## Facts

- Guthrie Healthcare System, a nonprofit healthcare provider, used a registered logo consisting of its name next to a shield bearing a stylized human figure, displayed on facilities, communications, and online.
- ContextMedia, a digital health-content company serving physician offices nationwide, adopted and registered a shield-and-figure logo the court found extraordinarily similar to Guthrie’s.
- Although the parties provided different services, their activities overlapped within the broader healthcare ecosystem, including through physician offices and online channels.
- Guthrie’s core patient-service operations were concentrated in a defined regional service area, but it also recruited, fundraised, conducted research, and maintained reputation-related activities beyond that region, including via the internet.
- After a bench trial, the district court found a likelihood of confusion within Guthrie’s service area and entered a permanent injunction limited to that area, while permitting ContextMedia’s continued use outside the area and without restriction on websites and social media.
- The district court declined to impose individual liability on ContextMedia’s president, Rishi Shah.

## Issues

1. Whether ContextMedia’s use of its logo created a likelihood of confusion with Guthrie’s registered mark under the Lanham Act.
2. Whether the district court erred by limiting injunctive relief to Guthrie’s regional service area while allowing unrestricted internet and out-of-area use.
3. Whether a senior user must prove a likelihood of confusion in each geographic area as a prerequisite to an injunction covering that area.

## Decision

- The Second Circuit affirmed the finding of trademark infringement and likelihood of confusion.
- The Second Circuit vacated the injunction to the extent it was limited to Guthrie’s service area and permitted unrestricted internet and out-of-area use.
- The court remanded for entry of broader injunctive relief consistent with preventing likely confusion beyond Guthrie’s immediate service area.
- The court left undisturbed the district court’s refusal to hold Shah individually liable.

## Legal Principles

- A senior user seeking an injunction must prove a probability of confusion to obtain injunctive relief.
- An injunction is not necessarily limited to the precise geographic areas in which the senior user has already shown likely confusion; broader relief may be ordered when reasonably necessary to prevent likely confusion and protect the senior user’s ability to expand.
- Injunctive scope must account for modern channels of trade, including internet use, where geographic boundaries may not meaningfully limit consumer exposure and confusion.
- Courts must consider both the trademark owner’s interests and the public interest in avoiding marketplace confusion when crafting trademark injunctions.

## Conclusion

The Second Circuit upheld liability for confusingly similar marks but required a broader injunction, holding that once infringement is shown, injunctive relief may extend beyond the plaintiff’s proven local market—including limits on online use—when needed to prevent likely confusion and protect future expansion and the public from deception.


Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27 (2d Cir. 2016)