## Facts

- Columbia University, a nonprofit university in New York City, operated educational programs and an affiliated academic medical center using “Columbia” in names such as “Columbia-Presbyterian Medical Center.”
- Columbia University held a federal service-mark registration for “Columbia University” limited to educational services.
- Columbia/HCA, a for-profit healthcare company operating hospitals nationwide, used “Columbia” in its corporate name since its founding.
- In 1995, Columbia/HCA standardized its branding and adopted a “Diamond-C” Columbia logo across its facilities.
- “Columbia” was widely used by third parties in the healthcare field, and Columbia University had long known of Columbia/HCA’s use without objecting.
- Columbia University alleged that Columbia/HCA’s use of “Columbia” for healthcare services would cause the public to believe Columbia/HCA was affiliated with, sponsored by, or connected to the university.

## Issues

1. Whether Columbia/HCA’s use of “Columbia” in connection with medical and healthcare services created a likelihood of confusion under the Lanham Act and related common-law theories.
2. Whether “Columbia,” as asserted by Columbia University for healthcare-related services, was sufficiently distinctive and famous to support federal and New York dilution claims.
3. Whether the strength of “Columbia,” given extensive third-party use and the parties’ differing presentation, supported exclusive rights broad enough to restrict defendant’s use.

## Decision

- The court entered judgment for Columbia/HCA after a bench trial.
- The court rejected the Lanham Act and common-law infringement/false designation claims because Columbia University failed to prove a likelihood of confusion.
- The court rejected federal and New York dilution claims, concluding the asserted “Columbia” mark was not sufficiently distinctive or famous in the healthcare context to justify dilution protection.
- The court denied all requested remedies, including injunctive relief, damages, profits, treble damages, corrective advertising, and attorneys’ fees.

## Legal Principles

- Likelihood of confusion is determined by a multi-factor analysis that includes mark strength, similarity, proximity of services, actual confusion, defendant’s good faith, and consumer sophistication.
- Common or geographically suggestive terms subject to extensive third-party use are comparatively weak marks, limiting the scope of protection in the relevant market.
- Differences in full names and trade dress can reduce the probability that shared word elements will confuse consumers.
- Longstanding knowledge of another’s use without objection can weigh against a later claim that the use is substantially confusing or harmful.
- Dilution protection requires a showing of fame and distinctiveness; a shared term used widely by many entities generally cannot support broad anti-dilution relief absent strong proof of unique source identification in the relevant field.

## Conclusion

The court held that Columbia University did not establish likely confusion or actionable dilution arising from Columbia/HCA’s use of “Columbia” for healthcare services, largely because the term was weak in that market, the parties’ overall branding differed, evidence of confusion was insufficient, and defendant acted without bad faith; judgment was entered for Columbia/HCA with no injunctive or monetary relief.


Trs. of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733 (S.D.N.Y. 1997)