Johnson & Morris, Pllc v. Abdelbaky & Boes, Pllc

Johnson & Morris, PLLC v. Abdelbaky & Boes, PLLC, 2017 NCBC 87.

STATE OF NORTH CAROLINA IN THE GENERAL COURT OF JUSTICE
SUPERIOR COURT DIVISION
COUNTY OF WAKE 16 CVS 6151

JOHNSON & MORRIS, PLLC, d/b/a
CAROLINA PEDIATRIC
DENTISTRY,
Plaintiff,

v.

ABDELBAKY & BOES, PLLC, d/b/a
CAROLINA ORTHODONTICS AND OPINION AND ORDER ON
CHILDREN’S DENTISTRY a/k/a DEFENDANT’S MOTION FOR
CAROLINA ORTHODONTICS AND SUMMARY JUDGMENT
PEDIATRIC DENTISTRY a/k/a
CAROLINA PEDIATRIC
DENTISTRY AND
ORTHODONTICS a/k/a CAROLINA
ORTHODONTICS AND
CHILDREN’S DENTISTRY a/k/a
CAROLINA ORTHODONTIC AND
PEDIATRIC DENTISTRY a/k/a
CAROLINA PEDIATRIC
DENTISTRY AND ORTHO a/k/a
CAROLINA ORTHO AND PEDO
DENTISTRY,

Defendant.

THIS MATTER comes before the Court on Defendant Abdelbaky & Boes,

PLLC’s Motion for Summary Judgment (“Motion”) pursuant to Rule 56 of the North

Carolina Rules of Civil Procedure (“Rule(s)”).

THE COURT, after considering the Motion, the briefs in support of and in

opposition to the Motion, the evidentiary materials filed by the parties, the

arguments of counsel at the hearing, and other appropriate matters of record,

concludes that the Motion should be GRANTED for the reasons set forth below.

Morningstar Law Group by J. Christopher Jackson, Esq., Shannon
Joseph, Esq., and John Kivas, Esq.; and Hutchison PLLC by Trevor P.
Schmidt, Esq. for Plaintiff Johnson & Morris, PLLC.
Hedrick Gardner Kincheloe & Garofalo, LLP by Patricia Shields, Esq.
and Joshua D. Neighbors, Esq. for Defendant Abdelbaky & Boes, PLLC.

McGuire, Judge.

INTRODUCTION

1. This action arises from a dispute involving Defendant’s use of the name

Carolina Orthodontics and Children’s Dentistry for its orthodontics and pediatric

dentistry practice located in western Wake County. Plaintiff Johnson & Morris, PLLC

alleges that Defendant’s use of Carolina Orthodontics and Children’s Dentistry

violates its common law trademark rights in the trade name Carolina Pediatric

Dentistry, and that Defendant’s use of Carolina Orthodontics and Children’s

Dentistry constitutes an unfair trade practice. Plaintiff contends that Defendant

seeks to appropriate for itself the goodwill that Plaintiff has established in providing

pediatric dentistry services by willfully naming its practice in a way that confuses

and misleads consumers to believe that Defendant’s practice is affiliated with

Plaintiff. Plaintiff seeks a permanent injunction prohibiting Defendant from doing

business under the name Carolina Orthodontics and Children’s Dentistry or any

other name containing the word Carolina. Plaintiff also seeks an award of damages.

FACTUAL AND PROCEDURAL BACKGOUND

2. The Court does not resolve material issues of fact on motions for

summary judgment under Rule 56, but only decides whether material issues of fact

exist. See Alford v. Shaw, 327 N.C. 526, 539, 398 S.E.2d 445, 452 (1990). Here, the
Court recites those facts included in the record that are relevant to the Court’s

determination of the Motion.

3. Dr. E. LaRee Johnson, D.D.S. (“Dr. Johnson”) is founder and principal

of Carolina Pediatric Dentistry and operates the practice with her partner, Dr. Clark

Morris (“Dr. Morris”). Plaintiff is a specialized pediatric dentistry practice and treats

only children. Pediatric dentistry involves the treatment of infants, children, teens,

and children with special needs, and requires that a dentist satisfactorily complete a

minimum of 24 months in an accredited pediatric dentistry education program. Drs.

Johnson and Morris are both board certified specialists in pediatric dentistry.

Plaintiff operates one office located in north Raleigh, North Carolina that does

business under the name Carolina Pediatric Dentistry. Plaintiff opened for business

in 2002 and has done business as Carolina Pediatric Dentistry since at least March

2004. (Verified Compl., ECF No. 1 at ¶ 9.)

