HealthOne of Denver, Inc. v. UnitedHealth Group Inc. (872 F. Supp. 2d 1154, 2012)

ORDER ON MOTION FOR SUMMARY JUDGMENT

WILEY Y. DANIEL, Chief Judge.

I. INTRODUCTION

THIS MATTER is before the Court on the Motion for Summary Judgment filed on January 6, 2012 by Defendant United-Health Group Incorporated [“Defendant” or “United Health”]. A response was filed on March 13, 2012, and a reply was filed on April 3, 2012. The motion is thus fully briefed.

By way of background, Plaintiffs HealthONE of Denver, Inc. and HCAHealthONE LLC [collectively “Plaintiffs” or “HealthONE”] filed their Verified Complaint and Jury Demand on July 9, 2010. The Complaint asserts claims of trademark infringement in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114, unfair competition in violation of § 43 of the Lanham Act, 15 U.S.C. § 1125(a), deceptive trade practices in violation of Colorado’s Consumer Protection Act [“CCPA”], common law trademark infringement, and common law unfair competition.

The Complaint alleges that the lawsuit is “intended to stop United’s unlawful use of HealthONE’s trademarks and to recover damages for that unlawful use. United has used HealthONE’s trademarks to benefit from HealthONE’s reputation and good will as the preeminent provider of hospital and related healthcare services in Colorado and the Rocky Mountain region, which has caused irreparable harm to HealthONE’s reputation and good will.” (Verified Compl. ¶ 1.) HealthONE seeks injunctive and monetary relief against UnitedHealth. (Id. ¶ 2 and in “Relief Sought”.)

UnitedHealth argues in its summary judgment motion that Plaintiffs’ claims of trademark infringement and related claims fail because the evidence is insufficient as a matter of law for a reasonable jury to find a likelihood of confusion between the trademarks at issue. It also argues that the CCPA claim fails as a matter of law. HealthONE asserts' in response that Defendant’s motion fails because there exist substantial, albeit disputed, facts upon which a reasonable jury could, and likely will, find that there is a likelihood of confusion between the marks at issue as well as a violation of the CCPA.

II. FACTUAL BACKGROUND

I first note that the parties tendered voluminous facts and evidence in this case. I have not discussed every fact tendered by the parties, only those that are most material to my findings. I have, however, reviewed and considered all the facts and evidence in support of same. In so doing, I have construed the evidence in the light most favorable to HealthONE as the non-moving party in connection with my review of Defendant’s summary judgment motion. Anaya v. Crossroads Managed Care Sys., Inc., 195 F.3d 584 (10th Cir.1999). When I cite to a party’s exhibit, I refer to it as “Def.’s Ex. - — ” or “Pis.’ Ex. -”. Where the facts are unsupported by evidence, are argumentative and/or are conclusory, I have disregarded those facts. Also, where the facts are undisputed, I have not cited to the record.

Information about the Parties

HealthONE provides health care related services in Colorado and the Rocky Mountain region. (Def.’s Ex. 14 at 2-3.) It is not an insurer. (Pis,’ Ex. 23, Dep. of Linda Kanamine [“Kanamine Dep.”] at 151:19-22.) HealthONE currently operates seven hospitals, including approximately 13 ambulatory surgery centers, over sixty outpatient care facilities, and approximately 20 diagnostic imaging centers under the HealthONE mark. (Id.) All are in the Denver-metro area. It also provides preventative health and wellness education, conducts wellness screenings, and operates health fairs and other wellness programs. HealthONE asserts that it has numerous world renowned programs and affiliated physicians (Pis.’ Ex. 27, Rule 30(b)(6) Dep. of Linda Kanamine at 18:7— 19:11.)

As the largest hospital system in the Denver metropolitan area, HealthONE serves approximately 800,000 patients per year from all fifty states and internationally. On an average annual basis, HealthONE serves approximately 20,000 patients from outside Colorado. Under the terms of a managed care contract, United-Health’s insureds can obtain health care services from HealthONE. Indeed, one of UnitedHealth’s subsidiaries, United-Healthcare, has designated two HealthONE facilities as “Premium Cardiac Speciality Centers.”

HealthONE also provides services to patients in several surrounding states, including Wyoming, Montana, North Dakota, South Dakota, Kansas, Nebraska, and Utah. (Pis.’ Ex. 22, Dep. Of HealthONE designated representative Linda Kanamine at 133:17-134:17; Pis.’ Ex. 24; Ex. 25, Rule 30(b)(4) Dep. of Linda Kanamine at 41:13 to 42:13.) One of the ways in which HealthONE provides such services is through HealthONE Outreach Services, a volunteer-based program that offers education and clinical services, without charge, to rural and outlying communities. HealthONE Outreach Services operates in Wyoming, South Dakota, Nebraska, Kansas, Colorado, North - Dakota, Montana, New Mexico, Arizona, Utah, and Texas. Another way in which services are provided outside Colorado is through AirLife Denver, the emergency medical and critical care transport service of the HealthONE system. It serves a ten state region that includes Colorado, Wyoming, Montana, Nebraska, Kansas, New Mexico, Utah, and South Dakota.

In 2010 alone, HealthONE contributed more than $190.4 million in community benefits, which included uncompensated and charity care, health professional education, community building activities, community health education, cash donations to charities, research, and taxes. HealthONE provides financial support and sponsorship to numerous organizations such as Opera Colorado, the Denver Center for Performing Arts, Project Cure, the Denver Broncos, the Colorado Avalanche, the Denver Nuggets, the Colorado Rapids, and the Colorado Mammoth. In 2003, the Denver Business Journal named HealthONE the best large company to work for in Denver. Also, in 2010 the Association of Air Medical Services named AirLife Denver the Air Medical Program of the year.

Defendant UnitedHealth is a publicly traded, diversified insurance and services company, offering numerous products and services through a large number of subsidiaries and affiliates. UnitedHealth cites its Annual Report in support of its assertion that health insurance represents approximately 93% of UnitedHealth’s 2010 revenues (Def.’s Ex. 1 at 22, 24), although Plaintiffs deny this percentage. United-Health’s “Health Benefits” platform is known as “United Healthcare,” which includes its Employer & Individual insurance business. UnitedHealth provides health insurance coverage in two distinct ways: (a) “group policies,” in which employees are insured through their employers; and (b) “individual policies”, in which individual consumers purchase insurance for themselves and their families.

UnitedHealth presents evidence that the individual insurance products, marketed under the UnitedHealthOne mark, are designed for the self-employed, unemployed, or those whose employers do not offer group health benefits. (Def.’s Ex. 2, Decl. of Michael L. Corne [“Corne Decl.”] at ¶ 3.) It also markets products branded with the UNITEDHEALTHGROUP name to a broader audience consisting of individuals under the age of 65 who do not have group health insurance in the state where those policies are sold, people who have insurance but want to switch to an individual plan, former customers of group insurance plans, and independent insurance brokers.

