1/11. The U.S. Court of Appeals (4thCir) issued its opinion [16 pages in PDF] in CareFirst of Maryland v. First Care, a trademark infringement and dilution case, affirming the judgment of the District Court for the alleged infringer.

CareFirst of Maryland is a large health maintenance organization associated with Blue Cross Blue Shield. First Care is a small group of family care physicians located in southeastern Virginia. CareFirst of Maryland's predecessor registered "CARE-FIRST" as a trademark, service mark, and collective membership mark with the U.S. Patent and Trademark Office in 1989. First Care began its use of the term "First Care" in 1995. In 2004, CareFirst of Maryland filed a complaint in U.S. District Court (DMd) against First Care. It sought $28 Million in damages.

The District Court granted judgment to First Care, on the basis that there is no likelihood of confusion. The Court of Appeals affirmed.

Most of the opinion addresses the trademark infringement claim. The Court of Appeals wrote that "To demonstrate trademark infringement under the Lanham Act, a plaintiff must prove, first, that it owns a valid and protectable mark, and, second, that the defendant’s use of a ``reproduction, counterfeit, copy, or colorable imitation´´ of that mark creates a likelihood of confusion."

It then recited the 4th Circuit's seven part test for determining whether there exists a likelihood of confusion: "(1) the strength or distinctiveness of the plaintiff’s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant’s intent; and (7) actual confusion."

The Court first focused on actual confusion. It noted that CareFirst of Maryland's only evidence of actual confusion was the results of a telephone survey of 130 people who were CareFirst of Maryland members who lived in or near First Care's place of business. The survey found only two persons who had both heard of First Care and thought that it was related to or affiliated with CareFirst of Maryland. The Court thus concluded that there is no evidence of actual confusion.

The Court held that while "proof of actual confusion is not necessary to show a likelihood of confusion, the absence of any evidence of actual confusion over a substantial period of time -- here, approximately nine years -- creates a strong inference that there is no likelihood of confusion."

The Court went to evaluate the six other factors. It found that the mark is weak, rather than strong, because the words "care", "first", "first care", and "care first" are frequently used by others.

Next, on the question of the similarity of the marks, the Court found that the two entities use the marks differently, and hence, this factor favors First Care. It wrote that CareFirst of Maryland's "mark is almost always paired with the Blue Cross Blue Shield language, while the First Care mark is always presented by itself, or at most with the suffix ``P.C.´´"

Next, on the question of the similarity of the goods or services that the marks identify, the Court found that this factor favors neither party. Both are related to health care. However, the Court added that "the actual services offered by the parties do not even overlap. First Care only offers direct medical services to individuals. CareFirst does not; rather, it contracts with participating providers who agree to treat CareFirst members."

The Court continued that none of the other factors work in CareFirst of Maryland's favor. Hence, it affirmed the summary judgment of the District Court for First Care on the trademark infringement claim.

The Court also affirmed the summary judgment on the trademark dilution claim. It following the holding of the Supreme Court in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, that evidence of actual dilution is required. See, March 4, 2003 opinion [21 pages in PDF], and story titled "Supreme Court Rules in Trademark Dilution Case" in TLJ Daily E-Mail Alert No. 618, March 6, 2003.

This case is CareFirst of Maryland, Inc. v. First Care, App. Ct. No. 04-2493, an appeal from the U.S. District Court for the Eastern District of Virginia, at Norfolk, D.C. No. CA-04-191-2, Judge Robert Doumar presiding.

Perhaps it should be noted also that there is legislation pending in the Congress the would revise the Lanham Act as a result of the Moseley case. On April 19, 2005, the House approved HR 683, the "Trademark Dilution Revision Act of 2005" by a vote of 411-8. See, Roll Call No. 109. See, story titled "House Approves Trademark Dilution Bill" in TLJ Daily E-Mail Alert No. 1,119, April 20, 2005.

