Mongan v . O’Neill CV-01-135-M 07/24/02 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Marie Mongan, Plaintiff

v. Civil N o . 01-135-M Opinion N o .

Michelle Leclaire O’Neill, Defendant

O R D E R

Marie Mongan (“Mongan”), owner of the federally registered

service mark HypnoBirthing (stylized), has sued fellow childbirth

educator Michelle Leclaire O’Neill (“O’Neill”) in six counts,

alleging: infringement of the registered service mark

HypnoBirthing (stylized), under

(Count I ) ;

infringement of the common law trademark HYPNOBIRTHING

PRACTITIONER, under

(a) (Count I I ) ; unfair

competition, based upon use of the marks HYPNOBIRTHING and THE

HYPNOBIRTHING METHOD, under

(a) (Count I I I ) ;

false designation of origin, based upon the use of both marks,

under

(a) (Count I V ) ; unfair competition, under

the common law of California and the California Professional Code

(Count V ) ; and tortious interference with a contractual relationship (Count V I ) . Before the court is plaintiff’s motion

for summary judgment on Counts I - V . Defendant objects. For the

reasons given below, plaintiff’s motion for summary judgment is

denied.

Summary Judgment Standard

Summary judgment is appropriate when the record reveals “no

genuine issue as to any material fact and . . . the moving party

is entitled to a judgment as a matter of law.” FED. R . CIV. P .

56(c). “To determine whether these criteria have been met, a

court must pierce the boilerplate of the pleadings and carefully

review the parties’ submissions to ascertain whether they reveal

a trialworthy issue as to any material fact.” Perez v . Volvo Car

Corp.,

(1st Cir. 2001) (citing Grant’s Dairy-

Me., L L C v . Comm’r of M e . Dep’t of Agric., Food & Rural Res.,

, 14 (1st Cir. 2000)).

Not every factual dispute is sufficient to thwart summary judgment; the contested fact must be “material and the dispute over it must be “genuine.” In this regard, “material” means that a contested fact has the potential to change the outcome of the suit under the governing law if the dispute over it is resolved favorably to the nonmovant. By like token, “genuine” means that the evidence about the fact is such that a

2 reasonable jury could resolve the point in favor of the nonmoving party.

Navarro v . Pfizer Corp.,

0 , 93-94 (1st Cir. 2001)

(quoting McCarthy v . Northwest Airlines, Inc.,

(1st Cir. 1995)).

In defending against a motion for summary judgment, “[t]he

non-movant may not rely on allegations in its pleadings, but must

set forth specific facts indicating a genuine issue for trial.”

Geffon v . Micrion Corp.,

9 , 34 (1st Cir. 2001) (citing

Lucia v . Prospect St. High Income Portfolio, Inc.,

(1st Cir. 1994)). When ruling upon a party’s motion for

summary judgment, the court must “scrutinize the summary judgment

record ‘in the light most hospitable to the party opposing

summary judgment, indulging all reasonable inferences in that

party’s favor.’” Navarro, 261 F.3d at 94 (quoting Griggs-Ryan v .

Smith,

(1st Cir. 1990)).

3 Background

Mongan and O’Neill are childbirth educators who teach birthing

methods that employ hypnosis.1 It would appear beyond dispute

that the basic concept of pain reduction in childbirth through

natural relaxation techniques may be traced at least as far back

as the work of English obstetrician Grantley Dick-Read in the 1930s,

as reported in his influential book Childbirth Without Fear

(1930). Both Mongan and O’Neill have taught the use of hypnosis

as a means of achieving relaxation during childbirth since the

late 1980s. Both have published books and other educational

materials on the subject of hypnosis in childbirth,2 both have

used the term “hypnobirthing” in their published materials,3

1 While not particularly relevant, it is of passing interest that a July 1 5 , 2002, visit to amazon.com disclosed that the page advertizing Mongan’s book, HypnoBirthing: A Celebration of Life (1998), also lists a book written by O’Neill, Better Birthing Through Hypnosis (2001), as a “great buy,” and suggests that shoppers purchase both books. The amazon.com page advertizing O’Neill’s book cross-references Mongan’s book in the same way. 2 O’Neill contends that Mongan’s educational program covers only one of the ten parts that make up the entire “Leclaire Method,” but the relationship between the content of the two programs is not material to the question currently before the court. 3 O’Neill, however, has voluntarily stopped using the term “hypnobirthing” (probably unnecessarily) until this litigation is resolved.