UnitedHealth’s “Health Services” platform is branded as “Optum” and includes three diversified businesses: (a) OptumHealth, focusing on health management and wellness, clinical services and financial services; (b) Optumlnsight, specializing in technology, consulting and business outsourcing solutions; and (c) OptumRx, providing pharmacy benefit management solutions. UnitedHealth presents evidence that its main competitors in the market for individual insurance products are HumanaOne, CoventryOne, Aetna, Anthem/Well-point, and Assurant, which Plaintiffs do not dispute. Plaintiffs point out, however, that those are not UnitedHealth’s only competitors. (Def.’s Ex. 4, UnitedHealth’s Trademark Registration).

According to Linda Kanamine, the Vice-President of Public Affairs, Marketing, and Government Affairs for HCA-HealthONE LLC, while UnitedHealth is an insurer and HealthONE provides services in health, wellness and education, the companies deal with the same topics and probably the same people. (Pis.’ Ex. 14, Aff. of Linda Kanamine [“Kanamine Aff.”] at ¶ 3; Pis.’ Ex. 23, Kanamine Dep. at 151:12-15.) UnitedHealth also provides preventative health and wellness resource and education, and offers personal health assessments to improve risk areas and avoid future health problems. UnitedHealth asserts that it does not, however, provide these services under the UnitedHealthOne mark.

UnitedHealth, through various Optum subsidiaries, owns and operates medical groups, climes, urgent care centers, and ambulatory surgery centers. Through its various subsidiaries, UnitedHealth employs physicians and more than 500 nurse practitioners who provide health care services: It also partners with 50,000 physicians in California. UnitedHealth admits these facts, but denies the implication that any of the patient care services are provided under the UnitedHealthOne mark.

Further, through various Optum subsidiaries, UnitedHealth owns and manages various physician networks. It also establishes, manages, contracts with physicians, and supplies technology to provide online health care services for-health care clinics in. retail settings such as Wal-Mart. Also through various subsidiaries, United-Health contracts with providers and nurse practitioners to provide care for chronically ill patients, and to provide nursing home, palliative care, and hospice services. UnitedHealth provides such provides hospice services in Colorado. Again, while UnitedHealth admits these facts, it denies the implication that any of the patient care services are provided under the UnitedHealthOne mark.

UnitedHealth attempted to purchase a group of approximately 80 physicians in the Denver metropolitan area. HealthONE also cited deposition testimony from one of its executives, Jeff Dorsey, that UnitedHealth employs or sponsors physicians who treat patients in Denver. (Pis.’ Ex. 53, Dep. of Jeffrey Dorsey [“Dorsey Dep.”] at 65:4-24.) Mr. Dorsey testified that, in his opinion, the activities of UnitedHealth with regard to sponsoring or supporting primary care physicians is a competitive threat to HealthONE, as it “would be in competition to primary care physicians who work for HCAHealthONE”. (Id. 67:15-68:22.) Also, the Senior Vice President for Managed Care at HealthONE testified in his deposition that UnitedHealth is moving into the delivery of services, acquiring physician practices or medical groups in other cities. (Pis.’ Ex. 28, Dep. of Leonard Kalm [“Kalm Dep.”] at 36:11-38:10.)

According to UnitedHealth’s website “About”, “UnitedHealth Group is a leading health care company, serving more than 75 million people worldwide. [Its] family of companies touches nearly every aspect of health care, helping people live healthier lives.” (Pis.’ Ex. 54.) UnitedHealth also markets services in advertising campaigns such as “Grow Healthy” and “Health-in-Numbers” that refer to disease management, health care services, and its ability to make people healthier. (Pis.’ Ex. 55.) These campaigns also, however, refer to “health plans” and insurance, and United-Health asserts that these campaigns make clear that its business is insurance.

HealthONE markets its products and services in the following ways: internet, newspaper, webcasts, health fairs, television ads, magazine ads, magazines, billboards, direct mailings, telephone book listings, yellow page listings, posters, books, and booklets. HealthONE advertises its services in Colorado as well as nationally and internationally (Pis.’ Ex. 22, Dep. of HealthONE representative Linda Kanamine at 73:6-74:15), although United-Health argues that the national/international advertising is minimal. United-Health markets, advertises, or promotes the products sold under the UNITEDHEALTHONE brand in the following ways: brochures, flyers, mailings, television and radio commercials, print advertisements, kiosks and billboards, and internet websites. UnitedHealth offers products branded with the name UNITEDHEALTHONE in most areas of the United States.

HealthONE spends approximately $7 to $10 million annually on marketing. According to Ms. Kanamine, it markets to “anyone ... alive”, including past users of healthcare services, probable or potential healthcare service users, physicians, employers, the Insured and uninsured, other regions, sports participants, ...” (Pis.’ Ex. 23, Kanamine Dep. at 197:6-20.) United-Health spends $40 million annually on marketing, $4.9 million of which is spent on UNITEDHEALTHONE products and services. Since September 4, 2008, UnitedHealth has distributed approximately 37 million direct mailings in the form of letters and postcards displaying the UNITEDHEALTHONE brand to producers, current customers, and prospective customers. UnitedHealth has spent approximately $2.7 million on such direct mailings.

Ms. Kanamine testified that HealthONE and UnitedHealth market to very similar customers. (PL’s Ex. 23, Kanamine Dep. at 42:21^13:3.) UnitedHealth points out in response that this is only Ms. Kanamine’s opinion on the issue, and there is no evidence that Ms. Kanamine has any knowledge about UnitedHealth’s customers or their similarity to those of HealthONE.

Ms. Tarrant, the Chief Executive Officer [“CEO”] of HealthONE’s Sky Ridge Medical Center, testified on behalf of HealthONE that to her knowledge UnitedHealth is referred to as “United” or “United Healthcare”; she was not aware of the name “UnitedHealth Group”. (Pis.’ Ex. 47, Dep. of Maureen Tarrant [“Tar-rant Dep.”] at 78:8-14; see also Pis.’ Ex. 28, Kalm Dep. at 43:20-44:1, wherein Mr. Kalm, the Senior Vice President for Managed Care at HealthONE, testified that he refers to Defendant as “United”, “United-HealthCare” or “UHC”.) UnitedHealth points out in response that the evidence shows only how these two HealthONE representatives personally refer to it, and not to any knowledge in the health care community about how UnitedHealth is referenced. Further, it points out that HealthONE has not identified any instances in which UnitedHealth has advertised or publicly held itself out under the name “United.”

HealthONE also asserted in its response that UnitedHealth did not produce evidence of a single business registration in any state for the trade name “United-Health”. In reply, Defendant presented evidence that it has had a federally registered “UnitedHealth” trademark since 2009. (Def.’s Ex. 34.) Defendant also asserts that it has registered and used dozens of registered marks with combinations of “UnitedHealth” and another word, including UnitedHealth Access, United-Health Performance, UnitedHealth Advisors, and UnitedHealth Passport. (Id.)

