DeVry Inc. v. Int’l Univ. of Nursing d/b/a Robert Ross Int’l Univ. of Nursing, No. 06 C 3364, Slip Op. (N.D. Ill. Jun. 30, 2009) (Guzman, J.).
After a bench trial, Judge Guzman issued findings of facts and conclusions of law, holding plaintiffs Ross University marks infringed and enjoining defendants from using the Ross name in conjunction with medical or nursing schools. Plaintiffs operated the Ross University School of Medicine and the Ross University School of Veterinary Medicine, both off which plaintiffs bought along with the related trademarks from Robert Ross. Both institutions are offshore and cater to US students. Ross later associated himself with defendant, after which defendant, an offshore nursing school, began using the Ross name. Defendant claimed plaintiffs’ claims were moot because defendant stopped using the Ross name. But the Court held that an injunction could be appropriate to guarantee that the misconduct does not restart after the case.
The Court held that defendants’ "Robert Ross International University of Nursing" mark was confusingly similar to plaintiffs’ "Ross University" marks for the following reasons:
- Defendant’s marks were "strikingly similar" to plaintiffs’ in both appearance and suggestion;
- Both sets of marks represent offshore medical institutions;
- The parties promote their institutions and hire faculty and staff through the same channels; and
- There have been numerous instances of actual confusion.
Having held that plaintiffs’ mark was infringed, the Court held that injunctive relief was appropriate. Plaintiffs were irreparably harmed because of the ongoing actual confusion between the parties’ marks and plaintiffs’ inability to control its image when confusion occurs. Furthermore, the balance of hardships weighed in favor of plaintiffs. Plaintiffs faced "potential devastation" if an injunction was not issued, but defendant’s only harm was Ross’s temporary inability to use his name in connection with offshore medical services. And the public would not be harmed by an injunction. In fact, the injunction would serve the public interest by clarifying the source of medical education services for consumers.