Case: 4:21-cv-00077-DMB-JMV Doc #: 1 Filed: 06/08/21 1 of 11 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF MISSISSIPPI
`GREENVILLE DIVISION
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`DELTA HEALTH CENTER, INC.
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`VS.
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`DELTA REGIONAL MEDICAL CENTER
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` PLAINTIFF
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` CIVIL ACTION NO.____________
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` DEFENDANT
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`COMPLAINT
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`Delta Health Center, Inc. (“Delta Health”) files this Complaint against Delta Regional
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`Medical Center dba Delta Health System (“DRMC”), alleging as follows:
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`1.
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`This action is for trademark infringement, dilution, and unfair competition under
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`INTRODUCTION
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`the Federal Trademark Act of 1946, 15 U.S.C. § 1051 et seq. (the “Lanham Act”), the trademark
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`and anti-dilution laws of Mississippi, and common law, arising from DRMC’s use and/or planned
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`use of Delta Health System, Delta Health – The Medical Center, Delta Health, and any other
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`variant of “Delta Health” (“DRMC Marks”).
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`2.
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`Delta Health seeks equitable and any other relief from DRMC’s violations of Delta
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`Health’s trademark rights in the following marks: Delta Health Center (U.S. Appl. No.
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`90732683; Miss. Registration No. 86992; common law); Delta Health Center (logo) (U.S. Appl.
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`No. 90735647; common law); and Delta Health (common law) (the “Delta Health Marks”). Long
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`before DRMC’s use and/or planned use of the DRMC Marks, Delta Health extensively used and
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`promoted the Delta Health Marks in various ways through various advertising mediums.
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`3.
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`DRMC’s use of the DRMC Marks is likely to cause, and has caused, customer
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`confusion, dilution, and other irreparable injury to Delta Health’s established trademark rights in
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`the Delta Health Marks, absent relief from this Court.
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`03897733
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`4:21-CV-077-DMB-JMV
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`4.
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`5.
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`Delta Health demands a trial by jury on all issues so triable.
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`PARTIES
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`Delta Health is a non-profit corporation organized under the laws of the State of
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`Mississippi, with its principal place of business at 702 Martin Luther King Road, in Mound Bayou,
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`Mississippi.
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`6.
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`DRMC is a community hospital organized under the laws of the State of
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`Mississippi, with its principal place of business at 1400 East Union Street, in Greenville,
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`Mississippi.
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`JURISDICTION AND VENUE
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`7.
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`This Court has subject matter jurisdiction under Section 39 of the Lanham Act, 15
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`U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. The Court also has subject matter
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`jurisdiction over Delta Health’s related state and common law claims pursuant to 28 U.S.C.
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`§§ 1338 and 1367.
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`8.
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`Venue is proper in this Court pursuant to 28 U.S.C. § 1391 based on DRMC’s
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`residence and a substantial part of the events giving rise to the claim occurred in this judicial
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`district.
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`FACTS
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`9.
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`Delta Health was established in 1965 and has been doing business under one or
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`more of the Delta Health Marks since 1985. Delta Health was the first Federally Qualified
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`Community Health Center in America and was designed to provide low or no cost health care to
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`impoverished individuals in the Mississippi Delta. Delta Health offers a variety of health care
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`services without regard for a patient’s ability to pay for services rendered.
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`10.
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`DRMC’s website provides that it is “a full service hospital dedicated to serving the
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`Delta since 1953.” In late 2020, over Delta Health’s objections, DRMC rebranded and began using
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`the name “Delta Health System,” and “Delta Health” as a trade names.
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`11.
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`Delta Health has spent decades establishing itself as a quality low or no cost health
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`care provider in the Mississippi Delta. Delta Health has built a strong reputation for high quality
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`services offered under the Delta Health Marks. Through continuous and exclusive use in
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`commerce, and as a result of marketing, promotion, and advertising, Delta Health’s Marks have
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`acquired significant value and have achieved widespread recognition and fame within the
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`community that Delta Health serves. The Delta Health Marks symbolize Delta Health’s goodwill
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`and reputation as a quality health care provider in the Mississippi Delta. Individuals have come to
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`know, rely upon, and recognize the Delta Health Marks as a strong indicator of the various services
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`provided in connection with the marks incorporating Delta Health. As a result of Delta Health’s
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`efforts, Delta Health Marks are famous, and they became famous prior to the DRMC’s rebranding
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`or any other date on which DRMC can rely.
