           IN THE UNITED STATES COURT OF APPEALS
                    FOR THE FIFTH CIRCUIT United States Court of Appeals
                                                   Fifth Circuit

                                                                            FILED
                                                                          August 13, 2008

                                     No. 08-60155                     Charles R. Fulbruge III
                                   Summary Calendar                           Clerk


URGENT CARE INC; URGICARE INC

                                    Plaintiffs–Counter-Defendants–Appellees
v.

SOUTH MISSISSIPPI URGENT CARE INC; AMY ALI; RONNIE ALI

                                    Defendants–Counter-Claimants–Appellants
v.

LYDIA KING RAYNER

                                    Counter-Defendant–Appellee



                   Appeal from the United States District Court
                     for the Southern District of Mississippi
                             USDC No. 1:07-CV-138


Before JOLLY, BENAVIDES, and HAYNES, Circuit Judges.
PER CURIAM:*
       This case involves a trademark infringement dispute between two
providers of urgent care medical services along the Mississippi Gulf Coast. The
district court granted a preliminary injunction in favor of Appellees, enjoining


       *
         Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR.
R. 47.5.4.
                                      No. 08-60155

Appellant South Mississippi Urgent Care, Inc. from using the term “Urgent
Care” in its name, signs, telephone greetings, or promotional materials. For the
reasons below, we REVERSE.
                                            I.
       Lydia King Rayner (“Rayner”) began operating Urgent Care, Inc. in the
Mississippi Gulf Coast area in 1985. On March 30, 2001, the Mississippi
Secretary of State registered the service mark “Urgent Care, Inc.”1 to Rayner for
use in the “Medical Services” arena. Rayner did not register the “Urgent Care”
service mark with the United States Patent and Trademark Office (“USPTO”).
Rayner also set up a corporation named “Urgicare, Inc.” in the Mississippi Gulf
Coast area. Rayner registered the service mark “UrgiCare” with the Mississippi
Secretary of State on April 21, 2006, and with the USPTO on April 17, 2007.2
Rayner alleged in her complaint that the pronunciation of “Urgicare” is very
similar to “Urgent Care.”
       Dr. Ronnie Ali (“Ali”) previously worked in Michigan at Henry Ford
Urgent Care, Oakwood Hospital Urgent Care Clinic, and Lincoln Park Urgent
Care Clinic.      He moved to Mississippi and opened Apple Urgent Care
Occupational Clinic with three other physicians. Ali relocated to the Mississippi
Gulf Coast area and opened South Mississippi Urgent Care, Inc., shortly after
Hurricane Katrina.
       Rayner sent Ali and South Mississippi Urgent Care (collectively,
“Appellants”) a cease-and-desist letter demanding that Appellants cease use of


       1
         The registration with the Mississippi Secretary of State’s Office provides that the
mark in question is “URGENTCARE INC.” However, both parties and the district court
primarily refer to the mark as “Urgent Care” and sometimes as “URGENTCARE.” Our
findings here apply with equal force to all three iterations of the mark.
       2
         The registration with the Mississippi Secretary of State’s Office provides that the
mark in question is “URGICARE.” However, the mark is identified in the USPTO registration
as “UrgiCare.” The parties primarily utilize the latter version. Our findings here apply with
equal force to both iterations of the mark.

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the mark “Urgent Care.” Ali continued to operate his clinic as South Mississippi
Urgent Care, and Rayner filed suit in state court alleging, inter alia, trademark
infringement, trademark dilution, and unfair competition under the Lanham Act
and MISS. CODE ANN. § 75-24-5. After removal to federal district court, Rayner
filed a Motion for Preliminary Injunction requesting that Appellants be enjoined
from using the mark “Urgent Care.” The district court granted the preliminary
injunction on December 6, 2007. Appellants timely appealed.
                                         II.
      We review the grant of a preliminary injunction for abuse of discretion.
Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 306 (5th Cir. 2008).
Factual findings are reviewed for clear error whereas legal conclusions are
reviewed de novo. Id.
                                         III.
      To obtain a preliminary injunction, the movant must demonstrate:
      (1) a substantial likelihood of success on the merits, (2) a substantial
      threat of irreparable injury if the injunction is not issued, (3) that
      the threatened injury if the injunction is denied outweighs any
      harm that will result if the injunction is granted, and (4) that the
      grant of an injunction will not disserve the public interest.

Id. at 309 (internal quotations omitted). In a trademark infringement suit, the
party seeking a preliminary injunction must: (1) “prove that the name he seeks
to protect is eligible for protection”; (2) “prove he is the senior user”; (3) “show a
likelihood of confusion between his mark and that of the defendant”; and (4)
“show that the likelihood of confusion will actually cause him irreparable injury
for which there is no adequate legal remedy.” Union Nat’l Bank of Tex., Larado,
Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir. 1990).
      In determining whether the mark at issue is protectable, the court must
determine whether the mark is generic, descriptive, suggestive, or
arbitrary/fanciful.   Id.   Assigning the mark into one of these categories