4. Plaintiff services patients who reside within approximately 75-miles

surrounding its office, including patients residing in Raleigh, Durham, Cary, Fuquay-

Varina, Morrisville, Wilson, and other nearby towns. (Morris Dep., ECF No. 111, Ex.

5 at pp. 44–45.) Plaintiff submits that this geographic area establishes Plaintiff’s

geographic market for the purposes of this litigation. (Pl.’s Resp. Opp. Def.’s Mot.

Summ. J., ECF No. 82 at pp. 3–4.) (Hereinafter, the Court will refer to this area as

Plaintiff’s “Market Area”.)

5. To attract new patients to its practice, Plaintiff relies heavily on “word-

of-mouth” referrals from other dentists and healthcare providers and parents of
existing patients. (2d Johnson Aff., ECF No. 24 at ¶¶ 11–12.) Plaintiff also markets

its practice through special presentations to interest groups and schools and through

the use of a commercial website (www.carolinapedo.com) and a Facebook page

(www.facebook.com/carolinapediatricdentistry).

6. In late 2006, Plaintiff attempted to register the Carolina Pediatric

Dentistry name with the United States Patent and Trademark Office (“USPTO”). The

USPTO refused registration on the principal registry because “the proposed mark

merely describes the geographic region where the applicant provides its goods.” (ECF

No. 17.1, Ex. A.) On March 4, 2015, Plaintiff registered the Carolina Pediatric

Dentistry name with the Wake County Register of Deeds. (ECF No. 1.1, Ex. 6.)

Plaintiff has not registered the name Carolina Pediatric Dentistry as a trademark

with the North Carolina Secretary of State.1

7. Defendant is owned by Drs. Hesham Abdelbaky (“Dr. Abdelbaky”) and

Jonathan Boes (“Dr. Boes”). Defendant operates two dental practices in and around

the greater Wake County area: Triangle Family Dentistry (“Triangle”), and Carolina

Orthodontics and Children’s Dentistry. (Alvey Dep., ECF No. 111, Ex. 1 at pp. 22–

23.) Triangle is a general dentistry practice with four offices in Cary, Morrisville,

Wake Forest, and Fuquay-Varina. (Abdelbaky Dep., ECF No. 111, Ex. 7 at p. 7.)

Carolina Orthodontics and Children’s Dentistry is an orthodontic/pediatric dentistry

practice (“ortho/pedo”) with two offices; one in Cary and one in Fuquay-Varina. (Id.)

Dr. Jesse Arbon (“Dr. Arbon”) provides orthodontic services at the Cary and Fuquay-

1 See N.C. General Statute § 80.1 et seq. (hereinafter “G.S.”).
Varina offices. Both Carolina Orthodontics and Children’s Dentistry offices are

located more than 25 miles from Carolina Pediatric Dentistry’s office.

8. Defendant decided to add a pediatric dentistry practice to its orthodontic

practice in its offices in Cary and Fuquay-Varina in 2015, and hired Drs. Jordan

Olsen (“Dr. Olsen”) and Jenna Alvey (“Dr. Alvey”), both of whom had completed their

residencies in pediatric dentistry at the University of North Carolina. (Olsen Dep.,

ECF No. 111, Ex. 6 at pp. 25–28; ECF No. 111, Ex. 1 at pp. 22–23.) Defendant’s

ortho/pedo practice opened for business in January 2016 under the name Carolina

Orthodontic and Pediatric Dentistry.

9. Defendant has presented evidence that Dr. Arbon recommended using

Carolina in the name of the ortho/pedo practice and that Drs. Abdelbaky and Arbon

made the final decision to use Carolina in the name. (Arbon Dep., ECF No. 111, Ex.

2 at pp. 68–69.) At the time he recommended the name Carolina, Dr. Arbon was not

aware of the existence of Plaintiff’s practice. (Arbon Decl., ECF No. 14 at ¶ 9.)

10. Drs. Olsen and Alvey, however, testified that it was Dr. Alvey’s husband

who suggested the use of Carolina in the ortho/pedo practice’s name during a dinner

with Dr. Abdelbaky and Dr. Arbon. (ECF No. 111, Ex. 6 at p. 39; ECF No. 111, Ex. 1

at p. 41.) When Dr. Alvey’s husband made the suggestion, Dr. Olsen mentioned to Dr.

Alvey that Carolina Pediatric Dentistry was the name of Plaintiff’s practice. (ECF

No. 111, Ex. 6 at pp. 40–41; ECF No. 111, Ex. 1 at pp. 75–76.) Drs. Olsen and Alvey,

however, did not believe the use of the name Carolina was a problem because

Defendant’s practice was located a significant distance from Plaintiff’s practice, and
because Defendant’s name included “orthodontics.” (ECF No. 111, Ex. 6 at p. 41; ECF

No. 111, Ex. 1 at p. 76.) Dr. Olsen and Dr. Alvey do not know if Dr. Abdelbaky or Dr.