HealthONE’s Trademarks

Plaintiff HCA-HealthONE LLC owns six federally registered trademarks: (a) Reg. No. 1,307,559 for typed drawing mark “HEALTH ONE”; (b) Reg. Nos. 2,334,897 and 2,439,860 for design marks incorporating the words Health and ONE and a stylized banner as shown on page 11 of the Motion for Summary Judgment (“Banner Mark”); (c) Reg. No. 2,904,672 for typed drawing mark “1-877-HEALTHONE”; (d) Reg. No. 3,617,397 for the standard character mark “HEALTHONE”; and (e) Reg. No. 3,620,820 for stylized mark incorporating the word “Health” in block letters and the word “One” in cursive letters on page 11 of the Motion for Summary Judgment (“Cursive Mark”). Since the filing of the Complaint, HealthOne has acquired two additional federal trademark registrations for HEALTHONE EXPRESS CARE and HEALTHONE EMERGENCY CARE, and has recently filed a service mark application for HEALTHONE 24 HOUR EMERGENCY CARE.

Through a predecessor entity, HealthONE first used the HEALTHONE® Marks in 1983. Four of the HEALTHONE® Marks have been in continuous use for more than five years post-registration. The HealthONE mark is not used to market any insurance products, whether group or individual.

HealthOne has presented evidence that it regularly monitors third party use of the HEALTHONE® Marks with the United State Patent and Trade Office [“USPTO”], the internet, trade and industry publications, trade and industry events, trade shows, health fairs, newspapers, and advertisements offered in any medium. (Pis.’ Ex. 38, Opposer’s Responses to Applicant’s First Set of Interrogatories at Resp. 13; Pis.’ Ex. 14, Kanamine Aff. ¶ 6.) Through this evidence, it also contends that it uses all procedures, rights, and remedies afforded by the Lanham Act and the USPTO to challenge potentially offending marks. Additionally, HealthONE uses cease and desist letters for third party uses for which no application or registration exists with the USPTO. (Id.)

In support of these assertions, HealthONE presented evidence that on November 6, 1997, Bruce Sloan defaulted in a Trademark Trial and Appeal Board [“TTAB”] Opposition proceeding filed by HealthONE’s predecessor entities opposing the registration of the mark 1-888-HEALTH-1 in connection with insurance services. Registration of that mark has subsequently been abandoned.

In 2004, HealthONE requested that a company called HealthONE, Inc. d/b/a USA HealthONE, ■ Inc. stop using the name “HealthONE” in connection with marketing and offering health insurance plans. (Pis. Ex. 62.) In 2006, HealthONE requested that a medical association stop using the name “Health One” in connection with the provision of health care.services. (Pis.’ Ex. 64.) In June 2007, HealthONE requested that Indiana Regional Medical Center not use the name “HealthOne” in connection with a medical care facility to be opened in Pennsylvania. (Pis.’ Ex. 65.) In 2009, HealthONE requested that Health One, Inc. of Wisconsin stop using the name “Health One, Inc.” in connection with pharmacy services. (Pis.’ Ex. 77.) And in 2010, HealthONE requested that U.S. Health 1 of Plainview, Texas, stop using the name “US Health 1” in connection with health insurance services. (Pis.’ Ex. 79.)

On December 18, 2007, an adverse judgment was entered against Antioch Holdings, Inc. in a TTAB Opposition Proceeding filed by HealthONE. Plaintiffs opposed the registration of the mark iHEALTHONE in connection with an electronic pill dispensing product.

In 2008, HealthONE objected to Marel Norwood’s use of the name “HEALTH ONESELF” in connection with the provision of health care services and filed a Notice of Opposition at the TTAB in 2008. The TTAB issued an opinion in favor of HealthONE, finding likelihood of confusion and refusing to register the name “HEALTHONESELF.”

On September 16, 2008, HealthWon, Inc. defaulted in a TTAB Opposition Proceeding filed by HealthONE opposing the registration of the mark “HEALTHWON” in connection with health care savings accounts and health care pricing analysis. Registration of that mark has subsequently been abandoned.

On April 2, 2009, a default judgment was entered against Antioch Holdings, Inc. in a TTAB Opposition Proceeding filed by HealthONE. Plaintiffs opposed the registration of the mark “HEALTHONE MEDICAL SYSTEMS” in connection with “computer-controlled devices for dispensing pills and capsules sold empty.”

Adoption of the UnitedHealthOne Mark

In 2007, UnitedHealth’s individual insurance policies were offered or “underwritten” by the following subsidiaries: Golden Rule Insurance Company, American Medical Security Life Insurance Company, Oxford, MAMSI and PacifiCare. HealthONE admits this, but notes that UnitedHealth’s subsidiary, UnitedHealthcare, also offers, underwrites, or administers individual health insurance policies. (Pis.’ Ex. 5.)

In mid-2007, UnitedHealth undertook an effort to adopt a single brand name to unify the marketing of its individual insurance products. Prior to adoption of the UnitedHealthOne mark, that name had been used informally within UnitedHealth to refer to its individual insurance businesses. UnitedHealth asserts that the UnitedHealthOne name followed convention adopted by several of its major competitors of adding a “one” to their core brand in order to identify and distinguish their individual policy business as opposed to their group policies, such as HumanaOne and CoventryOne.

Although the UnitedHealthOne name was in use internally, UnitedHealth wished to consider and test other names before committing the substantial resources required for a national rebranding effort covering several existing brands. To that end, UnitedHealth formed a “Marketing Council” composed of leads of various departments tasked with strategic marketing decisions. UnitedHealth engaged Great Productions Inc. [“GPI”], an external research company, to examine its then-existing branding and to make branding recommendations. GPI provided UnitedHealth with an initial list of potential names that might be used as an “umbrella brand” covering all individual insurance products, including Elements, Remedy, Axis, Healation, Verve, and Clarity.

Not satisfied with those initial proposed names, UnitedHealth directed GPI to conduct a detailed branding audit, competitive analysis, market segmentation, and brand identity analysis. The efforts of GPI and the UnitedHealth Marketing Council resulted in a list of names that were considered, and four names that were approved, for further testing: UnitedHealthOne, UnitedHealth4U, United HealthConnect and Empowering Health. (Def.’s Ex. 3, Dep. of Lisa Gilbert at 132:3-138:9; Def.’s Ex. 5 at 3; Def.’s Ex. 6.)

