DeVry Inc. v. Univ. of Medicine & Health Sciences — St. Kitts, No. 08 C 3280, Slip Op. (N.D. Ill. Feb. 3, 2009) (Coar, J.).

Judge Coar denied defendant’s Fed. R. Civ. P. 12(b)(6) motion to dismiss for failure to state a claim for trademark infringement or Lanham Act false designation and false representation. Plaintiffs own and operate the Ross University School of Medicine and are the owners of ROSS and ROSS UNIVERSITY marks.  Defendant marketed its medical school as "Founded by Dr. Robert Ross" and used at least one domain for email addresses including the word "ross." Defendant is not associated with or sponsored by plaintiffs’ Ross University.

Defendant argued that its representations that its institution was founded by Dr. Ross and that Dr. Ross founded Ross University were fair uses constituting an impenetrable defense requiring dismissal. The Court, however, held that the defenses did not warrant dismissal for several reasons:

• Whether the use of Dr. Ross’s name constituted the use of a mark or simply his name was a question of fact not appropriate for a decision on the pleadings;
• While the Seventh Circuit has not explicitly adopted a normative fair use defense, it was not clear that defendant’s use of Dr. Ross’s name met the criteria for the defense; 
• There was a question of fact as to whether defendant’s repeated use of the name was more than reasonably necessary to identify the product; and
• There was a question of fact as to whether the use of the Ross name implied sponsorship or endorsement.