Abron heard their discussion about Plaintiff’s use of Carolina in its name. (Id.)

11. Defendant presented evidence that it selected the name Carolina for

several reasons including its geographic descriptiveness, the fact that several of the

doctors in the practice had attended or completed residencies at UNC-Chapel Hill,

and the fact that the word Carolina contains two “A”s, which would allow Dr. Arbon

to maintain an element of his existing logo that consisted of a stylized letter “A” with

braces forming the horizontal line in the letter. (ECF No. 111, Ex. 1 at p. 79; ECF No.

111, Ex. 2 at pp. 69–70; ECF No. 111, Ex. 6 at pp. 25–26, 38–39.)

12. Plaintiff became aware that Defendant was using the name Carolina

Orthodontic and Pediatric Dentistry in January 2016, when Dr. Johnson visited

Defendant’s Cary location to perform a sedation site visit on behalf of the North

Carolina State Board of Dental Examiners. (Johnson Dep., ECF No. 111, Ex. 4 at

p. 58.) Shortly thereafter, Dr. Morris contacted Dr. Olsen by phone and indicated

Plaintiff’s objection to Defendant’s use of Carolina for its ortho/pedo practice. (Morris

Dep., ECF No. 86.2 at pp. 52, 53–54; ECF No. 111, Ex. 6 at p. 131.)

13. On or about March 15, 2016, Plaintiff sent a letter to Defendant to

“object to the use of Carolina Orthodontic and Pediatric Dentistry and any similar

assumed names and/or trademark” by Defendant. (ECF No. 1 at ¶ 23; ECF No. 1.2

at Ex. 10.) In an effort to resolve the dispute, Defendant changed the name of its

ortho/pedo practice to Carolina Orthodontics and Children’s Dentistry. (ECF No. 111,
Ex. 2 at pp. 76–77.) Plaintiff, however, continues to object to Defendant’s use of the

word Carolina in its name. (Johnson Dep., ECF No. 86 at p. 113.)

14. Plaintiff contends that there have been instances of actual confusion

between Carolina Pediatric Dentistry and Carolina Orthodontics and Children’s

Dentistry among consumers. While giving a presentation in Cary in March 2016, Dr.

Johnson overheard other dentists expressing the belief that she had recently opened

a Cary office. (ECF No. 86 at p. 104.) Additionally, Plaintiff offered the hearsay

testimony of Dr. Morris that Plaintiff received two calls from unknown callers asking

if Plaintiff had opened a second location in Cary. (ECF No. 86.2 at p. 88.)

15. Plaintiff initiated this action by filing a Verified Complaint and Motion

for Temporary Restraining Order and Preliminary Injunction on May 6, 2016. (ECF

No. 1.) The Verified Complaint makes claims for unfair competition based on

Defendant’s alleged infringement of Plaintiff’s business name (ECF No. 1 at ¶¶ 39–

41), and for unfair and deceptive trade acts and practices in violation of the North

Carolina Unfair and Deceptive Trade Practices Act (“NCUDTPA”), G.S. § 75-1.1.

(ECF No. 1 at ¶¶ 43–49.) Plaintiff’s claims are premised on its contention that it has

a protectable interest in the exclusive use of Carolina as trademark in connection

with providing pediatric dentistry services in the Market Area. The Verified

Complaint seeks a permanent injunction and damages, including punitive damages.

16. On September 21, 2016, the Court held a hearing on Plaintiff’s Motion

for Preliminary Injunction. On October 11, 2016, the Court entered an Order on

Motion for Preliminary Injunction denying Plaintiff’s request for a preliminary
injunction. Johnson & Morris PLLC v. Abdelbaky & Boes, PLLC, 2016 NCBC LEXIS

78 (N.C. Super. Ct. October 11, 2016).

17. On February 28, 2017, Defendant filed the Motion and a Memorandum

in Support. (ECF Nos. 71 and 72.) On May 12, 2017, Plaintiff filed its Response in

Opposition to the Motion. (ECF No. 82.) On June 12, 2017, Defendant filed a Reply.

(ECF No. 107.) Both parties filed extensive evidentiary materials, including affidavits

and deposition transcripts, in support of their respective positions.

18. On June 29, 2017, the Court held a hearing on the Motion, and the

Motion is now ripe for disposition.

ANALYSIS

19. Plaintiff brings claims for unfair competition and for unfair and

deceptive trade practices against Defendant. Both claims are grounded on Plaintiff’s

contention that it has a protectable interest in the use of the word Carolina in

connection with the offering of pediatric or children’s dental services in the Market

Area. Defendant moves for Summary Judgment on the grounds that Plaintiff has no

protectable interest in the use of the word Carolina and that Plaintiff has failed to

show Defendant’s use of the word Carolina is likely to cause confusion amongst

consumers of pediatric dental services.