4 and both claim to have invented the technique.4 In addition,

Mongan operates an enterprise called the “HypnoBirthing

Institute,” which certifies hypnobirthing instructors.

4 An April 9, 2001, printout of part of O’Neill’s web site, submitted by Mongan in support of her motion for summary judgment, contains the following questions and answers:

Who developed Hypnobirthing: Hypnobirthing is the only childbirth [e]ducation program developed by a woman, Michelle Leclaire O’Neill, PhD. R.N. Dr. O’Neil[l] developed this method in 1987 and due to the Dateline Hypnosis Pregnancy Program more people than ever are now aware of her effective method.

What is Hypnobirthing? Hypnobirthing the Leclaire method is a program that prepares a mother during her pregnancy for a totally relaxed birth.

(Pl.’s Mot. Summ. J., Ex. B.F.) By contrast, Mongan’s own web site, hypnobirthing.com, contains a link labeled “who started it,” which leads to a page titled “Founder of HypnoBirthing®”, which claims, in relevant part:

Mickey [a/k/a Marie Mongan] is the mother of four children, all born in the late 50s and early 60s. She experienced all four labors using the techniques of D r . Grantly Dick-Read, the pioneer in the field of natural childbirth, upon whose work Mickey has based HypnoBirthing®. Two of her birthings were entirely free of anesthesia at a time when it was unheard of. Her book, HypnoBirthing® – A Celebration of Life, was written in 1989; the expanded version is now available.

While both women claim to have developed the technique of hypnobirthing, O’Neill also claims to have coined the term “hypnobirthing.”

5 On August 1 , 2000, the United States Patent and Trademark

Office (“USPTO”) issued Mongan a service mark registration for

the mark HypnoBirthing (stylized)5 (Reg. N o . 2,372,277). The

service for which the mark was registered is described as

“[e]ducation in the field of childbirth rendered through

correspondence courses, workshops, and seminars.” (Mongan also

abandoned an application for trademark rights in HypnoBirthing

(stylized) for use on “[p]rinted course books and instructional,

educational, and teaching materials in the field of childbirth.”)

On July 3 , 2001, a cancellation proceeding with respect to the

HypnoBirthing (stylized) mark was filed, by O’Neill, with the

Trademark Trial and Appeal Board. That proceeding is still

pending. Mongan also claims to have common law trademark rights

in the mark HYPNOBIRTHING PRACTITIONER.6

5 It is somewhat unclear precisely what Mongan claims as her mark. As depicted in the Official Gazette of the USPTO, the stylized drawing of the mark consists of the word “HypnoBirthing” in a standard typeface with serifs. On her web site, hypnobirthing.com, Mongan uses the word “HypnoBirthing” in several different typefaces, but always followed by the ® symbol. Thus, it is unclear whether the stylization consists of both the typeface and the use of the capital H and B , or simply refers to the use of the two capital letters. 6 Along with her trademark, Mongan holds copyrights on: (1) HYPNOBirthing: a celebration of life: a guide to achieving an easier, more comfortable birthing in the way that most mirrors nature (TX-3-443-664, created in 1992, published Aug. 1 4 , 1992,

6 On January 1 6 , 2001, O’Neill filed an application for

registration of the service mark The Hypnobirthing Method

(stylized). The service for which O’Neill seeks the mark is

described as “TRAINING classes for professionals and CHILDBIRTH

Classes for PREGNANT couples.” O’Neill’s application was

assigned to an examining attorney on December 1 3 , 2001, and is

still pending.

Discussion

Mongan moves for summary judgment on counts I-V, arguing

that the undisputed factual record demonstrates that: (1) she

first used the HYPNOBIRTHING mark in interstate commerce more

than two years before O’Neill claims to have used the marks

HYPNOBIRTHING or THE HYPNOBIRTHING METHOD in interstate commerce;

(2) all eight factors of the test for likelihood of confusion

weigh strongly in her favor. O’Neill, who is appearing pro s e ,

counters on several grounds, the most important being her

assertion that “hypnobirthing” is a generic term not eligible for

trademark protection.

and registered Nov. 1 2 , 1992); and (2) Hypnobirthing practitioner certification syllabus (TX-5-252-727, created in 1991, published Aug. 1 4 , 1991, and registered May 2 6 , 2000).