The House Judiciary Committee's Subcommittee on Courts, the Internet and Intellectual Property (CIIP) held a hearing on February 17, 2005. See, story titled "CIIP Subcommittee Holds Hearing On Trademark Dilution Revision Act" in TLJ Daily E-Mail Alert No. 1,081, February 23, 2005. The CIIP Subcommittee amended and approved this bill on March 3, 2005. See, story titled "House CIIP Subcommittee Amends and Approves Trademark Dilution Revision Act" in TLJ Daily E-Mail Alert No. 1,088, March 4, 2005. The House Judiciary Committee approved HR 683 on March 9, 2005. See, story titled "House Judiciary Committee Approves Trademark Dilution Bill" in TLJ Daily E-Mail Alert No. 1,093, March 11, 2005.

The Senate has yet to approve this bill.

1/11. David Rehr, P/CEO of the National Association of Broadcasters (NAB), sent a letter [3 pages in PDF] to Mitch Bainwol, Ch/CEO of the Recording Industry Association of America (RIAA), regarding "content protection issues associated with terrestrial digital radio broadcasting".

Rehr informed Bainwol that there are already many ways to steal copyrighted digital music, and that proposals to mandate encryption at the source are unwarranted.

Rehr wrote that the "NAB questions the degree to which HD Radio threatens copyright or will facilitate unauthorized, digital distribution of sound recordings. Those desiring to obtain and listen to pure, uninterrupted performances of sound recording in lieu of radio already have an abundant number of means to do so. Peer-to-peer file sharing and the hours of uninterrupted music that can be stored on CDs and discs are but a few such means. iPod uploads and digital music on the Internet would seem to present much larger and more immediate threats to copyright holders."

Rehr continued that the NAB opposses the RIAA's proposal to enact legislation that would empower the Federal Communications Commission (FCC) "to mandate that all radio broadcasters encrypt their digital content at the source".

"An encryption proposal would also likely obsolete HD Radio units already on the market and millions more currently in the manufacturing pipeline. By making obsolete receivers already installed in automobiles, an encryption proposal could increase automakers' frustration and potentially imperil the future integration of HD Radio units into automobiles."

Moreover, wrote Rehr, "mandatory encryption could set back the hundreds of broadcasters who have already licensed and are deploying (or have deployed) HD Radio transmission equipment. An overly broad encryption system would risk making these stations’ broadcast transmission equipment obsolete."

1/15. The Department of Homeland Security (DHS) began a test of its e-Passports technology, which involves chips with biographic and biometric information, at Terminal G of the San Francisco International Airport (SFO). See, DHS release.

1/13. The Office of the U.S. Trade Representative (USTR) released a statement by Barbara Weisel, an Assistant USTR, regarding trade negotiations with Thailand. She stated that "we could be in the position of concluding this agreement by the spring", but that "We have a significant amount of work remaining to conclude this agreement within the timeframe we have set". She said that this free trade agreement (FTA) would "eliminate tariffs on trade between the United States and Thailand". She added that this FTA would also "liberalize the Thai services sector, including telecommunications, financial services, distribution, and other sectors, and strengthen the protection of intellectual property".

1/13. The Federal Communications Commission (FCC) released the agenda [PDF] for its event on January 20 titled "Open Meeting". Consistent with January meetings in prior years, the Commission will not vote on the adoption of any items. Rather, the Commissioner will hear reports from various of the bureaus and offices of the FCC. The meeting is scheduled for 9:30 AM on Friday, January 20, 2006, in the Commission Meeting Room, 445 12th Street, SW.

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The House will not meet. It will convene for the 2nd Session of the 109th Congress on Tuesday, January 31, 2006. See, Majority Whip's calendar.

The Senate will not meet. It will convene for the 2nd Session of the 109th Congress on Wednesday, January 18, 2006. See, 2006 Senate calendar.

Martin Luther King's birthday.

The Federal Communications Commission (FCC) and other federal offices will be closed. See, Office of Personnel Management's (OPM) list of federal holidays.

12:00 NOON. Former Vice President Al Gore will give a speech regarding the National Security Agency's (NSA) domestic electronic surveillance program. See, notice. Location: DAR Constitution Hall, 1776 D St., NW.