In January of 2008, GPI reported the results of testing those four preliminary name choices among focus groups in Los Angeles, Columbus, Atlanta and Orlando, noting that the name UnitedHealthOne had been determined to best capture the idea of insurance for individuals. The leader of the Brand Council effort, former employee Lisa Gilbert, believes that the UnitedHealthOne mark also tested better because of its connection to the parent brand, UnitedHealth, which was already widely recognized in the market. While Plaintiffs admit this, they present evidence that another name “[rjising to the top” and listed above UNITEDHEALTHONE was United Health4U. (Pis.’ Ex. 6 at UHO 56229.)

According to UnitedHealth, the report for the UnitedHealthOne mark commissioned by it was over 600 pages long. It included references to the HealthONE mark along with references to dozens of federally registered marks with combinations of the words “health” and “one,” including another federally registered “HealthOne” mark that has no association with Plaintiffs. It also listed scores of other business listings and Internet domain names using “health one” in various permutations and combinations. Defendant contends that this report was a trademark clearance report (Def.’s Ex. 2, Corne Decl. at ¶ 16), which Plaintiffs deny. Plaintiffs assert that the report was a trademark research report.

UnitedHealth unveiled the new UnitedHealthOne branding to its employees in April or May of 2008, and it was first used in advertising and promotion of United-Health’s insurance products in September of 2008. UnitedHealth spent a total of $906,141.08 in selecting, clearing and launching the UnitedHealthOne mark.

Use of the UnitedHealthOne Mark

UnitedHealth identifies the appearance of the UnitedHealthOne mark on page seven of its summary judgment motion, and asserts that the mark has appeared in the marketplace like that since its launch in 2008 to the present day. While Plaintiffs do not dispute, that UnitedHealth uses its mark in the format presented in its motion, they cite evidence which they assert shows that it also uses the standard character mark for UNITEDHEALTHONE extensively in the marketplace. (Pis.’ Exs. 8 and 9.)

UnitedHealth asserts that it uses the UnitedHealthOne mark solely in connection with the advertising of its individual insurance policies, and that no other products or services by any UnitedHealth division, including Optum, are sold under the UnitedHealthOne mark. (Def.’s Ex. 2, Corne Deck at ¶ 19; Def.’s Ex. 10, Deck of John Way at ¶¶ 7-8.) Plaintiff disputes this assertion, stating that UnitedHealth co-brands products branded with the UNITEDHEALTHONE mark with products branded under the name Optum. (Pis.’ Ex. 10 at UHO 002986, 006657, 045185, 046149, 046394, 047585, 019903-06; Pis.’ Ex. 11 at UHO 000388, 000495.)

Michael L. Corne, a Vice President of Health Products and Regulatory Affairs at Golden Rule Insurance Company, a subsidiary of UnitedHealth, submitted a Declaration stating that all insurance advertisements must comply with the insurance regulating authority in each state. (Def.’s Ex. 2, Corne Decl. at ¶ 6.) The state insurance regulations require that all advertisements prominently display the name of the UnitedHealth subsidiary that Is underwriting the policy, and also require United-Health and other insurers to keep track of customer complaints. (Id. at ¶¶ 6,15.)

The individual insurance products branded under the UnitedHealthOne mark are offered through independent brokers, broker groups, Internet brokers, and through direct sales to consumers seeking individual insurance coverage. Brokers who sell UnitedHealth’s individual insurance policies typically also sell products by one or more of UnitedHealth’s competitors.

Once the consumer has chosen a United-Health individual insurance product, the consumer must make a series of coverage decisions, such as the deductible amount, co-pay amounts, coinsurance, as well as optional benefits such as vision or prescription drug coverage. UnitedHealth asserts that once the consumer has selected the desired coverage, the underwriting process begins when the consumer fills out an application. Page one of the Application Packet states the name of the underwriting insurance company (such as Golden Rule Insurance Company). (Def.’s Ex. 11.) The status of the insurance company is actually explained, however, in a paragraph at the bottom of page one in small print. That paragraph states, “UnitedHealthOneSM is a brand representing a portfolio of insurance products offered to individuals and families through the United Healthcare family of companies. Golden Rule Insurance Company, a United Healthcare company, is the underwriter and administrator of these plans.” (Id.)

Once a consumer’s application has been approved, the policy is issued by the particular underwriting entity. While United-Health. asserts that the underwriting entity is clearly identified as an insurance company (Def.’s Ex. 2, Corne Decl. at ¶ 8), Plaintiffs dispute this, asserting that this is Mr. Corne’s subjective opinion that is unsupported by any documentary evidence.

Each applicant for coverage is underwritten and accepted or declined individually based on the information provided by the consumer as well as information obtained by UnitedHealth during the underwriting process. This includes information found through prior claims history, such as prescription history, and through the Medical Information Bureau. The underwriter may request that a call be made to the applicant to verify certain information or that additional medical records or lab tests are needed to make a final decision of insurability. During this underwriting process, the consumer may be in contact with several people, such as brokers, direct sales personnel or other sales and communication specialists who would explain the scope of coverage, premium options, and guide the consumers through the process.

On average, the monthly premium for the individual insurance products marketed under the UnitedHealthOne mark is approximately $260, and holders of United-Health’s individual insurance policies keep their policies for approximately three years. Since the UnitedHealthOne mark was adopted in September of 2008, United-Health’s individual policies have covered, on average, 28,000 members per year in Colorado.

HealthONE’s opposition to Use of the UnitedHealthOne Mark

Before filing its intent-to-use trademark application for UNITEDHEALTHONE with the United States Patent and Trademark Office (“USPTO”), UnitedHealth knew about HealthONE, its operations, and its pre-existing and federally protected rights in the HEALTHONE® Marks. Further, at the time HealthONE filed this lawsuit, UnitedHealth was aware of HealthONE’s objections to its use of the name UNITEDHEALTHONE.

UnitedHealth’s trademark registrations indicate that UnitedHealth- will use the name UNITEDHEALTHONE on insurance services and managed health care services, including “health care in the nature of health maintenance organizations.” Defendant’s trademark registrations do not restrict use of the UNITEDHEAL-THONE name to any particular entities affiliated with UnitedHealth.

On August 14, 2008, HealthONE sent UnitedHealth a cease and desist demand letter advising it that the name UNITEDHEALTHONE would be likely to cause confusion among consumers and demanding that it stop using the name and withdraw its requests for federal registration. UnitedHealth admits that it received this letter. Despite HealthONE’s express objections and opposition to its USPTO application, UnitedHealth did not cease and desist its attempt to register the name UNITEDHEALTHONE.

HealthONE initiated its opposition proceedings at the TTAB on September 9, 2008. Thereafter, despite the opposition proceeding, UnitedHealth began marketing and selling products under the UNITEDHEALTHONE brand, and it continues to do so.

