Mongan v . O’Neill CV-01-135-M 07/24/02 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Marie Mongan, Plaintiff v. Civil N o . 01-135-M Opinion N o . 2002 DNH 139 Michelle Leclaire O’Neill, Defendant

O R D E R

Marie Mongan (“Mongan”), owner of the federally registered service mark HypnoBirthing (stylized), has sued fellow childbirth educator Michelle Leclaire O’Neill (“O’Neill”) in six counts, alleging: infringement of the registered service mark HypnoBirthing (stylized), under 15 U.S.C. § 1114 (Count I ) ; infringement of the common law trademark HYPNOBIRTHING PRACTITIONER, under 15 U.S.C. § 1125(a) (Count I I ) ; unfair competition, based upon use of the marks HYPNOBIRTHING and THE HYPNOBIRTHING METHOD, under 15 U.S.C. § 1125(a) (Count I I I ) ; false designation of origin, based upon the use of both marks, under 15 U.S.C. § 1125(a) (Count I V ) ; unfair competition, under the common law of California and the California Professional Code (Count V ) ; and tortious interference with a contractual relationship (Count V I ) . Before the court is plaintiff’s motion for summary judgment on Counts I - V . Defendant objects. For the reasons given below, plaintiff’s motion for summary judgment is denied.

Summary Judgment Standard

Summary judgment is appropriate when the record reveals “no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law.” FED. R . CIV. P . 56(c). “To determine whether these criteria have been met, a court must pierce the boilerplate of the pleadings and carefully review the parties’ submissions to ascertain whether they reveal a trialworthy issue as to any material fact.” Perez v . Volvo Car Corp., 247 F.3d 303, 310 (1st Cir. 2001) (citing Grant’s Dairy- Me., L L C v . Comm’r of M e . Dep’t of Agric., Food & Rural Res., 232 F.3d 8 , 14 (1st Cir. 2000)).

Not every factual dispute is sufficient to thwart summary judgment; the contested fact must be “material and the dispute over it must be “genuine.” In this regard, “material” means that a contested fact has the potential to change the outcome of the suit under the governing law if the dispute over it is resolved favorably to the nonmovant. By like token, “genuine” means that the evidence about the fact is such that a reasonable jury could resolve the point in favor of the nonmoving party.

Navarro v . Pfizer Corp., 261 F.3d 9 0 , 93-94 (1st Cir. 2001) (quoting McCarthy v . Northwest Airlines, Inc., 56 F.3d 313, 315 (1st Cir. 1995)).

In defending against a motion for summary judgment, “[t]he non-movant may not rely on allegations in its pleadings, but must set forth specific facts indicating a genuine issue for trial.” Geffon v . Micrion Corp., 249 F.3d 2 9 , 34 (1st Cir. 2001) (citing Lucia v . Prospect St. High Income Portfolio, Inc., 36 F.3d 170, 174 (1st Cir. 1994)). When ruling upon a party’s motion for summary judgment, the court must “scrutinize the summary judgment record ‘in the light most hospitable to the party opposing summary judgment, indulging all reasonable inferences in that party’s favor.’” Navarro, 261 F.3d at 94 (quoting Griggs-Ryan v . Smith, 904 F.2d 112, 115 (1st Cir. 1990)).

Background

Mongan and O’Neill are childbirth educators who teach birthing methods that employ hypnosis.^[1] It would appear beyond dispute that the basic concept of pain reduction in childbirth through natural relaxation techniques may be traced at least as far back as the work of English obstetrician Grantley Dick-Read in the 1930s, as reported in his influential book Childbirth Without Fear (1930). Both Mongan and O’Neill have taught the use of hypnosis as a means of achieving relaxation during childbirth since the late 1980s. Both have published books and other educational materials on the subject of hypnosis in childbirth,2 both have used the term “hypnobirthing” in their published materials,3 and both claim to have invented the technique.^[4] In addition, Mongan operates an enterprise called the “HypnoBirthing Institute,” which certifies hypnobirthing instructors.