Deadline to submit comments to the Executive Office of the President's (EOP) Office of Science and Technology Policy (OSTP) regarding its "Proposed Principles for Federal Support of Graduate and Postdoctoral Education and Training in Science and Engineering". See, notice in the Federal Register, November 16, 2005, Vol. 70, No. 220, at Pages 69563 - 69565.

10:30 AM. Michael Chertoff (Secretary of Homeland Security) and Condoleezza Rice (Secretary of State) will announce a "Joint Vision: Secure Borders and Open Doors in the Information Age". The DHS notice states that "Media should enter from the 23rd Street Entrance. ... Final access time for all media is 9:45 a.m. ... For more information please contact the DHS Press Office at 202-282-8010 or Department of State Public Affairs at 202-647-0001. Location: Dean Acheson Auditorium, Department of State’s Truman Building, 2201 C St., NW.

11:00 AM. The Senate Judiciary Committee (SJC) has scheduled an executive business meeting. The sole item on the agenda is consideration of the nomination of Judge Sam Alito to be a Justice of the Supreme Court. See, notice. Location: Room 226, Dirksen Building.

12:15 PM. The Federal Communications Bar Association's (FCBA) Cable Practice Committee will host a brown bag lunch titled "The Top Ten Technological Trends Everybody Should Know About". The speakers will be John Wong and the staff of the Federal Communications Commission's (FCC) Media Bureau's Engineering Division. RSVP to Ben Golant at ben dot golant at fcc dot gov. Location: Willkie Farr & Gallagher, 1875 K St., NW.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to the notice of proposed rulemaking (NPRM) portion of its Report and Order (R&O) and NPRM of August 5, 2005 regarding regulation of information services. The R&O classified wireline broadband internet access services as information services. The NPRM proposes to impose new regulatory burdens on information services. This item is FCC 05-150 in WC Docket No. 05-271, CC Docket No. 02-33, CC Docket No. 01-337, CC Docket Nos. 95-20 and 98-10, and WC Docket No. 04-242. See, story titled "FCC Classifies DSL as Information Service" in TLJ Daily E-Mail Alert No. 1,190, August 8, 2005. The FCC released the text [133 pages in PDF] of this item on September 23, 2005. See, notice in the Federal Register, October 17, 2005, Vol. 70, No. 199, at Pages 60259 - 60271.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its notice of proposed rulemaking regarding its rules affecting Wireless Radio Services. This item is FCC 05-144 in WT Docket Nos. 03-264. The FCC adopted this item on July 22, 2005. It released the text [67 pages in PDF] on August 9, 2005. See, notice in the Federal Register, October 19, 2005, Vol. 70, No. 201, at Pages 60770 - 60781.

Deadline to submit reply comments to the Federal Communications Commission (FCC) regarding a petition for rulemaking of 13 hearing impairment related entities. Their petition requests that the FCC initiate a rulemaking proceeding to mandate captioned telephone relay service and to approve internet protocol captioned telephone relay service. The FCC's Public Notice [PDF] states that "Captioned telephone service is a form of telecommunications relay service (TRS) that permits persons to simultaneously both listen to what the other party is saying and read captions of what the other party is saying on the same device. Presently the service is eligible for compensation from the Interstate TRS Fund (Fund), but is not mandatory. The petition asks the Commission to initiate a rulemaking for the purpose of making captioned telephone service a mandatory form of TRS and approving Internet Protocol (IP) captioned telephone service as eligible for compensation from the Fund." (Footnotes omitted). This notice is DA 05-2961 in CG Docket No. 03-123. See also, notice in the November 30, 2005, Vol. 70, No. 229, at Pages 71849 - 71850.

The Senate will convene for the 2nd Session of the 109th Congress. See, 2006 Senate calendar.

8:30 AM - 5:30 PM. The Cyber Security Industry Alliance (CSIA) will host a conference titled "The Legal Implications of Data Integrity". See, agenda. The price to attend ranges from $95 to $195. Location: Jack Morton Auditorium, Media and Public Affairs Building, George Washington University, 805 21st St., NW.