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`12.
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`Delta Health has spent considerable time and money advertising and promoting its
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`services under the Delta Health Marks.
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`13.
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`DRMC’s marks are substantially and confusingly similar to Delta Health’s marks.
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`The services provided by both Delta Health and DRMC are similar. For example, both offer
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`primary care, lab work, x-rays, gynecology, and pediatrics, to name a few. Additionally, Delta
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`Health and DRMC serve the same geographic area - the Mississippi Delta. In fact, both Delta
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`Health and DRMC operate clinics in Greenville and Cleveland, Mississippi. Although both Delta
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`Health and DRMC offer “low cost” medical care, only Delta Health provides services regardless
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`of a patient’s ability to pay.
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`14.
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`On information and belief, the services provided by DRMC under the DRMC
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`Marks would be offered to the same, substantially similar, and/or overlapping classes of people as
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`those to which Delta Health serves and would be offered through the same, substantially similar,
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`and/or overlapping channels of trade as those through which Delta Health offers its services.
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`15.
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`Delta Health has superior rights in and to the Delta Health Marks because, on
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`information and belief, its usage and/or registration of the marks in connection with the
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`aforementioned services pre-dates DRMC’s use of the DRMC Marks.
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`16. Moreover, Delta Health’s registration for Delta Health Center (Miss. Registration
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`No. 86992) is valid, subsisting, and in full force and effect, and constitutes prima facie evidence
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`of the validity of the mark and of Delta Health’s exclusive right to use it in relation to the services
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`identified in the registrations. A copy of the state registration information is attached as Exhibit
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`A. Delta Health has also applied to register Delta Health Center (the word mark and the logo)
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`with the United States Patent and Trademark Office (U.S. Appl. Nos. 90732683, 90735647).
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`Copies of the pending applications are attached as Exhibit B.
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`17.
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`Based on Delta Health’s use and registration of Delta Health Marks, DRMC had
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`constructive and actual notice of Delta Health’s rights in the marks.
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`18.
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`DRMC’s use of the DRMC Marks for the services identified is likely to cause
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`confusion, mistake, or deception by having the public erroneously assume or believe that such
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`services emanate from the same source or origin as Delta Health’s services, or are in some other
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`way associated, endorsed, licensed, authorized, sponsored by or connected with Delta Health, all
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`to Delta Health’s damage.
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`19.
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`DRMC’s use of the DRMC Marks would and/or does disparage and falsely suggest
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`a connection with Delta Health and/or Delta Health’s services, thereby causing loss, damage, and
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`injury to Delta Health. The DRMC Marks are the same or a close approximation of the identity
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`of Delta Health, which has done business as Delta Health and Delta Health Center since 1985.
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`Delta Health and Delta Health Center functioned as Delta Health’s name, identity, and persona
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`long before DRMC rebranded itself as “Delta Health System” and began using DRMC Marks,
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`including “Delta Health – The Medical Center.” DRMC is not connected with Delta Health or the
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`services Delta Health provides under the Delta Health Marks. Because the DRMC Marks are
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`nearly identical to the Delta Health Marks, they falsely suggest a connection with Delta Health.
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`20.
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`In January 2021, in an effort to prevent infringement or dilution of the Delta Health
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`Marks, Delta Health made demand on DRMC to cease and desist its use or intent to use the DRMC
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`Marks. DRMC refused to comply with Delta Health’s demands and continued to use the DRMC
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`Marks.
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`21.
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`Because DRMC refused to comply with Delta Health’s demands, Delta Health asks
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`this Court to protect its goodwill and name. By reason of the similarity between the Delta Health
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`Marks and the DRMC Marks, the fame of the Delta Health Marks, and the exclusive association
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`between the Delta Health Marks and Delta Health, the DRMC Marks dilute and or/are likely to
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`dilute Delta Health’s marks by impairing the distinctiveness of the Delta Health Marks to identify
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`services exclusively from Delta Health. Accordingly, the DRMC Marks violate federal law,
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`Mississippi law, and common law.
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`CAUSES OF ACTION
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`COUNT I – Federal Trademark Infringement
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`22.
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`23.
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`Delta Health repeats and incorporates the allegations contained above.
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`Delta Health owns trademark rights in the following marks: Delta Health Center
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`(U.S. Appl. No. 90732683; Miss. Registration No. 86992; common law); Delta Health Center
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`(logo) (U.S. Appl. No. 90735647; common law); and any variation of Delta Health (common
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`law).