On August 1 , 2000, the United States Patent and Trademark Office (“USPTO”) issued Mongan a service mark registration for the mark HypnoBirthing (stylized)5 (Reg. N o . 2,372,277). The service for which the mark was registered is described as “[e]ducation in the field of childbirth rendered through correspondence courses, workshops, and seminars.” (Mongan also abandoned an application for trademark rights in HypnoBirthing (stylized) for use on “[p]rinted course books and instructional, educational, and teaching materials in the field of childbirth.”) On July 3 , 2001, a cancellation proceeding with respect to the HypnoBirthing (stylized) mark was filed, by O’Neill, with the Trademark Trial and Appeal Board. That proceeding is still pending. Mongan also claims to have common law trademark rights in the mark HYPNOBIRTHING PRACTITIONER.^[6] On January 1 6 , 2001, O’Neill filed an application for registration of the service mark The Hypnobirthing Method (stylized). The service for which O’Neill seeks the mark is described as “TRAINING classes for professionals and CHILDBIRTH Classes for PREGNANT couples.” O’Neill’s application was assigned to an examining attorney on December 1 3 , 2001, and is still pending.

Because Mongan registered HypnoBirthing (stylized) less than five years ago, the registration is not yet incontestable. See

15 U.S.C. § 1065 (right to use a registered mark generally becomes incontestable after five consecutive years of continuous use after registration). Consequently, the mark’s validity is open to challenge. See Park ’N Fly, Inc. v . Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985) (presumption of validity created by registration is rebuttable until right to use the mark becomes incontestable). By contending that Mongan’s mark is generic, O’Neill has raised two genuine issues of material fact that preclude summary judgment.

At one end of the [distinctiveness] spectrum there are generic terms that have passed into common usage to identify a product, such as aspirin, and can never be protected. In the middle there are so-called descriptive terms, such as a geographical term, which can be protected, but only if it has acquired “secondary meaning” by which consumers associate it with a particular producer or source. At the other end of the spectrum, there are suggestive, arbitrary and fanciful terms that can be protected without proof of secondary meaning. These terms are considered “inherently distinctive.”

Boston Beer Co., 9 F.3d at 180 (citations omitted).

Assuming Mongan is able to prove that her registered mark, HypnoBirthing (stylized), is a descriptive mark rather than a generic term, she would then have to address the issue of secondary meaning. “[W]hether a mark has acquired secondary meaning is also a question of fact.” Boston Beer Co., 9 F.3d at 180 (citing Volkswagenwerk AG v . Wheeler, 814 F.2d 812, 816 (1st Cir. 1987)). “Moreover, it is the party seeking protection of a mark who bears the burden of proving that secondary meaning has attached.” Boston Beer Co., 9 F.3d at 181 (citing Bristol-Myers Squibb C o . v . McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir. 1992); Blinded Vets. Ass’n v. Blinded Am. Vets. Found., 872 F.2d 1035, 1041 (D.C. Cir. 1989)). And the burden of proof on secondary meaning is high; “[p]roof of secondary meaning entails vigorous evidentiary requirements.” Boston Beer Co., 9 F.3d at 181 (quoting Perini Corp. v . Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990); citing Thompson Med. C o . v . Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985); Bank of Tex. v . Commerce Southwest, Inc., 741 F.2d 785, 787 (5th Cir. 1984)). As for the kind of evidence necessary to meet those vigorous evidentiary requirements, “[t]he only direct evidence probative of secondary meaning is consumer surveys and testimony by individual consumers. Although survey evidence is not required, it is a valuable method of showing secondary meaning.” Yankee Candle C o . v . Bridgewater Candle Co., 259 F.3d 2 5 , 43 (1st Cir. 2001) (citations and internal quotation marks omitted).

§ 1119, to cancel a registration i f , for example, the owner of a descriptive mark is unable to prove secondary meaning.

In an effort to provide what might prove to be helpful guidance to the parties, the court notes that their dispute appears to be much less a trademark case than a dispute over who was the “true originator” of an increasingly popular technique for employing hypnosis as an aid to childbirth. The idea of using hypnosis as an aid to childbirth i s , of course, not legally protected intellectual property. The words or symbols one might use to attract clients to a particular hypnobirthing business enterprise may well be protectable service marks. And, the unique expression one uses in conveying the idea of hypnobirthing in a book or audiotape may be subject to copyright protection. But it would seem, legally, that anyone who teaches birthing methods that employ hypnosis to aid in pain reduction has the right to call the process “hypnobirthing.”

techniques for employing hypnosis in childbirth. Linguistically, “hypnobirthing” is an easily understood amalgam of two common English words, and it is seldom – if ever – appropriate for intellectual property law to make such words unavailable for all to use.

use the mark HypnoBirthing (stylized), and much in the record suggests that Mongan’s property rights in the mark are suspect. It may be time for informed and self-interested reflection.