On February 27, 2013, Tucker, Georgia-based Southeast Clinical Nutrition Centers, Inc. (“Southeast”) filed a complaint in the U.S. District Court for the Northern District of Georgia, Atlanta Division, against the Mayo Foundation for Education and Research(“Mayo Foundation”), alleging that the Mayo Foundation infringed Southeast’s service marks related to dieting.
Southeast is the owner identified on U.S. Service Mark Registrations Nos. 3,993,944 and 3,993,945 (“the “’944 Registration” and “’945 Registration,” respectively), for the marks “Don’t diet. Live IT!” and “Don’t diet. Lose IT!,” respectively, for “consulting services in the fields of health and nutrition; counseling services in the fields of health, nutrition and lifestyle wellness; food nutrition consultation; nutrition counseling.” The ’944 Registration recites a date of first use in commerce of July 31, 2007 for “Don’t diet. Live IT!,” and the ’945 Registration recites a date of first use in commerce of August 31, 2010 for “Don’t diet. Lose IT!”
In addition to identifying those registered marks, the complaint alleges common law rights to the marks “Lose It!” and “Live It!”
Southeast alleges that the Mayo Foundation published a book titled The Mayo Clinic Diet, and that two of the three main sections in that book are called “Part 1. Lose It!,” and “Part 2. Live It!,” as presented in Exhibit 8 to the complaint. In that book, Mayo Foundation uses both terms, Southeast contends, to describe portions of the Mayo Foundation’s dieting program. Southeast’s complaint identifies a Mayo Foundation website that describes The Mayo Clinic Diet as having “two main parts”: (1) Lose It!; and (2) Live It!
Southeast also alleges that the Mayo Foundation published books titled The Mayo Clinic Diabetes Dietand The Mayo Clinic Diabetes Journal, and that the former prominently features and uses the terms “Lose It!” and “Live It!” in connection with the Mayo Diabetes Program, in a manner similar to that used in The Mayo Clinic Diet. The complaint refers to additional exhibits regarding such usages.
Referring to Exhibit 14 to the Complaint, Southeast alleges that it put Mayo Foundation on formal notice of the registered marks in a letter dated January 4, 2013. The letter of that exhibit includes the statement: “At this time, my client would like to explore whether Mayo Clinic can work, together, with it on a mutually beneficial relationship, whereby any potential issues can be avoided.” The letter concluded with a request to contact Southeast’s counsel in two weeks. The complaint does not state whether Mayo Foundation ever responded to that letter, but alleges that Mayo Foundation continues to use the contested marks despite that letter.
The complaint recites counts for infringement of federally-registered marks, false designation of origin and dilution under the Lanham Act (regarding the claimed common-law marks “Lose It!” and “Live It!”), and common law trademark infringement and unfair competition as to all asserted marks. Southeast seeks both injunctive and monetary relief, including recovery of attorneys’ fees under 15 U.S.C. § 1117.
The case is Southeast Clinical Nutrition Centers, Inc. v. Mayo Foundation for Education and Research, No. 1:13-cv-0626-AT, filed 02/27/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Amy Totenberg.Copyright © 2013 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.