Evidence Related to Customer Confusion

From September 2008 through September 2011, nearly 5,000 different holders of UnitedHealth’s individual insurance policies sought treatment in one of the HealthONE-branded hospitals. Since this dispute began, UnitedHealth has had a process in place in its call centers to identify any calls related to confusion between UnitedHealthOne and HealthONE but has not received a single report of any confusion. (Mot. Summ. J., Ex. 2, Corne Decl. at ¶ 15.) While HealthONE does not dispute this, it asserts that UnitedHealth did not present any evidence that it searched for evidence of confusion beyond its calls centers, such as through e-mails, website submissions, brokers or personal contact. In reply, UnitedHealth states that it did, in fact, implement procedures for detecting such confusion and found none, and that Plaintiffs are aware of that. (Def.’s Ex. 33, Corne Dep. at 172:11-14.)

HealthONE has no evidence of any actual consumer confusion between the mark HealthONE and Optum. HealthONE has no evidence of any actual consumer confusion between the mark HealthONE and the following entities related to Optum: AppleCare Medical Group, Memorial Healthcare IPA, Southwest Medical Associates, Lifeprint, WellMed Medical Management, and . NextDoor Health. HealthONE has no evidence of any actual consumer confusion between UnitedHealth and the following entities on which HealthONE has sought discovery related to UnitedHealth’s OptumHealth business: AppleCare Medical Group, Memorial Healthcare IPA, Southwest Medical Associates, Lifeprint, WellMed Medical Management, and NextDoor Health. HealthONE also has conducted no surveys to determine whether any confusion would be likely between the mark HealthONE and Optum and the following companies as to which HealthONE sought discovery related to UnitedHealth’s OptumHealth business: AppleCare Medical Group, Memorial Healthcare IPA, Southwest Medical Associates, Lifeprint, WellMed Medical Management, and NextDoor Health.

However, HealthONE did present evidence regarding confusion between HealthONE and UNITEDHEALTHONE. While UnitedHealth objects to this evidence, I find it is admissible for purposes of the summary judgment motion. I agree with HealthONE that the evidence it has asserted relevant to confusion is not inadmissible hearsay. That is because the statements are not presented to prove the truth of the matter asserted, but to demonstrate the mental state of the persons making them. Accordingly, they fall within the exception to hearsay found in Fed. R.Evid. 803(3). See Univ. of Kansas v. Sinks, 565 F.Supp.2d 1216, 1230-31 (D.Kan.2008). To the extent UnitedHealth attacks the credibility of the witnesses, arguing that the Court should disregard their testimony as they were HealthONE employees who did not keep written documentation of the conversations and/or cannot recall the specific name of a caller or person allegedly confused, I find for purposes of the summary judgment motion that this goes to the weight of testimony rather than its admissibility. See id. at 1230 n. 19. I now turn to HealthONE’s evidence of confusion.

According to an interrogatory response by HealthONE, in December 2009, the CEO of HealthONE’s Rose Medical Center, Kenneth Feiler, received several phone calls from a former patient who was unhappy with HealthONE sending UNITEDHEALTHONE insurance solicitations to patients. The former patient sent Mr. Feiler a copy of the solicitation, which was a piece of direct mail from UNITEDHEALTHONE. (Pis.’ Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. No. 8; see also Def.’s Ex. 29, Kenneth Feiler Dep. [“Feiler Dep.”] at 74:16— 23, 79:6-11, 80:20-25 — first time Mr. Feiler heard or obtained knowledge of UnitedHealthOne mark was when he received a patient complaint from a woman who was furious and claimed that he had given away her health insurance information and wanted to change her insurance; she faxed him the paper that had UnitedHealthOne on it.) In reply, UnitedHealth points out that the caller was upset that her personal information had been given to another company, which indicates that the caller was making a distinction between the two companies.

Mr. Feiler was unfamiliar with UNITEDHEALTHONE and was confused as to whether the paper sent to him by this caller with the name UnitedHealthOne was a HealthONE product. (Pis.’ Ex. 41, Resp. No. 8; Def.’s Ex. 29). Indeed, Mr. Feiler thought that “when she sent the paper to me, I really thought it was ours. I thought it was HealthONE.” (Def.’s Ex. 29, Feiler Dep. at 82:19-21.) He believed that HealthONE had begun selling health insurance policies. (Pis.’ Ex. 42, Feiler Dep. at 84:5-21.) Mr. Feiler called Leonard Kalm, the Senior Vice President for Managed Care at HealthONE, who informed him that UnitedHealthOne was not a HealthONE product. (Pis. Ex. 41, Resp. No. 8; Def.’s Ex. 29, Feiler Dep. at 82:11— 12.)

In June 2009, a representative of Sun-Trust Bank, located in North Carolina, called HealthONE on behalf of a SunTrust Bank customer for the purpose of having HealthONE assist in the cancellation of the customer’s UNITEDHEALTHONE insurance policy. (Pis.’ Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. No. 8; Pis.’ Ex. 43, Dep. of Meaghan Scull [“Scull Dep.”] at 35:2-36:23, 52:5-24, 53:9-13.) Ms. Scull, a receptionist at HealthONE at that time, answered this telephone call and testified that this person seemed confused that the number was not for UnitedHealthOne and confused about where he was calling. (Scull Dep. at 41:15-23, 44:22-45:4, 53:19-54:1.) She explained to the caller that HealthONE owned and operated hospitals and that UnitedHealth was an insurance company. (Id. 54:2-5.) She also told him that if he had an insurance question about United Healthcare or was trying to reach some insurance company with the name United, he would have to call United Healthcare. (Id. at 45:6-9.)

Prior to that phone call, Ms. Scull had received two separate phone calls from other individuals who had contacted HealthONE in their attempts to reach UNITEDHEALTHONE. The individuals asked her “Is this UNITEDHEAL-THONE?” (Scull Dep. at 30:17-34:20.) As a result of these calls, Ms. Scull contacted her supervisor Mr. Snowe who asked her to contact HealthOne’s general counsel about this. (Id. at 45:19-46:6.)

On May 13, 2010, Ian Barber noticed a television advertisement for UNITEDHEALTHONE while he was at home near Denver, Colorado. He called his wife, Davia Barber, a HealthONE employee, to ask her whether UnitedHealth had acquired or merged with her employer, HealthONE. (Pis.’ Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. 8; Pis.’ Ex. 44 at HONE 000013-41; Pis.’ Ex. 45, Dep. of Ian Barber at 11:9-13:10, Pis.’ Ex. 46, Dep. of Davia Barber [“Mrs. Barber Dep.”] at 20:12-22, 21:6-21.)

Davia Barber is a managed care consultant for HealthONE, supporting HealthONE to enable it to provide medical services to patients. (Pis.’ Ex. 46, Mrs. Barber Dep. at 12:-9-12.) She negotiates managed care contracts with insurance payers in Colorado, Oklahoma, Kansas, and Nevada. (Id. 12:18-23.) Ms. Barber previously worked for UnitedHealth and is familiar with the business of the two companies. (Id. 11:12-12:22; 13:8-14:12.) On May 13, 2010, Mrs. Barber verified in her deposition that she received a telephone call from Mr. Barber asking whether UnitedHealth acquired or merged with HealthONE. (Id. at 20:12-21:21, 22:21-24:3.) Mrs. Barber testified that she told her husband that she had not heard that UnitedHealth had purchased HealthONE and would find out what she could about the issue. (Id. at 22:21-25.)