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`24.
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`DRMC’s use of the DRMC Marks in connection with the services offered by
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`DRMC is confusingly similar to the Delta Health Marks and is likely to cause confusion or mistake
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`or to deceive the public.
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`25.
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`The Delta Health Marks and DRMC Marks are nearly identical in sound and
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`connotation.
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`26.
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`The Delta Health Marks and DRMC Marks are nearly identical in the manner in
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`which they are used.
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`27.
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`The services provided or proposed to be provided under the Delta Health Marks
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`and DRMC Marks are nearly identical.
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`28.
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`The services provided or proposed to be provided under the Delta Health Marks
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`and DRMC Marks are advertised and promoted through the same mediums and the same media.
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`29.
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`DRMC’s use or proposed use of marks confusingly similar to the Delta Health
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`Marks in connection with similar services in the same geographic area violates federal trademark
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`laws, including 15 U.S.C. § 1125.
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`30.
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`DRMC’s use of the Delta Health Marks is likely to continue causing substantial
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`injury to Delta Health. Delta Health is entitled to injunctive relief and any other damages, costs,
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`or fees as this Court deems appropriate.
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`COUNT II – Federal Unfair Competition
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`31.
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`32.
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`Delta Health repeats and incorporates the allegations contained above.
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`DRMC’s use of the DRMC Marks is likely to cause confusion, deception, and
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`mistake by creating the false and misleading impression that DRMC’s services are provided by
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`Delta Health or are associated or connected with Delta Health, or have sponsorship, endorsement,
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`or approval of Delta Health.
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`33.
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`The DRMC Marks are the same as, or a close approximation of, the name and
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`identity used by Delta Health. The DRMC Marks would be recognized as such because they point
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`uniquely and unmistakably to Delta Health. Delta Health is not connected with services rendered
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`by DRMC under the DRMC Marks, but when the DRMC Marks are used in relation to DRMC’s
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`services, a connection with Delta Health would be presumed.
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`34.
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`DRMC’s use of the DRMC Marks, unless enjoined by this Court, has caused and
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`will continue to cause a likelihood of confusion and deception of members of the public, and
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`additionally will cause irreparable injury to Delta Health’s goodwill and reputation, for which
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`Delta Health has no adequate remedy at law.
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`35.
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`DRMC’s use of the DRMC Marks is likely to cause substantial injury to Delta
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`Health and, under 15 U.S.C. § 1125(a), Delta Health is entitled to injunctive relief and to recover
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`damages, costs, and reasonable attorneys’ fees.
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`COUNT III – Common Law Trademark Infringement and Unfair Competition
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`36.
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`37.
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`Delta Health repeats and incorporates the allegations contained above.
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`DRMC’s use of the DRMC Marks constitutes common law trademark infringement
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`of the Delta Health Marks and unfair competition under Mississippi law.
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`38.
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`DRMC’s use of the DRMC Marks has created and will continue to create a
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`likelihood of confusion, to the irreparable injury of Delta Health, unless restrained by this Court.
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`Delta Health has no adequate remedy at law for this injury.
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`39.
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`DRMC acted without Delta Health’s consent, and acted and is acting with full
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`knowledge of the Delta Health Marks and without regard to the likelihood of confusion of the
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`public that is created by DRMC’s activities.
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`40.
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`Delta Health is entitled to injunctive relief and to recover damages, costs, and
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`reasonable attorneys’ fees.
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`COUNT IV – State Trademark Infringement and Dilution
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`Delta Health repeats and incorporates the allegations contained above.
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`The Delta Health Marks are distinctive, strong, and famous and became so before
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`41.
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`42.
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`DRMC’s activities described in this Complaint.
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`43.
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`The Delta Health Marks are widely recognized by the general consuming public in
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`the Mississippi Delta as a designation of services of Delta Health,
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`44.
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`Delta Health and DRMC provide substantially similar services within the same
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`geographic area.
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`45.
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`46.
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`individuals.
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`47.
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`Delta Health and DRMC advertise using the same mediums and the same media.
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`Delta Health and DRMC offer substantially similar services to the same classes of
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`DRMC acted without Delta Health’s consent, and acted and is acting with full
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`knowledge of the Delta Health Marks and without regard to the likelihood of confusion of the
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`public that is created by DRMC’s activities.