Summary Judgment Standard

20. “Summary judgment is appropriate if the pleadings, depositions,

answers to interrogatories, and admissions on file, together with affidavits, if any,

show that there is no genuine issue of material fact and that any party is entitled to
judgment as matter of law.” Variety Wholesalers, Inc. v. Salem Logistics Traffic

Servs., LLC, 365 N.C. 520, 523, 723 S.E.2d 744, 747 (2012). An issue is “material” if

“resolution of the issue is so essential that the party against whom it is resolved may

not prevail.” McNair v. Boyette, 282 N.C. 230, 235, 192 S.E.2d 457, 460 (1972). The

moving party bears “the burden of clearly establishing lack of a triable issue to the

trial court.” N.C. Farm Bureau Mut. Ins. Co. v. Sadler, 365 N.C. 178, 182, 711 S.E.2d

114, 116 (2011) (quotation marks omitted). The moving party may meet this burden

by “proving an essential element of the opposing party’s claim does not exist, cannot

be proven at trial, or would have been barred by an affirmative defense.” Variety

Wholesalers, Inc., 365 N.C. at 523, 723 S.E.2d at 747. In considering a motion for

summary judgment, all evidence is viewed in the light most favorable to the

nonmoving party with the benefit of all reasonable inferences. Bruce-Terminix Co. v.

Zurich Ins. Co., 130 N.C. App. 729, 733, 504 S.E.2d 574, 577 (1998).

21. “If the movant demonstrates the lack of a genuine issue of material fact,

the burden shifts to the non-movant to present specific facts which establish the

presence of a genuine factual dispute for trial.” In re Will of Jones, 362 N.C. 569, 573

669 S.E.2d 572, 576 (2008) (citing Lowe v. Bradford, 305 N.C. 366, 369–70, 289 S.E.2d

363, 366 (1982)). In determining whether the non-movant has met its burden, the

judge “unavoidably asks whether reasonable jurors could find by a preponderance of

the evidence that the plaintiff is entitled to a verdict . . . .” Sloan v. Miller Bldg. Corp.,

119 N.C. App. 162, 165-66, 458 S.E.2d 30, 32 (1995) (quoting Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 252-55 (1986)) (quotations and emphasis omitted). As
recently reiterated by the North Carolina Court of Appeals, the burden on the non-

movant goes beyond merely producing some evidence, or a scintilla of evidence, in

support of its claims. Rather,

[i]f the movant meets [its] burden, the nonmovant must
take affirmative steps to set forth specific facts showing the
existence of a genuine issue of material fact. An adverse
party may not rest upon the mere allegations or denials of
his pleading. A genuine issue of material fact is one that
can be maintained by substantial evidence. Substantial
evidence is such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion and
means more than a scintilla or a permissible inference.

Khashman v. Khashman, No. COA16-765, 2017 N.C. App. LEXIS 715, at *15 (Sept.

5, 2017) (citations and quotation marks omitted). In summary, this Court must decide

“not whether there is literally no evidence, but whether there is any upon which a

jury could properly proceed to find a verdict for the party producing it, upon whom

the onus of proof is imposed.” Anderson, 477 U.S. at 251.2

Unfair Competition/ Trademark Infringement

22. In its First Claim for Relief, Plaintiff alleges that Defendant has

engaged in “unfair competition . . . as a direct and proximate result of the consumer

confusion” caused by Defendant’s use of the name Carolina Orthodontics and

Children’s Dentistry. (ECF No. 1 at ¶ 40.) Plaintiff contends its “principal assertion

2 The Supreme Court of North Carolina has held that “Federal Rule 56 is substantially the

same as our Rule 56, and we therefore look to the Federal decisions for guidance in applying
our rule.” Singleton v. Stewart, 280 N.C. 460, 464, 186 S.E.2d 400, 403 (1972); see also Dendy
v. Watkins, 288 N.C. 447, 452, 219 S.E.2d 214, 217 (1975) (“Federal Rule 56 is substantially
the same as Rule 56 of Chapter 1A-1 of the General Statutes and, therefore, it is proper for
us to look at the federal decisions and textbooks as well as our own for guidance in applying
the rule.”).
is that Defendant’s use of Carolina Orthodontics and Children’s Dentistry is a form

of unfair competition involving the infringing use of Plaintiff’s common law

trademark.” (ECF No. 82 at p. 6.) Defendant argues that Plaintiff has no protectable

interest in the use of the word Carolina and that there is no likelihood of confusion

sufficient to support Plaintiff’s claims. (ECF No. 72 at p. 5.)