7 Because Mongan registered HypnoBirthing (stylized) less than

five years ago, the registration is not yet incontestable. See

(right to use a registered mark generally

becomes incontestable after five consecutive years of continuous

use after registration). Consequently, the mark’s validity is

open to challenge. See Park ’N Fly, Inc. v . Dollar Park & Fly,

Inc.,

(1985) (presumption of validity created

by registration is rebuttable until right to use the mark becomes

incontestable). By contending that Mongan’s mark is generic,

O’Neill has raised two genuine issues of material fact that

preclude summary judgment.

The first issue raised by O’Neill’s objection to Mongan’s

motion for summary judgment is the distinctiveness of Mongan’s

marks. The proper placement of those marks “along the spectrum

of ‘distinctiveness,’” Boston Beer C o . v . Slesar Bros. Brewing

Co.,

(1st Cir. 1993), is a question of fact,

(citing Wiley v . Am. Greetings Corp.,

(1st Cir.

1985)), and one central to determining whether and under what

circumstances a mark is entitled to protection.

8 At one end of the [distinctiveness] spectrum there are generic terms that have passed into common usage to identify a product, such as aspirin, and can never be protected. In the middle there are so-called descriptive terms, such as a geographical term, which can be protected, but only if it has acquired “secondary meaning” by which consumers associate it with a particular producer or source. At the other end of the spectrum, there are suggestive, arbitrary and fanciful terms that can be protected without proof of secondary meaning. These terms are considered “inherently distinctive.”

Boston Beer Co.,

(citations omitted).

The question of distinctiveness is not yet ripe for

decision, but a full adjudication of Mongan’s claims will require

resolution of that issue. Based upon the summary judgment

record, it appears highly unlikely that Mongan could demonstrate

that either HypnoBirthing (stylized) or HYPNOBIRTHING

PRACTITIONER is a fanciful, arbitrary, or suggestive mark. And

while a colorable argument could be made that HypnoBirthing

(stylized), as a service mark for educational services, might

fairly be called descriptive, it is not at all clear that Mongan

could prove that HYPNOBIRTHING PRACTITIONER is anything other

than a generic term.

9 Assuming Mongan is able to prove that her registered mark,

HypnoBirthing (stylized), is a descriptive mark rather than a

generic term, she would then have to address the issue of

secondary meaning. “[W]hether a mark has acquired secondary

meaning is also a question of fact.” Boston Beer Co.,

(citing Volkswagenwerk AG v . Wheeler,

(1st

Cir. 1987)). “Moreover, it is the party seeking protection of a

mark who bears the burden of proving that secondary meaning has

attached.” Boston Beer Co.,

(citing Bristol-Myers

Squibb C o . v . McNeil-P.P.C., Inc.,

(2d Cir.

1992); Blinded Vets. Ass’n v. Blinded Am. Vets. Found.,

(D.C. Cir. 1989)). And the burden of proof on

secondary meaning is high; “[p]roof of secondary meaning entails

vigorous evidentiary requirements.” Boston Beer Co.,

(quoting Perini Corp. v . Perini Constr., Inc.,

(4th Cir. 1990); citing Thompson Med. C o . v . Pfizer Inc.,

(2d Cir. 1985); Bank of Tex. v . Commerce Southwest,

Inc.,

(5th Cir. 1984)). As for the kind of

evidence necessary to meet those vigorous evidentiary

requirements, “[t]he only direct evidence probative of secondary

meaning is consumer surveys and testimony by individual

10 consumers. Although survey evidence is not required, it is a

valuable method of showing secondary meaning.” Yankee Candle C o .

v . Bridgewater Candle Co.,

5 , 43 (1st Cir. 2001)

(citations and internal quotation marks omitted).

Because O’Neill has effectively raised the issue of

distinctiveness, and because the court cannot conclude, as a

matter of law, that Mongan’s marks are fanciful, arbitrary, or

suggestive and cannot conclude, as a matter of law, that those

marks have acquired secondary meaning, summary judgment for

Mongan is inappropriate.