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“determines whether or not, or in what circumstances, the word or phrase is
eligible for trademark protection.” Id. “A generic term is one which identifies
a genus or class of things or services, of which the particular item in question is
merely a member.” Id. at 845. In other words, “[a] generic term connotes the
‘basic nature of articles or services’ rather than the more individualized
characteristics of a particular product.’”              Zatarains, Inc. v. Oak Grove
Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983) (quoting Am. Heritage Life
Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5th Cir. 1974)). A generic term
is never eligible for protection under trademark law.                   Id.   In contrast, a
descriptive term “identifies a characteristic or quality of the article or service”
and is entitled to trademark protection only if secondary meaning is
established.3 Union Nat’l Bank of Tex., 909 F.2d at 844-45 (internal quotations
omitted).
       Categorization of a mark is a factual issue that we review for clear error.
See id. at 846. In determining whether a mark is generic, the mark “must be
compared to the product or service to which it is applied.” Id. “To paraphrase
Judge Learned Hand, the question is, ‘What do the buyers understand by the
word for whose use the parties are contending?’” Id. at 847 (quoting Bayer Co.
v. United Drug Co., 272 F. 505, 509 (2d Cir. 1921)). In determining whether a
mark is generic, we may consider the dictionary definition and consumer
surveys, although neither is dispositive. Id. at 847. Furthermore, we may



       3
           In Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court explained that:

       Secondary meaning is used generally to indicate that a mark or dress has come
       through use to be uniquely associated with a specific source. To establish
       secondary meaning, a manufacturer must show that, in the minds of the public,
       the primary significance of a product feature or term is to identify the source of
       the product rather than the product itself.

505 U.S. 763, 766 n.4 (1992) (internal quotations omitted).

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consider “whether others in the same business would generally need the word
to adequately describe their product or service” and “evidence regarding how
many other businesses, in the same industry, use the term to describe their
product.” Id. at 848.
       Here, the district court found that Appellees established all of the required
elements for preliminary injunctive relief, highlighting the likelihood of
confusion between the parties’ marks. Although the district court did not
explicitly assign the marks “Urgent Care” and “UrgiCare” into a category,
because it found a substantial likelihood of success on the merits, it can be
assumed that the district court found the marks protectable (i.e., the marks are
not generic and, if descriptive, they have acquired secondary meaning). We now
address each mark in turn.
A. Urgent Care
       The “Urgent Care” mark is not federally registered and Appellants–the
alleged infringers–argue that the mark is generic. In such a situation, Appellees
had the burden to establish that the mark is not generic. See, e.g., Filipino
Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1146 (9th Cir.
1999); see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition 12-30 (2003) (collecting cases). We find that Appellees failed to
meet this burden and the district court’s implicit finding to the contrary was
clearly erroneous.
       Appellants argue that “Urgent Care” is a generic term for the provision of
non-emergency medical services and point to its widespread use in the
healthcare industry.4 Appellants note that: (1) according to state registrations,
more than twenty corporations in Mississippi and neighboring states use the

       4
         According to the American Academy of Urgent Care Medicine, urgent care medicine
“is defined as provision of immediate medical service (no appointment necessary) offering
outpatient care for the treatment of acute and chronic illness and injury.” American Academy
of Urgent Care Medicine, http://www.aaucm.org.

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term “Urgent Care” in their name; (2) at least ten medical providers in
Mississippi registered with the USTPO have the term “Urgent Care” in their
name; (3) the American Medical Association adopted the code “UCM” (“Urgent
Care Medicine”) for physicians who wish to designate themselves as urgent care
specialists; and (4) several medical journals include the term “Urgent Care” in
their title.
       We find that the term “Urgent Care” has not “become distinctive of the
applicant’s goods in commerce” and, thereby, is a generic term that is not
entitled to trademark protection. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 769 (1992) (citing 15 U.S.C. § 1052(f)). In other words, the term “Urgent
Care” is used so extensively that “others should be equally entitled to use such
nondistinctive words.” Am. Heritage Life Ins. Co., 494 F.2d at 11. Therefore,
Appellees’ mark is not protectable and the district court’s grant of preliminary
injunctive relief was in error. Accordingly, we need not address the district
court’s findings of likelihood of confusion and irreparable harm.
B. UrgiCare
       The mark “UrgiCare” is federally registered and, thereby, enjoys a
presumption of validity. Id. at 10. In contrast to the “Urgent Care” mark,
Appellants do not argue that “UrgiCare” is not protectable. Thus, we assume it
is a valid mark. However, Appellees maintain the burden of establishing
likelihood of confusion. See Union Nat’l Bank of Tex., 909 F.2d at 844. The
district court’s analysis in finding likelihood of confusion centered exclusively on
Appellees’ “Urgent Care” mark, not the “UrgiCare” mark. Appellees argue that,
because “UrgiCare” sounds like the phrase “urgent care,” Appellants’ use of the
phrase “urgent care” is infringing and diluting its “UrgiCare” mark. This
argument lacks merit. Because we find that “Urgent Care” is a generic term,
Appellees cannot prevent use of the term by registering a similar-sounding, but
differently spelled mark. See Am. Heritage Life Ins. Co., 494 F.2d at 11 (noting

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that “others should be equally entitled to use such nondistinctive words”). We
find that South Mississippi Urgent Care is sufficiently distinct from UrgiCare
such that Appellees’ trademark rights are not infringed upon. Therefore, the
preliminary injunction also fails with respect to the “UrgiCare” mark.
                                     IV.
      In light of the foregoing, we find that the district court’s grant of
preliminary injunctive relief was an abuse of discretion. The district court’s
judgment is REVERSED and REMANDED for proceedings consistent with this
opinion.




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