Mrs. Barber testified that she then contacted her supervisor, Will Smitham, informing him that she had received a phone call from her husband advising that he had seen a commercial whereby he thought HealthONE had been purchased by UnitedHealth. (Pis.’ Ex. 46 at 23:1-16.) Mr. Smith assured Mrs. Barber that United-Health had not purchased HealthONE. (Id. at 23:17-20.) According to HealthONE’s Interrogatory response, Mrs. Smitham requested that Mrs. Barber compose an e-mail regarding UNITEDHEAL-THONE, which was subsequently forwarded to other HealthONE personnel. (Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. 8.)

A supplemental interrogatory response of HealthONE states that its broadcast media monitoring vendor, Cisión, regularly sends broadcast media clips pertaining to HealthONE to the marketing department at HealthONE for a fee. In 2009, Cisión sent HealthONE a report with a broadcast media clip regarding UNITEDHEAL-THONE because Cisión incorrectly believed that UNITEDHEALTHONE and HealthONE were affiliated. (Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. 8.) HealthONE contacted Cisión to inform them of the mistake. HealthONE explained that Cisión should not include clips about UNITEDHEAL-THONE in future reports because HealthONE is not affiliated with UNITEDHEALTHONE. (Id.)

Also, on March 3, 2010, the Denver Post published an article regarding medical insurance prices that referred twice to UnitedHealthONE as an insurance carrier in the Colorado market. (Ex. 41, HealthONE’s First Supplemental Resp. to UnitedHealth’s First Set of Interrogatories at Resp. 8.)

While in the physicians’ lounge at HealthONE’s Sky Ridge Medical Center, a HealthONE physician asked Ms. Tarrant, the CEO of HealthONE’s Sky Ridge Medical Center, whether she was aware if HealthONE was part of a new program affiliated with UnitedHealth. (Pis.’ Ex. 47, Tarrant Dep. at 8:23-25, 59:12-17.) She advised him that she had not heard of any such program. (Id. 59:21-22.) She also heard around that the same time that an employee or two had asked about this issue. (Id. 62:5-7.) They wanted to know what the story was between UnitedHealth and HealthONE because they saw the two names together. (Id. at 69:11-72:12.)

Ms. Tarrant testified that she contacted HealthONE’s corporate office to find out if there was some program that had been initiated between the two companies, reporting that she had heard this from several people. (Pis.’ Ex. 47, Tarrant Dep. at 62:7-22, 63:25-64:8.) She was informed by corporate that the two companies were not working on any programs together and that corporate was trying to resolve how the issue had come up. (Id. at 64:11-18.) She then conveyed this information to the people in her organization. (Id., 67:5-16.) Ms. Tarrant came to understand through her interactions with corporate that the name “United HealthOne” was being used by UnitedHealth to market some insurance products. (Id. at 64:19-65:7.)

Alleged Use of Plaintiffs’ Marks by Third Parties

HealthOne, Inc. of Knoxville, Tennessee, was founded in 1994 and provides physician billing and management services. While Plaintiffs admit this, they assert that approximately 95% of the business of HealthOne, Inc. of Knoxville, Tennessee is the provision of billing services. The company’s provision of physician management services is only 5 percent of its business. Additionally, it has only a single office located in Tennessee. (Pis.’ Ex. 13, Dep. of David C. Purvis at 16:3-8.)

In 2000, HealthOne, Inc. of Knoxville, Tennessee received a demand letter from Plaintiffs. After an exchange of letters with no further action from Plaintiffs, that company’s CEO understood there to be a “peaceful coexistence” with Plaintiffs. While Plaintiffs admit this, they assert that HealthOne, Inc. of Knoxville, Tennessee has never applied for federal registration, that they continue to monitor this company, and that the “peaceful coexistence” between the companies referenced by Defendant was based on the company’s use of the HealthONE mark only for billing services and only in that geographic area.

The domain name is not owned by HealthONE but rather by the unrelated company of HealthONE of Knoxville, Tennessee, which has used that website to advertise its healthcare billing and management services since registering the domain name sometime prior to 2000. While Plaintiffs admit this, they assert that the company’s advertising is limited primarily to Tennessee and the surrounding areas.

Health One, Inc., of Ridgeland, Mississippi, was founded in 1995 and provides health care claims priority consultant services. That company advertises its services through a website at . Plaintiffs admit this, but assert that the services of that company include assisting with insurance claims and assignments of benefits to ensure health care providers are paid by insurance companies. (Pis.’ Ex. 15, Dep. of Marcus Thompson [“Thompson Dep.”] at 23:3-15.) The company’s clients are limited to Mississippi, Louisiana, and Ohio. (Id. at 84:12-85:15.) Plaintiffs further assert that HealthOne, Inc. of Ridgeland, Mississippi has never applied for federal registration of its name, and that they continue to monitor the use of the HealthONE mark by this company. (Resp., Ex. 14, Kanamine Aff. ¶8.)

HealthOne, Inc. of Ridgeland, Mississippi approached a representative of HealthONE, Jacob Weismann, at a conference in October 2009, and Mr. Weismann noted that both companies use the HealthOne name. Mr. Thompson, a corporate representative of the Mississippi company, testified in his deposition that he called Mr. Weismann to discuss doing business. (Pis. Ex. 15, Thompson Dep. at 82:9-83:15.) While Plaintiffs denied that the two discussed doing business, citing the deposition testimony of Mr. Weismann, the deposition does not support this denial. Instead, when asked whether Mr. Thompson followed up with him to see if he could do business with him, Mr. Weismann admitted that he received some phone calls from Mr. Thompson but said he did not actually do business with him. (Pis.’ Ex. 16, Dep. of Jacob Weismann at 10:24-11:6.)

Health One Inc., of Falls Church, Virginia, was founded in 1995 and provides workaday health screening services and laboratory services in Atlanta, Chicago, Philadelphia, Pasadena, Irvine, Dallas, and Richmond. It previously operated a clinic in Alexandria, Virginia offering physicals, exams, and medical testing. Health One Inc of Virginia advertises its services through websites at < healthoneinc.com > and . While Plaintiffs admit this, they assert that the workaday health screening services are primarily limited to the metro Washington D.C. area, and that the service provided in the other cities were mostly for long-standing or regular clients. (Pis.’ Ex. 17, Dep. of Robert M. Quave [“Quave Dep.”] at 24:11-21, 43:14^14:3.) Additionally, Plaintiffs assert that the company ceased providing services at its Alexandria, Virginia clinic sometime between 2003 and 2005. (Id. at 23:1-24:10, 44:4-15.) Further, Health One Inc., of Falls Church, Virginia, has never applied for federal registration of its name (id. at 59:11-22), and HealthONE continues to monitor the use of the HealthONE mark by this company. (Resp., Ex. 14, Kanamine Aff. ¶ 9.) Finally, Plaintiffs assert that other than its website, the company’s advertising is limited to maintaining a company Facebook page and more recently, Google advertisements. (Pis.’ Ex. 17, Quave Dep. at 34:16 to 35:1, 40:16 to 41:4.)