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`48.
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`DRMC’s activities have caused and will continue to cause dilution of the distinctive
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`quality of the Delta Health Marks. DRMC’s conduct erodes the public’s exclusive identification
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`of these marks with Delta Health.
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`49.
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`DRMC’s acts constitute a violation of Mississippi’s anti-dilution statute. See Miss.
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`Code. Ann. § 75-25-25.
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`50.
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`Delta Health is entitled to injunctive relief and to recover damages, costs, and
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`reasonable attorneys’ fees.
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`COUNT V – Declaratory Judgment
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`51.
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`52.
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`Delta Health repeats and incorporates the allegations contained above.
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`DRMC’s use of the DRMC Marks in connection with the services provided by
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`DRMC is confusingly similar to the Delta Health Marks and is likely to cause confusion or mistake
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`or to deceive the public. DRMC’s use of marks confusingly similar to the Delta Health Marks in
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`connection with similar services is a violation of federal trademark laws.
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`53.
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`DRMC’s use of the DRMC Marks is likely to cause confusion, deception, and
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`mistake by creating the false and misleading impression that DRMC’s services are associated with
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`or connected to Delta Health, or have the sponsorship, endorsement, or approval of Delta Health.
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`54.
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`DRMC’s use of the DRMC Marks constitutes common law trademark infringement
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`and unfair competition, and has created and will continue to create a likelihood of confusion, to
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`the irreparable injury of Delta Health, unless restrained by this Court.
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`55.
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`DRMC’s activities have caused and will cause dilution of the distinctive quality of
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`the Delta Health Marks in violation of Mississippi’s anti-dilution statute. See Miss. Code Ann.
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`§ 75-25-25.
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`56.
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`Accordingly, Delta Health seeks and is entitled to a declaratory judgment that there
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`is a likelihood of confusion among individuals as to the Delta Health Marks and DRMC Marks,
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`that DRMC’s use of the DRMC Marks has diluted or will dilute the Delta Health Marks, that
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`DRMC’s use of the DRMC Marks has infringed or will infringe on the Delta Health Marks, and
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`Case: 4:21-cv-00077-DMB-JMV Doc #: 1 Filed: 06/08/21 10 of 11 PageID #: 10
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`that DRMC’s use of the DRMC Marks constitutes or will constitute unfair competition, unfair
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`trade practices, or deception.
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`PRAYER FOR RELIEF
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`Delta Health prays that judgment will be granted in its favor against DRMC as follows:
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`a.
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`That this Court enter a declaratory judgment that there is a likelihood of confusion
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`among individuals as to the Delta Health Marks and the DRMC Marks, that DRMC’s use of the
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`DRMC Marks has diluted or will dilute the Delta Health Marks, that DRMC’s use of the DRMC
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`Marks has infringed or will infringe on the Delta Health Marks, and that DRMC’s use of the
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`DRMC Marks constitutes or will constitute unfair competition, unfair trade practices, or deception;
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`b.
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`That this Court permanently enjoin DRMC from using the DRMC Marks, or any
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`confusingly similar version thereof, as a source identifier for the services offered by DRMC;
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`c.
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`That DRMC be required to compensate Delta Health for its damages, the costs of
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`this action, and reasonable attorneys’ fees; and
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`d.
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`That this Court award such other and further relief as shall be just under the
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`circumstances.
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` DELTA HEALTH CENTER, INC.
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`By: Warren K. Rogers, Jr._______
` One of Its Attorneys
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`Warren K. Rogers, Jr., MSB # 99230
`Claire D. Williams MSB # 106001
`BRUNINI, GRANTHAM, GROWER & HEWES, PLLC
`The Pinnacle Building, Suite 100
`190 East Capitol Street
`Jackson, MS 39201
`Telephone: (601) 948-3101
`Facsimile: (601) 960-6902
`krogers@brunini.com
`cwilliams@brunini.com
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`Case: 4:21-cv-00077-DMB-JMV Doc #: 1 Filed: 06/08/21 11 of 11 PageID #: 11
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`
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`Arnold Luciano, MSB #99198
`Jamie F. Lee, MSB #101881
`JACKS, GRIFFITH, LUCIANO, P.A.
`P.O. Box 1209
`Cleveland, MS 38732
`Telephone: (662) 843-6171
`Facsimile: (662) 84306176
`aluciano@jlpalaw.com
`jamie@jlpalaw.com
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