23. Under North Carolina law, a common law claim for trademark

infringement of an unregistered mark is analyzed under federal law standards

regarding infringement claims of unregistered trademarks. See G.S. § 80.1.1; Ga.

Pacific Consumer Prods., LP v. Von Drehle Corp., 618 F.3d 441, 449 (4th Cir. 2010)

(“[T]he parties do not dispute that, under the facts of this case, viewed in the light

most favorable to [plaintiff], the tests for trademark infringement and unfair

competition under the [federal] Lanham act are essentially the same as that for

common law unfair competition under North Carolina common law . . . .”).

24. In order to prevail on a common law trademark infringement claim,

Plaintiff must establish that (a) it has a valid and protectable mark, and (b) that the

Defendant’s use of its mark is likely to cause confusion among consumers. Lone Star

Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995); B & J

Enters. v. Giordano, 329 Fed. App’x 411, 416 (4th Cir. 2009). If Plaintiff fails to show

the existence of “a valid and protectable mark,” summary judgment in favor of

Defendant is appropriate. B & J Enters., 329 Fed. App’x at 417 (citing Celotex Corp.

v. Catrett, 477 U.S. 317, 323 (1986)).
25. Typically, businesses do not enjoy trademark protection in words and

phrases that are generic, generally descriptive, or geographically descriptive.

Charcoal Steak House, Inc. v. Staley, 263 N.C. 199, 201, 139 S.E.2d 185, 187 (1964)

(“At common law generic, or generally descriptive, words and phrases, as well as

geographic designations, may not be appropriated by any business enterprise either

as a tradename or as a trademark.”) If, however, a generic or generally descriptive

name or mark has acquired a secondary meaning, it may be eligible for protection.

Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990) (“[I]f a mark is

merely descriptive, then proof of secondary meaning in the marketplace is required

for the mark to be eligible for protection.”). Secondary meaning exists when a

business uses a generally descriptive name or mark “for so long or so exclusively or

when it has promoted its product to such an extent that the words do not register

their literal meaning on the public mind but are instantly associated with one

enterprise.” Staley, 263 N.C. at 201–02, 139 S.E.2d at 187–88; see B & J Enters., 329

Fed. App’x at 417 (A descriptive mark is “eligible for legal protection only if it has

been shown to have acquired a ‘secondary meaning’ in the eyes of the public.”). In

other words, “[s]econdary meaning is the consuming public’s understanding that the

mark, when used in context, refers, not to what the descriptive word ordinarily

describes, but to the particular business that the mark is meant to identify.” Perini,

915 F.2d at 125.

26. Plaintiff concedes that the word Carolina, by itself, is generic or

descriptive in nature and is not protectable as a trademark. Johnson & Morris PLLC,
2016 NCBC LEXIS 78, at *12–13. Nevertheless, Plaintiff argues that its use of the

name Carolina Pediatric Dentistry has caused the word Carolina to acquire a

secondary meaning in the Market Area when used in conjunction with other words

or terms that refer to a dental practice that provides pediatric or children’s dental

services. In other words, Plaintiff’s position is that Defendant cannot use as a name

for its pediatric dental practice any name that begins with Carolina and contains any

other words that suggest Defendant provides dentistry services to children.

A. Secondary Meaning

27. In Perini, the Fourth Circuit Court of Appeals identified six factors

relevant to a finding of secondary meaning: “(1) advertising expenditures; (2)

consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media

coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and

exclusivity of the mark’s use.” Perini, 915 F.2d at 125. These factors are relevant to,

rather than dispositive of, the secondary meaning inquiry; no single factor is

determinative, and all factors need not be favorable for the plaintiff to prevail. See

id.; B & J Enters., 329 Fed. App’x at 417. The Court will analyze Plaintiff’s evidence

to determine whether Plaintiff has established a genuine issue of material fact

regarding secondary meaning.

i. Advertising Expenditures

28. It is undisputed that Plaintiff’s primary source of business development

is through referrals from other dentists, health care providers, and parents of existing

patients. Plaintiff engages in some limited advertising, including sponsoring local
school programs and youth sports teams, and placing promotions in local

publications. (Gerdts Dep., ECF No. 111, Ex. 3 at pp. 33, 39.) Plaintiff also advertises

online through its website and Facebook page. Plaintiff, however, does not maintain

a budget for advertising and has not produced any evidence showing actual

advertising expenditures. (ECF No. 86 at p. 54; ECF No. 111, Ex. 3 at p. 33.) See also