As this litigation progresses, Mongan will bear the burden

of proving that the marks on which she bases her infringement

claims are distinctive, either because they are fanciful,

arbitrary, or suggestive – which seems highly unlikely – or

because they are descriptive marks that have acquired secondary

meaning. Under any circumstances, proof of secondary meaning is

an arduous legal undertaking, and on this summary judgment

record, Mongan’s prospects do not appear promising. Furthermore,

Mongan should not overlook the court’s authority, under 15 U.S.C.

11 § 1119, to cancel a registration i f , for example, the owner of a

descriptive mark is unable to prove secondary meaning.

Finally, even if Mongan is able to prove ownership of a

valid descriptive mark, i.e., one with secondary meaning, she may

not win all that much in the way of protection, due to the rule

that “‘[s]trong marks are accorded broader protection against

infringement than are ‘weak’ marks.” Wheeler,

(citing Pignons S.A. de Mecanique de Precision v . Polaroid Corp.,

8 2 , 492 (1st Cir. 1981)). Given the relatively brief

history of hypnobirthing as a technique and use of the term

“hypnobirthing” by both parties prior to Mongan’s registration,

Mongan appears to face an uphill battle in trying to prove that

her marks are strong enough to merit broad protection. See Star

Fin. Servs., Inc. v . AASTAR Mort. Corp.,

, 11 (1st Cir.

1996) (“In assessing a mark’s strength, the trier of fact

considers evidence of the length of time the mark has been used,

its renown in the plaintiff’s field of business, and the

plaintiff’s actions to promote the mark.”) (citing Equine Techs.,

Inc. v . Equitechnology, Inc.,

(1st Cir. 1995)).

12 In an effort to provide what might prove to be helpful

guidance to the parties, the court notes that their dispute

appears to be much less a trademark case than a dispute over who

was the “true originator” of an increasingly popular technique

for employing hypnosis as an aid to childbirth. The idea of

using hypnosis as an aid to childbirth i s , of course, not legally

protected intellectual property. The words or symbols one might

use to attract clients to a particular hypnobirthing business

enterprise may well be protectable service marks. And, the

unique expression one uses in conveying the idea of hypnobirthing

in a book or audiotape may be subject to copyright protection.

But it would seem, legally, that anyone who teaches birthing

methods that employ hypnosis to aid in pain reduction has the

right to call the process “hypnobirthing.”

Obviously, it would be unlawful for a person not trained by

Mongan to claim certification from Mongan’s “HypnoBirthing

Institute” – Mongan has the right to prevent others from passing

themselves off as trained by her when they have not been. But it

is far less clear that Mongan has the right to corner the market

on use of the term “hypnobirthing” as a description of methods or

13 techniques for employing hypnosis in childbirth. Linguistically,

“hypnobirthing” is an easily understood amalgam of two common

English words, and it is seldom – if ever – appropriate for

intellectual property law to make such words unavailable for all

to use.

Continued litigation of this case will certainly be

expensive, given the complexity of the issues to be addressed,

the burdensome requirements for proving secondary meaning, and

the difficulty of proving the strength of the marks, in light of

the pervasiveness of the term “hypnobirthing” in the popular

press and elsewhere. Continued litigation might also prove

unexpectedly costly in other ways, especially to Mongan. It is

no sure thing that her registration will withstand judicial

scrutiny into the distinctiveness of her marks based upon

secondary meaning. Mongan could easily emerge from this suit

with the proverbial hole in the foot – holding less than she

currently thinks she holds. In short, continued litigation would

appear to be an especially unsuitable way to resolve the dispute

that is actually at the heart of this case. Nothing in the

record suggests that O’Neill has used, is using, or intends to

14 use the mark HypnoBirthing (stylized), and much in the record

suggests that Mongan’s property rights in the mark are suspect.

It may be time for informed and self-interested reflection.

Conclusion

For the reasons given above, Mongan’s motion for summary

judgment (document no. 15) is denied, and the case will remain on

the docket.

SO ORDERED.

Steven J. McAuliffe United States District Judge

July 2 4 , 2002

cc: Ralph F. Holmes, Esq. Michelle L. O’Neill

15