same time to protect the trademark holder from misappropriation of its mark."); Sunenblick, 895 F. Supp. at 625 (describing reverse confusion as "the phenomenon in which the junior user's advertising so greatly overshadows that of the senior user that consumers come to the mistaken conclusion that the junior user is in fact the source of the senior user's goods.").
8. In Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961), the Court of Appeals for the Second Circuit set forth eight non-exclusive factors that courts are to consider when determining whether a likelihood of confusion exists. See also Estee Lauder, 108 F.3d 1503, 1997 WL 134414, at *7; Sports Auth., 89 F.3d at 960-65; Hormel Foods, 73 F.3d at 502-05. In Polaroid, the court declared that:
The prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers. Even this extensive catalogue does not exhaust the possibilities -- the court may have to take still other variables into account.
Polaroid, 287 F.2d at 495. The decision as to whether a mark infringes requires a "comprehensive analysis of all the relevant facts and circumstances." Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968 (2d Cir. 1981). The Court of Appeals for the Second Circuit has instructed that:
The Polaroid factors are not, of course, "exclusive" and should not be applied "mechanically." No single factor is dispositive, and cases may certainly arise where a factor is irrelevant to the facts at hand. But it is incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why. The steady application of Polaroid is critical to the proper development of trademark law, for it is only when the Polaroid factors are applied consistently and clearly over time that the relevant distinctions between different factual configurations can emerge.