B & J Enters., 329 Fed. App’x at 419 (“Absent a showing that [advertising]

expenditures were effective in causing the relevant group of consumers to associate

the mark with itself, secondary meaning cannot be established.”). This factor weighs

against a finding of secondary meaning.

ii. Consumer Studies

29. Plaintiff acknowledges that it has not conducted consumer studies

regarding a connection between the names Carolina or Carolina Pediatric Dentistry

and children’s dentistry in the Market Area. (ECF No. 82 at p. 11.) While the Court

does not place substantial weight on the absence of a consumer study because the

businesses involved in this case are relatively small, this factor does not support

Plaintiff’s contention of secondary meaning.

iii. Sales Success

30. Plaintiff’s evidence shows increases in Carolina Pediatric Dentistry’s

patients and revenues during the past few years, and Plaintiff has a substantial

number of patients in the Market Area. (Morris Aff., ECF No. 25 at ¶¶ 8–10.)

Although the evidence suggests Plaintiff has a successful pediatric dentistry practice,

there is no context from which to compare Plaintiff’s sales to other similar practices
in the Market Area. The Court recognizes that gathering such information would be

difficult but also notes that without context this sales evidence is less meaningful and

lends little support to Plaintiff’s argument.

iv. Unsolicited Media Coverage

31. Plaintiff has not submitted evidence of any unsolicited media coverage

of its practice. This factors weighs against Plaintiff’s position.

v. Attempts to Plagiarize

32. The record does not show any previous attempts to plagiarize the name

Carolina by a pediatric or children’s dentistry prior to Defendant’s use of Carolina.

See George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 396 (4th Cir. 2009)

(“With regard to the remaining factors, the record discloses that [plaintiff] . . . was

not aware of any attempts to plagiarize prior to [defendant’s] activities.”). Again, this

factor does not support a finding of secondary meaning.

vi. Length and Exclusivity of the Mark’s Use

33. The record establishes that Plaintiff has been doing business as

Carolina Pediatric Dentistry since 2004. (ECF No. 86 at pp. 36–37.) Carolina

Pediatric Dentistry has at all times focused exclusively on the practice of pediatric

dentistry. (ECF No. 24 at ¶ 5.) Plaintiff further presents evidence that it was the sole

user of the word Carolina among pediatric dentists in the Market Area before the

creation of Carolina Orthodontics and Children’s Dentistry. (ECF No. 86 at pp. 39–

40.)
34. Defendant contends that Plaintiff does not enjoy exclusive use of the

word Carolina because there are many other businesses—including other dental

practices in the Market Area that provide services to children—that use Carolina as

a descriptive mark.3 (ECF No. 72 at p. 8.) The Court finds that the widespread use of

the word Carolina by businesses, including dental practices, in the Market Area

weakens Plaintiff’s position that it is entitled to its exclusive use.

vii. Plaintiff’s Other Evidence Supporting Secondary Meaning

35. Outside of the evidence listed above, Plaintiff submitted the affidavits

of pediatrician Dr. Dirk Hamp, whose office is in Wake Forest, North Carolina, and

dentist Dr. Matthew McNutt, whose offices are in Cary and Clayton, North Carolina,

to support Plaintiff’s position that the name Carolina has obtained a secondary

meaning in its Market Area. Dr. Hamp’s Affidavit states that he has been referring

patients with pediatric dentistry needs to Carolina Pediatric Dentistry throughout

his practice’s 13-year history. (Hamp Aff., ECF No. 87.1 at ¶ 2.) Additionally, Dr.

Hamp states, “[i]n my mind, and in my practice, ‘Carolina Pediatric Dentistry’ means

Doctor LaRee Johnson’s pediatric dentistry practice.” (ECF No. 87.1 at ¶ 4.) Dr.

McNutt’s affidavit contains similar statements. For instance, McNutt affirms that

Dr. Johnson’s pediatric dentistry practice “is well-known under the name ‘Carolina

Pediatric Dentistry,’ in the areas of Wake County” among both dentists and

consumers. (McNutt Aff., ECF No. 87 at ¶ 1.) While the affidavits show that Carolina

3 Defendant previously provided evidence of the substantial number of businesses in the

Market Area that use Carolina in their names, including at least four other dental practices
that represent that they provide children’s dental or orthodontic services. Johnson & Morris
PLLC, 2016 NCBC LEXIS 78, at *16-17. Plaintiff does not dispute this evidence.
Pediatric Dentistry has a secondary meaning in the minds of Dr. Hamp and Dr.

McNutt, they fail to show that the term Carolina, on its own, is synonymous with

Carolina Pediatric Dentistry.