12:00 NOON - 1:15 PM. The DC Bar Association's Intellectual Property Law Section and Patent Section will host a panel discussion titled "Current Topics in Patent Law: Patent Pools and Standards Bodies". The speakers will include James Kulbaski (Oblon Spivak). The price to attend ranges from $10-$30. For more information, call 202 626-3463. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

2:00 - 4:00 PM. The Department of State's International Telecommunication Advisory Committee (ITAC) will hold the second in a series of weekly meetings to prepare for the International Telecommunications Union's (ITU) 2006 ITU Plenipotentiary Conference, to be held November 6-24, 2006, in Antalya, Turkey. See, notice in the Federal Register, December 21, 2005, Vol. 70, No. 244, at Page 75854. This notice incorrectly states that these meetings will be held on Tuesdays; they are on Wednesdays. For more information, contact Julian Minard at 202 647-2593 or minardje at state dot gov. Location: AT&T, 1120 20th St., NW.

6:00 - 8:15 PM. The DC Bar Association will host a continuing legal education (CLE) seminar titled "50 Tips For Ethical and Effective Web Sites for Lawyers and Law Firms". The speakers will include Walter Effross (American University law school). The price to attend ranges from $70-$125. For more information, call 202 626-3488. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its Notice of Proposed Rulemaking (NPRM) [24 pages in PDF] regarding amendments to its unsolicited facsimile advertising rules and the established business relationship (EBR) exception to the rules. This NPRM was adopted by the FCC on December 9, 2005, and released on December 9, 2005. It is FCC 05-206 in CG Docket No. 02-278. See, notice in the Federal Register, December 19, 2005, Vol. 70, No. 242, at Pages 75102 - 75110.

8:00 - 9:30 AM. The U.S. Chamber of Commerce will host an event titled "Policy Insiders with FBI Director Robert Mueller". See, notice. The price to attend ranges from $55 to $75. For more information, contact Matt Haller at mhaller at uschamber dot com or 202 463-3176. Location: U.S. Chamber 1615 H St., NW.

TIME CHANGE. 8:00 AM - 2:45 PM. The Information Technology Association of America (ITAA) will host an event titled "Base Realignment and Closure: Moving Forward with Information Technology". The speakers will include Linton Wells (Principal Deputy Assistant Secretary of Defense, Networks and Information Integration), Anthony Principi (Chairman 2005 BRAC Commission), Philip Grone (Deputy Undersecretary of Defense, Installations and Environment), Robert Carey (Deputy CIO Officer for Policy and Integration, Department of the Navy), and Gary Winkler (Director, Governance, Acquisition and Chief Knowledge Center, G-6/Department of the Army). See, notice. Press contact: Bob Cohen at 703 284-5301 or Charlie Greenwald at 703 284-5305. Location: Ritz Carlton, Pentagon City, VA.

10:00 AM. The Senate Commerce Committee (SCC) will hold a hearing titled "Decency". The scheduled witnesses are Jack Valenti (MPAA), Charles Ergen (EchoStar), David Cohen (Comcast), Bruce Reese (National Association of Broadcasters), Brent Bozell (Parents Television Council), Martin Franks (CBS), Alan Rosenberg (Screen Actors Guild), and Jeff McIntyre (American Psychological Association). See, notice. Press contact: Melanie Alvord (Stevens) at 202 224-8456, Aaron Saunders (Stevens) at 202 224-3991, or Andy Davis (Inouye) at 202 224-4546. The hearing will be webcast by the SCC. Location: Room 562, Dirksen Building.

10:00 AM. Rep. Nancy Pelosi (D-CA), members of the House Democratic Caucus, and others will host a panel discussion titled "House Democrats' New Innovation Agenda". For more information, contact Brendan Daly or Jennifer Crider at 202 226-7616. Location: Room 345, Cannon Building.