Health One Medical Centers, of Detroit, Michigan, was founded in 1996 and provides medical clinic services in Lincoln Park and Dearborn Heights, Michigan. (Pis. Ex. 18, Dep. of Charmaine Goonewardena [“Goonewardena Dep.”] at 14:15— 15:6.) It has previously operated as many as four clinics. (Id. 27:24-28:8.) The company provides its services through a. website at < healthonemedicalcenters.com >. Plaintiffs admit this, but assert that all of the clinics of Health One Medical Centers are located in the Detroit area. (Pis. Ex. 18, Goonewardena Dep. at 14:15-15:6, 27:24-28:8.) They further assert that the company has never applied for federal registration of its name (id. at 36:18-37:7), and that HealthONE continues to monitor the company’s use of the HealthONE mark. (Pis.’ Ex. 16, Kanamine Aff. ¶ 10). Finally, Plaintiffs assert that other than the website, the company’s advertising is limited to an ad in the local Yellow pages. (Pis.’ Ex. 18, Goonewardena Depo. at 26:7-10.)

HealthOne Staffing of Rocklin, California, was founded in 2003 and provides nurse staffing services to, among other hospitals, hospitals owned by HealthONE. The company advertises its services through a website at chealthonestaffing.com>. Plaintiffs assert that HealthOne Staffing has agreed to voluntarily discontinue using the name HealthONE and to change its name in response to HealthONE’s objection. (Pis.’ Ex. 19 at HONE 017819.)

HealthONE Alliance, of Calhoun, Georgia, was founded in 1994 and serves approximately 73,900 members. The company advertises its services through a website at . The company provides “a network to self-insured employers of hospitals, physicians, ancillary services, as well as ... [a] network for [its] insured plan.” (Pis.’ Ex. 20, Dep. of Judy Fair [“Fair Dep.”] at 11:24— 12:4.) It also has developed an EMR software, basically for local physicians. (Id. at 12:5-7.) It provides services in Georgia, and has three offices there, but its programmers for the technologies group are in Texas. (Id. at 15:6-14.) Plaintiffs point out that the company’s network and services are limited to Georgia and parts of Tennessee. Plaintiffs further point out that the company has never applied for federal registration of its name (Pis.’ Ex. 20, Fair Dep. at 28:13-16, 46:20^47:1), and that they continue to monitor its use of the HealthONE mark. (Pis.’ Ex. 14, Kanamine Aff. ¶ 11.)

Health and Nutrition Technology, of Capitola, California, was founded in 1994 and provides a Health One weight loss product. The company owns and operates a clinic in Durango, Colorado that is overseen by two local physicians. It markets its goods and services through a website at . HealthONE asserts that it continues to monitor the use of the HealthOne mark by this company. (Pis.’ Ex. 14, Kanamine Aff. ¶ 12.) It further asserts that other than the website, Health and Nutrition Technology’s advertising is limited to occasional ads in local newspapers or radio stations where its offices are located and the occasional attendance by staff at trade shows. (Pis.’ Ex. 21, Dep. of Hannah Pacey Schultz Wilson at 24:8-18.)

III. ANALYSIS

A. Summary of Argument

UnitedHealth argues that HealthONE’s claim of trademark infringement — which also underlies all of its other causes of action — fails as a matter of law because HealthONE cannot show likely consumer confusion. Defendant asserts on that issue that the parties’ respective experts both found legally insufficient levels of likely confusion. Further, it asserts that there is no evidence that any legally significant number of actual consumers have ever been confused by the use of these two brands. UnitedHealth claims that this not surprising, as the respective marks look different, sound different, have different meanings, and are used to market different products through different marketing channels. UnitedHealth also argues that there is no evidence anywhere in the record that a brand used by a local hospital chain in Denver played any role in the decision by one of the world’s largest insurers to choose a new nationwide brand consisting of its own name plus the industry-recognized standard for identifying companies selling individual health insurance — “One.”

HealthONE argue in response that its survey expert found more than legally sufficient levels of likely confusion and that the survey by UnitedHealth’s expert, when corrected for its gross misinterpretation of responses, also found more than legally sufficient levels of confusion. Further, it asserts that there exist numerous instances of actual confusion by UnitedHealth’s use of the words “healthone”, which is not surprising as UnitedHealth knowingly appropriated the HEALTHONE® Mark in its entirety. HealthOne also contends that the marks look and sound the same, convey the same meaning and are used to market increasingly similar products and services through precisely the same marketing channels. It is argued by HealthONE that these significant disputes of material fact preclude summary adjudication of its claims.

B. Standard of Review

Summary judgment may be granted where “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and the ... moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). “A fact is ‘material’ if, under the governing law, it could have an effect on the outcome of the lawsuit.” E.E.O.C. v. Horizon/ CMS Healthcare Corp., 220 F.3d 1184, 1190 (10th Cir.2000). “A dispute over a material fact is ‘genuine’ if a rational jury could find in favor of the nonmoving party on the evidence presented.” Id.

The burden of showing that no genuine issue of material fact exists is borne by the moving party. Horizon/ CMS Healthcare Corp., 220 F.3d at 1190. “ ‘Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.’ ” Atl. Richfield Co. v. Farm, Credit Bank of Wichita, 226 F.3d 1138, 1148 (10th Cir.2000) (quotation omitted). The court must “ ‘view the evidence and draw all reasonable inferences therefrom in the light most favorable to the party opposing summary judgment.’ ” Id. (quotation omitted). All doubts must be resolved in favor of the existence of triable issues of fact. Boren v. Sw. Bell Tel. Co., 933 F.2d 891, 892 (10th Cir.1991).

In order to avoid summary judgment on a trademark infringement claim, a plaintiff “must show that a genuine issue of material facts exists regarding whether defendants’ use of its [trademark] would likely cause confusion.... ” King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089 (10th Cir.1999). Although likelihood of confusion “ ‘is frequently a fairly disputed issue of fact on which reasonable minds may differ, the issue is amenable to summary judgment in appropriate cases.’ ” Id. (quoting Universal Money Ctrs. Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1530 n. 2 (10th Cir. 1994)).