36. When evaluated together and in the light most favorable to Plaintiff, the

evidence fails to establish that “a substantial number of present or prospective

customers when hearing or reading [Carolina Pediatric Dentistry] would associate

the name specifically with [Plaintiff’s] business.” B & J Enters., 329 Fed. App’x at 420

(citing Perini, 915 F.2d at 125.) (emphasis added); see U.S. Search, LLC v. U.S.

Search.com, Inc., 300 F.3d 517, 526 (4th Cir. 2002). Accordingly, the Court finds that

Plaintiff has not created a genuine issue of fact regarding whether the name Carolina

Pediatric Dentistry has acquired a secondary meaning. Consequently, Plaintiff

cannot establish that Defendant has infringed on a protectable trademark.

37. Plaintiff contends that it has established a prima facie case of secondary

meaning in the use of the word Carolina in relation to pediatric dentistry in the

Market Area, and, as a result, the existence of secondary meaning can only be

determined by a jury. (ECF No. 82 at p. 9.) The Court, however, finds that the

evidence supporting secondary meaning is close to non-existent and is not substantial

evidence upon which a reasonable juror could conclude in Plaintiff’s favor on the

issue. Khashman, 2017 N.C. App. LEXIS 715 at *15; Sloan, 119 N.C. App. at 165-66,

458 S.E.2d at 32; see also B & J Enters., 329 Fed, App’x at 417 (“[A]lthough a

secondary meaning issue is generally for the trier of fact, when the plaintiff’s evidence
is sufficiently lacking, a trial court is entitled to conclude on summary judgment that

its mark lacks secondary meaning.”).

B. Likelihood of Confusion

38. Even if Plaintiff were able to make a sufficient showing of secondary

meaning, summary judgment is proper because Plaintiff also has not created a

genuine issue of material fact that Defendant’s use of the name Carolina

Orthodontics and Children’s Dentistry creates a likelihood of confusion among the

consuming public in the Market Area. See Perini, 915 F.2d at 127 (quoting Thompson

Med. Co. v. Pfizer, Inc., 753 F.2d 208, 213 (2nd Cir. 1985)) (“The ultimate question,

for purposes of determining liability in trademark infringement actions, is whether

there exists a likelihood that an appreciable number of ordinarily prudent purchasers

will be misled, or indeed simply confused, as to the source of the goods in question.”)

(internal quotations omitted). Courts typically consider nine factors to determine if a

likelihood of confusion exists: (1) the strength or distinctiveness of the plaintiff’s mark

as used in the marketplace, (2) the similarity of the two marks, (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 the advertising used, (6) the defendant’s

intent, (7) actual confusion, (8) the quality of the defendant’s product, and (9) the

sophistication of the consuming public. George & Co., 575 F.3d at 393.

39. The Court thoroughly analyzed each of the nine factors from George &

Co. in its Order on Motion for Preliminary Injunction. See Johnson & Morris PLLC,

2016 NCBC LEXIS 78, at *20–29. Although the Court applies a different standard in
deciding a motion for summary judgment, Plaintiff has offered no additional evidence

of likelihood of confusion at this stage of the proceeding. For that reason, the Court

declines to address again each of the nine factors, but instead limits its discussion to

two factors.

40. As was the case at the preliminary injunction stage, Plaintiff’s

competent, non-hearsay evidence of actual confusion consists of a single episode in

March 2016 in which Dr. Johnson overheard a dentist state she believed Dr. Johnson

had opened an office in Cary. Despite the extensive discovery in this case, Plaintiff

has failed to identify a single additional incident of consumer confusion between

Carolina Pediatric Dentistry and Carolina Orthodontics and Children’s Dentistry.

George & Co., 575 F.3d at 398 (“Actual confusion can be demonstrated by both

anecdotal and survey evidence. Evidence of only a small number of instances of actual

confusion may be dismissed as de minimis.”) (citations omitted). This supports the

conclusion that consumers have not, in fact, been confused.

41. Finally, Plaintiff also contends that Defendant intended to infringe on

the name Carolina Pediatric Dentistry and trade on Plaintiff’s good-will by originally

selecting the name Carolina Orthodontics and Pediatric Dentistry. “If there is intent

to confuse the buying public, this is strong evidence establishing likelihood of

confusion. . . .” Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1535 (4th Cir. 1984).

Plaintiff argues that an issue of fact is created by evidence that (1) at least some of

Defendant’s doctors knew that Plaintiff was using the Carolina name; (2) Defendant

registered several d/b/a names with the Wake County Register of Deeds that “were
strikingly similar to [other] successful Wake County pediatric dental practices”; and

(3) Defendant continued to use Carolina in its name after Plaintiff notified Defendant

that the similarities in their marks could create confusion. (ECF No. 82 at pp. 21–

23.)