12:00 NOON - 1:30 PM. The DC Bar Association's Intellectual Property Law Section and Trademark Committee will host a panel discussion titled "Trademark Policing And Enforcement". The speakers will include Melise Blakeslee (McDermott Will & Emery) and Alan Cooper (Howery & Simon). The price to attend ranges from $20-$40. For more information, call 202 626-3463. See, notice. Location: D.C. Bar Conference Center, 1250 H Street NW, B-1 Level.

1:00 - 4:00 PM. The Antitrust Modernization Commission (AMC) will hold a hearing titled "Economists' Roundtable on U.S. Merger Enforcement". See, notice in the Federal Register, December 29, 2005, Vol. 70, No. 249, at Page 77121. Location: Federal Trade Commission, Conference Center, 601 New Jersey Ave., NW.

2:30 PM. The Senate Commerce Committee (SCC) will hold a hearing titled "Internet Pornography". See, notice. Press contact: Melanie Alvord (Stevens) at 202 224-8456, Aaron Saunders (Stevens) at 202 224-3991, or Andy Davis (Inouye) at 202 224-4546. The hearing will be webcast by the SCC. Location: Room 562, Dirksen Building.

7:30 - 10:30 AM. The National Venture Capital Association (NVCA) will host an event titled "Personal Liability of Private Company Directors & Officers: How to Protect Yourself in Today's Environment". The NVCA notice states that "Attendance at this event is by invitation only". Location: Ritz Carlton, 1700 Tysons Blvd., McLean, VA.

Deadline to submit oppositions to the U.S. Telecom Association's petition [PDF] seeking reconsideration and clarification of the Federal Communications Commission's (FCC) CALEA order. This is the FCC's order that provides that facilities based broadband service providers and interconnected VOIP providers are subject to requirements under the 1994 Communications Assistance for Law Enforcement Act (CALEA). The FCC adopted, but did not release, this item at its August 5, 2005, meeting. See, story titled "FCC Amends CALEA Statute" in TLJ Daily E-Mail Alert No. 1,191, August 9, 2005. The FCC released the text [59 pages in PDF] of this item on September 23, 2005. It is FCC 05-153 in ET Docket No. 04-295 and RM-10865. The USTelecom argues that the FCC "should reconsider its decision to start the 18-month CALEA compliance clock on November 14, 2005, and instead should start that clock on the effective date of its forthcoming order on CALEA capability requirements for broadband and VoIP providers". It also argues that the FCC should "clarify and delineate the specific broadband access services that qualify as ``newly covered services´´ under the CALEA Applicability Order." See, notice in the Federal Register.January 4, 2006, Vol. 71, No. 2, at Pages 345 - 346.

9:30 AM. The Federal Communications Commission (FCC) will hold a meeting. The event will be webcast by the FCC. Location: FCC, 445 12th Street, SW, Room TW-C05 (Commission Meeting Room).

9:30 - 11:00 AM. The Progressive Policy Institute (PPI) will host an event titled "Investing in Innovation -- The UK Model". The speaker will be Jonathan Kestenbaum, CEO of the U.K.'s National Endowment for Science, Technology and the Arts (NESTA). For more information, contact Austin Bonner at 202 547-0001 or abonner at dlc dot org. Location: PPI, 600 Pennsylvania Avenue, SE, Suite 400.

12:00 NOON. The Federal Communications Bar Association (FCBA) will host an luncheon titled "70th Anniversary Luncheon: Looking Forward, Looking Back". The speakers will be former Chairmen of the Federal Communications Commission (FCC), including William Kennard, Michael Powell, James Quello, Alfred Sikes, and Richard Wiley. Location: J.W. Marriott Hotel.

Advanced effective date of the Federal Communications Commission's (FCC) rule requiring certain new television receivers and other TV receiving devices such as VCRs and digital video recorders to be capable of receiving digital television signals. See, FCC's Second Report and Order adopted on November 3, 2005, and released on November 8, 2005. It is FCC 05-190 in ET Docket No. 05-24. See also, notice in the Federal Register, December 21, 2005, Vol. 70, No. 244, at Pages 75739 - 75743.