Seattle Trademark Lawyer

On August 31, Western District Judge Thomas Zilly entered a stipulated injunction in favor of plastic surgery clinic Hypatia Aesthetic & Laser Treatment Clinic, PLLC, against competing plastic surgery clinic Sam Naficy, MD, PS. The injunction concludes Hypatia’s dispute with Sam Naficy over the latter’s purchase of HYPATIA as a keyword in users’ Google searches.

Hypatia’s complaint reads like a Google testimonial. It alleged that Hypatia markets its “minimally invasive and non-invasive cosmetic medical therapies primarily on the Internet.” In the 1.5 months preceding Hypatia’s filing of its complaint in September 2006, Hypatia alleged the Sam Naficy clinic “purchased from www.google.com, the right to have a sponsored link to its website at the top or the top right side of the search results page when anyone performs a Google search for the term ‘hypatia.’” Sam Naficy’s ad allegedly stated, “Rejuvenation Center seattleface.com Non-surgical treatments for healthy & beautiful skin with no down time,” and contained a link that would transfer a user to Sam Naficy’s Web site. During this period, Hypatia stated, it experienced a “drastic drop” in the number of Internet inquiries from new customers.

Hypatia alleged that Sam Naficy’s use of Hypatia’s common law trade name and trademark was “purchased to confuse Hypatia customers and prospects seeking Hypatia’s website into viewing the [Sam Naficy] website and diverting customers and prospects to [Sam Naficy] for their cosmetic medical needs, with the purpose of taking Hypatia’s customers, prospects and market share.” The complaint alleged that these facts supported claims of false designation of origin, common law trademark infringement, trade dress infringement, trade name infringement, violation of Washington’s Consumer Protection Act, and common law unfair competition.

The stipulated order dismisses Hypatia’s claims and permanently enjoins Sam Naficy and its shareholders, directors, officers, and employees from “sponsoring, creating, purchasing or otherwise directing any Internet-based link, connection, directive or methodology of diverting users that has as its basis the inputting by any user” of the terms “Hypatia,” “Hypatia Laser & Aesthetic Clinic,” Hypatia’s address, and Hypatia’s telephone number. The parties agreed that each would bear its own fees and costs.

Given the uncertainty as to whether purchasing a competitor’s trademark as a search engine keyword even constitutes infringement, this result seems extreme. Suffice it to say, the outcome could have been quite different had the case been decided on its merits. Not necessarily, but it sure could have been.

The case cite is Hypatia Aesthetic & Laser Treatment Clinic, PLLC v. Sam Naficy, MD, PS, No. 06-01366 (W.D. Wash.).