42. The evidence is not sufficient to show Defendant intended to infringe on

Plaintiff’s mark. First, knowledge of another’s business, on its own, is not sufficient

to show an intent to mislead and cause consumer confusion. See George & Co., 575

F.3d at 598 (“[K]nowledge of another’s goods is not the same as an intent to mislead

and to cause consumer confusion.”) (quotations and citations omitted).

43. Second, all of the d/b/a’s registered by Defendant were variations of the

geographically descriptive terms “Wake,” “Triangle,” and “Carolina,” combined with

other generic or descriptive words and terms indicating a pediatric or children’s

orthodontic and dental practice. (E.g., ECF No. 95.5.) Defendant did not register or

attempt to register suggestive, fanciful, or arbitrary names being used in the Market

Area. Defendant’s registration of the d/b/a names does not establish that Defendant

intended to confuse the buying public that it was the Plaintiff or any other practice.

44. Finally, and most importantly, after Plaintiff communicated to

Defendant its worries about Defendant’s business name being similar to its own,

Defendant changed its name to make it more distinguishable from Plaintiff’s. If this

shows anything, it shows Defendant’s intent to ensure consumers could distinguish

between Plaintiff’s and Defendant’s names. See Grayson O Co. v. Agadir Int’l LLC,

856 F.3d 307, 319 (4th Cir. 2017) (stating that by decreasing the size of a mark the
plaintiff claimed the defendant was infringing, the defendant made the mark less

prominent and, if anything, evidenced “an intent to distinguish its label from [the

plaintiff’s]”).

45. Ultimately, the Court is guided by the North Carolina Supreme Court’s

holding in Charcoal Steak House:

Merely to be the first to use a descriptive name, even if it
acquires a secondary meaning, does not give the first user
an unqualified right to engross it. Even if the
words charcoal steak house had acquired a secondary
meaning so as specifically to connote plaintiff's restaurant
in Charlotte, plaintiff still would not be entitled to have
defendant restrained from making any use whatever of
words admittedly publici juris. All plaintiff could reasonably
ask of the court is that defendant be required to do what he
has already done, namely, so designate his restaurant as
to prevent reasonably intelligent and careful persons from
being misled.

263 N.C. at 203, 139 S.E.2d at 188. Despite Plaintiff’s long-standing presence in the

Market Area, Defendant has chosen a name sufficiently distinct from the name

Carolina Pediatric Dentistry such that “reasonably intelligent and careful persons”

will not be misled as to the source of the services. Plaintiff has failed to create a

genuine issue of fact that there is a likelihood of success on the question of consumer

confusion.

46. The Motion regarding Plaintiff’s First Claim for Relief for unfair

competition through trademark infringement should be GRANTED.

Unfair and Deceptive Trade Practices

47. Plaintiff also alleges that Defendant’s infringement of Plaintiff’s

trademark is an unfair method of competition or unfair trade practice in violation of
the NCUDTPA. (ECF No. 1 at ¶¶ 43–49.) Defendant argues that because Plaintiff

cannot assert a legally protectable interest in the mark Carolina, its conduct cannot

constitute an unfair and deceptive trade act or practice. (ECF No. 72 at p. 5.)

48. G.S. § 75-1.1(a) declares unlawful “[u]nfair methods of competition in or

affecting commerce, and unfair or deceptive acts or practices in or affecting

commerce.” To prevail on a claim for unfair and deceptive trade practices, a plaintiff

must “demonstrate the existence of three factors: ‘(1) an unfair or deceptive act or

practice, or unfair method of competition, (2) in or affecting commerce, and (3) which

proximately caused actual injury to the plaintiff or his business.’” Dalton v. Camp,

138 N.C. App. 201, 209, 531 S.E.2d 258, 264 (2000) (quoting Murray v. Nationwide

Mutual Ins. Co., 123 N.C. App. 1, 9, 472 S.E.2d 358, 362 (1996)).

49. The Court already has held that there is insufficient evidence to create

a genuine issue of fact regarding Plaintiff’s claim for trademark infringement.

Because Plaintiff asserts no other conduct by Defendants that could constitute an

unfair or deceptive act or practice or an unfair method of competition, there exists no

underlying conduct to support a claim for violation of G.S. § 75-1.1. Therefore, the

Court concludes that Defendant’s Motion regarding Plaintiff’s Second Claim for Relief

for unfair trade practices in violation of the NCUDTPA should be GRANTED.

50. THEREFORE, IT IS ORDERED that Defendant’s Motion for Summary

Judgment is GRANTED, and Plaintiff’s claims are DISMISSED WITH PREJUDICE.
This the 28th day of September, 2017.

/s/ Gregory P. McGuire
Gregory P. McGuire
Special Superior Court Judge
for Complex Business Cases