United States District Court, N.D. Illinois, Eastern Division
DR. JAY JOSHI, NATIONAL PAIN CENTERS, LLC, Plaintiffs,
DR. JAY K. JOSHI, INSTITUTE OF ADVANCED CARE & ANALYTICS, PC d/b/a PRESTIGE CLINICS Defendants.
OPINION AND ORDER
L. Ellis United States District Judge.
Dr. Jay Joshi, the founder of and sole treating physician at
National Pain Centers, LLC (“NPC”), specializes
in treating patients with chronic pain. He developed a
reputation for his conservative use of opioids to treat
patients, as well as his advocacy for educating physicians
about responsible treatment practices in the face of the
opioid epidemic. Defendant Dr. Jay K. Joshi is a general
practitioner at Prestige Clinics (“Prestige”) who
happens to have the same name as Plaintiff. Plaintiff alleges
that Defendant capitalized on this coincidence by
misappropriating Plaintiff's reputation and credentials
to bolster his own practice. Plaintiff brought this suit
against Defendant for: 1) false designation of origin,
sponsorship, or endorsement, and unfair competition under the
Lanham Act, 15 U.S.C. § 1125(a), the Illinois Consumer
Fraud and Deceptive Business Practices Act, 815 Ill. Comp.
Stat. 505/2, the Illinois Uniform Deceptive Trade Practices
Act, 815 Ill. Comp. Stat. 510/2, as well as Illinois and
Indian common law (Counts I, II, VI, and VII); 2) trademark
infringement under the Lanham Act, Illinois common law, and
Indiana common law (Counts I, VI, VII); 3) trademark dilution
under the Federal Trademark Dilution Act of 1995
(“FTDA”), as amended by the Trademark Dilution
Revision Act of 2006, 15 U.S.C. § 1125(c), the Illinois
Trademark Registration and Protection Act
(“ITRPA”), 765 Ill. Comp. Stat 1036/65, and
Illinois common law (Counts III, IV, and V); and 4) unjust
enrichment (Count VIII). Defendant moves the Court to dismiss
Court grants in part and denies in part Defendant's
motion. Because Plaintiff has sufficiently pleaded his claim
of false designation of origin and unfair competition, as
well as for trademark infringement, he may proceed with
Counts I, II, VI, VII, and VIII. Plaintiff has not
sufficiently alleged his trademark dilution claims, so the
Court dismisses Counts III, IV, and V.
has practiced in the field of pain medicine for eighteen
years. He entered medical school when he was sixteen through
an accelerated honors program. He then completed an
internship in internal medicine at Northwestern University
before completing a residency and fellowship at Henry Ford
Hospital in Detroit, Michigan. During his fellowship,
Plaintiff trained in interventional spine and pain
management, and he is now a board-certified anesthesiologist.
Plaintiff cultivated his practice and reputation around the
conservative use of pain medicine, only prescribing opioids
after a thorough evaluation of his patient's needs and
exhausting other options. With the rise of the “opioid
epidemic, ” Doc. 1 ¶¶ 17-20, Plaintiff has
spoken publicly about the dangers of over-prescribing opioids
and the need for educating physicians who are not trained in
pain management. He has spoken “at over 600 conferences
and presentations” on this topic, “including
PAINWeek, the largest Pain Management Conference in the
United States.” Id. ¶ 19. He has also
worked for the Department of Substance Abuse at the World
Health Organization in Geneva, Switzerland. In 2011,
Plaintiff founded NPC, which operates two clinics and two
surgical centers in the Chicago metropolitan area. NPC's
“primary stock in trade” is the pain management
services and reputation of Plaintiff, who is its sole
treating physician. Id. ¶ 16. NPC and Plaintiff
have used the name Dr. Jay Joshi prominently in their
advertisements and have spent over $1 million to market their
recently, Defendant practiced general medicine at Prestige,
located in Illinois and Indiana. As a family medicine
physician, Defendant did not specialize in any particular
area of medicine, nor did he receive training specifically in
anesthesiology or pain medicine. At some point, however,
Defendant began marketing himself as a pain specialist,
utilizing his shared name with Plaintiff and capitalizing on
Plaintiff's reputation for pain management. For example,
Defendant purposely combined or failed to fix his contact
information on Plaintiff's online professional profiles,
and he misappropriated Plaintiff's credentials and
patient reviews in his marketing. He also “gave
interviews to journalists who were trying to get in touch
with, and then thought they were speaking with, ”
Plaintiff. Id. ¶ 23.
