Healthbox for VC Services Not Confusing to Healthbox for Connected Fitness Products

The U.S. District Court for the District of Delaware recently handed firm client Under Armour a major victory in a trademark infringement and dilution action filed by Chicago-based healthcare consulting firm Healthbox Global Partners, LLC (“HGP”). Healthbox Global Partners, LLC v. Under Armour, Inc., No. 1:16-cv-00146, (D. Del. July 19, 2016).

HGP filed suit alleging trademark infringement, unfair competition, state dilution, and deceptive trade practice claims against Under Armour in March 2016, just two months after Under Armour launched its new connected-fitness offering under the HEALTHBOX/UA HEALTHBOX mark. HGP is a VC and consulting firm offering advisory, incubation, and funding for start-ups and existing businesses in the healthcare industry and the owner of a 2013 registration for HEALTHBOX covering such services. Under Armour, on the other hand, is a sports product company targeting athletes and fitness-minded consumers. It uses the HEALTHBOX/UA HEALTHBOX mark to identify a box containing a “connected fitness system” with various devices designed to measure aspects of one’s health for sale directly from Under Armour and national retailers, including Best Buy, Dick’s Sporting Goods, and Target.

In its preliminary injunction motion, HGP argued that because its consulting services are aimed at the healthcare industry, defendant’s products are health oriented, and plaintiff’s HEALTHBOX mark appears on some of the websites of its portfolio companies, consumers were likely to experience either forward or reverse confusion. It offered evidence of increased traffic on its website following the launch of HEALTHBOX/UA HEALTHBOX, and of a solicitation letter send from defendant to plaintiff inquiring about “aligning strategic partners” with HGP clients as evidence of overlap. HGP sought a recall of all HEALTHBOX/UA HEALTHBOX products from store shelves, as well as cessation of the mark pending conclusion of the case on the merits.

In response, through arguments, factual declarations, and expert testimony, Under Armour outlined the different meaning of the two marks in their respective contexts, the conceptual and commercial weakness of the HEALTHBOX mark in plaintiff’s healthcare market, the relevance of its consistent use of the famous  logo and UA mark on all product advertising and packaging, the disparate nature of the parties’ actual product and service offerings and trade channels (healthcare executives looking for advice or financing versus athletes), the high degree of care exercised by both parties’ consumers, and the varied irreparable and financial harms it would suffer if forced to recall and rebrand its product.

Finding that the majority of the governing likelihood-of-confusion factors weighed in Under Armour’s favor or were neutral, the court found HGP unlikely to succeed on the merits of its confusion or dilution claims, and denied HGP’s motion for preliminary injunction. The court also found that HGP failed to establish the required irreparable harm for a preliminary injunction, let alone that the balance of hardships tipped in its favor.