C. Whether Summary Judgment is Appropriate on the Trademark Claim and Claims Requiring a Showing of Likelihood of Confusion

Count I of HealthONE’s Verified Complaint asserts that UnitedHealth’s use of the UnitedHealthOne mark without HealthONE’s permission constitutes trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1). “ ‘A trademark is a distinctive mark, symbol, or emblem used by a producer or manufacturer to identify and distinguish his goods from those of others.’ ” Beer Nuts, Inc. v. Clover Club Foods, Co., 711 F.2d 934, 939 (10th Cir.1983) [“Beer Nuts I ”] (quotation omitted). To prove infringement, HealthOne must prove, among other elements, that UnitedHealth’s use is likely to cause confusion in the marketplace concerning the source or quality of the products. Universal Money Ctrs., 22 F.3d at 1530.

Several factors are relevant in determining whether there is a likelihood of confusion: (i) the degree of similarity between the marks, including the mark’s appearance, pronunciation, suggestion, and manner of display; (ii) strength or weakness of the plaintiffs mark; (iii) the intent of the alleged infringer in adopting its mark; (iv) similarities and differences of the parties’ goods, services, and marketing strategies (also stated as the relation in use and the manner of marketing between the goods and services marketed by the competing parties); (v) the degree of care likely to be exercised by purchasers of the goods or services involved; and (vi) evidence of actual confusion. Heartstrings, Inc. v. Heartspring, Inc., 143 F.3d 550, 554 (10th Cir.1998). This list is not exhaustive. King of the Mountain, 185 F.3d at 1090.

“Some of these factors may prove more relevant than others, depending on the facts of each case”; and other cases may demand consideration of other factors. Heartstrings, 143 F.3d at 554. “No one factor is dispositive, and the final determination of likelihood of confusion must be based on consideration of all relevant factors.” Id. “In every case, however, the key inquiry is whether the consumer is likely to be deceived or confused by the similarity of the marks.” Id.

1. First Factor — Degree of Similarity

As to the first factor, the degree of similarity between the marks, the marks must be compared in the light of what occurs in the marketplace where the prospective purchaser does not ordinarily carry a sample of the mark. Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268, 1270 (10th Cir.1988). The degree of similarity of the mark is tested on three levels as encountered in the marketplace: sight, sound, and meaning. Universal Money Ctrs., 22 F.3d at 1530-31. The similarities of the marks are given more weight than the differences. King of the Mountain, 185 F.3d at 1090.

“The court may not engage in a side-by-side comparison of the marks.” King of the Mountain, 185 F.3d at 1090. “Rather, ‘the court must determine whether the alleged infringing mark will be confusing to the public when singly presented.’ ” Id. (quoting Universal Money Ctrs., 22 F.3d at 1531); see also Sally Beauty Co., Inc. v. Beautyco, Inc., 304. F.3d 964, 972 (10th Cir.2002). The court is “not free to focus solely on name similarity.” Id. at 555. Similarity of appearance is determined “on the basis of the total of the designation, rather than on a comparison of individual features.” First Sav. Bank, F.S.B. v. First Bank Sys., 101 F.3d 645, 653 (10th Cir.1996). “[T]he likelihood of confusion is reduced if the two trademarks, taken as a whole, are visually distinct.” Heartstrings, Inc., 143 F.3d at 554. This factor has been held to be the most important factor. See King of the Mountain, 185 F.3d at 1091.

I first address similarity in sound, finding that this weighs against a finding of similarity. While UnitedHealth’s logo marks employ, in part, the same phrase as HealthOne’s mark and therefore might sound somewhat similar, King of the Mountain, 185 F.3d at 1091, I find overall find that the presence of the additional word “United” at the beginning of the UnitedHealthOne mark weighs against a finding of similarity under the “sound” factor. See Lederman Bonding Co. v. Sweetalia, No. 06-cv-00950-WYDBNB, 2006 WL 2949290, at 4 (D.Colo. Oct. 16, 2006); see also First Sav. Bank, 101 F.3d at 653. This makes the two marks different in pronunciation, particularly since the word “United” is at the beginning of the mark. Further, Defendant’s mark contains five syllables as compared to Plaintiffs’ mark containing only two syllables. Thus, I find that the marks are dissimilar in sound.

I now turn to similarity in sight. HealthONE’s stylized marks appear as follows:

UnitedHealth’s stylized marks appear as follows:

I find that the appearance of the marks is dissimilar, even when the marks are “singly presented.” Although the marks use the word “healthone” in some format, significant differences exist visually in the overall design of the stylized marks. HealthONE’s marks appear only in the color black and with a banner or cursive writing. UnitedHealth’s marks, on the other hand, use both black and blue, have different fonts, and attach UnitedHealth’s stylized logo. I also note that HealthONE’s mark consists of two word segments, “Health” and “ONE”, while the UnitedHealthOne mark has three. And HealthONE’s stylized mark, as it appears in the marketplace, capitalizes the word “ONE” whereas UnitedHealth’s does not. Further, HealthONE argued successfully in other litigation before the TTAB that “it is often the first part of a mark that is most likely to be impressed upon the mind of a purchaser and remembered” See HCA-Healthone LLC v. Marel Norwood, TTAB Opp. Proc. 91182226, June 3, 2011 Opinion, Def.’s Ex. 22 at 9-10.

Nonetheless, I find that the similarities between HealthONE’s marks and UnitedHealth’s marks outweigh the differences. As HealthONE points out, it has registered “standard character” marks. Such registrations make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation. Sally Beauty, 304 F.3d at 970 (citing 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:58 (4th ed. 2011)) [hereinafter “McCarthy”]. Based on the foregoing, HealthONE asserts rights in the “HealthONE” mark, regardless of type styles, proportions or other possible variations. Id. “[T]he argument concerning a difference in type style is not viable where one party asserts rights in no particular display.” SquirtCo v. Tomy Corp., 697 F.2d 1038, 1041 (Fed.Cir.1983). The cases relied on by UnitedHealth, including First Savings Bank and King of the Mountain, did not involve standard character marks such as at issue here.

I also note that Defendant’s marks are not actually three separate words, but a combined word using the term “HealthOne”. UnitedHealth argues, however, that this similarity is not enough to outweigh the visual differences in the marks, citing Sally Beauty Co., 304 F.3d at 972 (finding that the marks were not visually similar because they contained different numbers of words, ■ and although they both began with the same six letters, this mere similarity was not sufficient to outweigh their visual differences).! disagree. UnitedHealth ignores the fact “that the dominant portion of each mark is entitled to greater weight in evaluating the likelihood of confusion.” Universal Money Ctrs., 22 F.3d at 1531. In this case, construing the evidence in the light most favorable to HealthONE, I find that “healthone” as used in the marks is the dominant portion, to which UnitedHealth simply added “United.”

UnitedHealth argues, however, that it has done nothing more than add the word “one” to its own well-known name of UnitedHealth. It asserts that the word “one” has been recognized by TTAB