result of Defendant's actions, more people began seeking
treatment at Prestige, to the point where Defendant saw
thirty to forty pain patients a day. Between April and
December 2017, Defendant issued more than 6, 000
prescriptions for controlled substances, and he became one of
the leading prescribers of pain medications in the state of
Indiana. In January 2018, prosecutors indicted Defendant for
illegally prescribing opioids. The indictment alleged that
Defendant signed prescriptions without seeing patients, and
that he had his staff give out prescriptions while he was on
vacation. In July 2018, Defendant pleaded guilty to illegally
prescribing opioids. The news on local television stations,
online, and in print, including in the Chicago Tribune
reported on the indictment and subsequent plea.
publicity surrounding Defendant's criminal case took its
toll on Plaintiff and NCP. Other physicians stopped referring
their patients to Plaintiff because they thought he was the
one who had been indicted. People that Plaintiff “ha[d]
known for years, even decades” stopped associating with
him. Id. ¶ 27. Plaintiff typically gave over
fifty presentations a year at different conferences, but
“has not received a single invitation to speak”
since Defendant's indictment. Id.
motion to dismiss under Rule 12(b)(6) challenges the
sufficiency of the complaint, not its merits. Fed.R.Civ.P.
12(b)(6); Gibson v. City of Chicago, 910 F.2d 1510,
1520 (7th Cir. 1990). In considering a Rule 12(b)(6) motion
to dismiss, the Court accepts as true all well-pleaded facts
in the plaintiff's complaint and draws all reasonable
inferences from those facts in the plaintiff's favor.
AnchorBank, FSB v. Hofer, 649 F.3d 610, 614 (7th
Cir. 2011). To survive a Rule 12(b)(6) motion, the complaint
must not only provide the defendant with fair notice of a
claim's basis but must also be facially plausible.
Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct.
1937, 173 L.Ed.2d 868 (2009); see also Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d
929 (2007). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Iqbal, 556 U.S.
first argues that Plaintiff cannot state a claim for false
designation of origin, sponsorship, or endorsement, and
unfair competition under the Lanham Act because Defendant did
not use false or misleading representations to convey that
Plaintiff endorsed or sponsored Defendant's medical
services. Second, Defendant maintains that the Court should
dismiss Plaintiff's trademark infringement claims because
he does not have a protectable mark in the name Dr. Jay
Joshi. Third, Defendant asserts that even if Dr. Jay Joshi is
a valid mark, Plaintiff has not sufficiently alleged that it
is famous to support his trademark dilution claims. Fourth,
Defendant asserts that the Court must dismiss the Illinois
trademark dilution claims because Plaintiff and Defendant are
Defendant moves to dismiss the entire complaint, the parties
agree that the Court need not address each count separately.
Plaintiff's federal, state and common-law claims are
largely analyzed in the same way. IPOX Schuster, LLC v.
Nikko Asset Mgmt. Co., 304 F.Supp.3d 746, 759 (N.D. Ill.
2018) (“The Court applies the same analysis for the
Lanham Act and common law claims.”); Spex, Inc. v.
Joy of Spex, Inc., 847 F.Supp. 567, 579 (N.D. Ill. 1994)
(“Claims for unfair competition and deceptive business
practices brought under Illinois statutes are to be resolved
according to the principles set forth under the Lanham
Act.”). Because Plaintiff's unjust enrichment claim
depends on the same underlying conduct, the Court considers
it as well under the federal analysis. Cleary v. Philip
Morris Inc., 656 F.3d 511, 517 (7th Cir. 2011)
(“[I]f an unjust enrichment claim rests on the same
improper conduct alleged in another claim, then the unjust
enrichment claim will be tied to this related claim-and, of
course, unjust enrichment will stand or fall with the related
claim.”). The Court excludes only Plaintiff's
trademark dilution claims, which the Court analyzes
differently under federal and state law. Doctor's
Data, Inc. v. Barrett, 170 F.Supp.3d 1087, 1100 n.9
(N.D. Ill. 2016). Therefore, with the exception of
Plaintiff's dilution claims, the Court “will treat
this case as a federal Lanham Act case, analyzing the
parties' contentions under the principles and case law of
that statute.” TMT N. Am., Inc. v. Magic Touch
GmbH, 124 F.3d 876, 881 (7th Cir. 1997).
considering Defendant's arguments, the Court briefly
addresses its subject matter jurisdiction to hear NPC's
claims. Defendant argues, in a footnote, that because NPC
does not own any rights in the name Dr. Jay Joshi, it does
not have standing to assert any claims under the Lanham Act.
But the only case Defendant cites, Gruen Marketing Corp.
v. Benrus Watch Co., specifically states that a party
has standing to assert a claim if it has a “reasonable
interest to protect, which some courts have characterized as
a commercial interest.” 955 F.Supp. 979, 983 (N.D. Ill.
1997) (citation omitted). NPC has ...