UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS

FORT WORTH DIVISION

TOTALCARE HEALTHCARE SERVICES,

LLC,

Plaintiff,

v. No. 4:22-CV-0789-P

TOTALMD, LLC,

Defendant.

OPINION & ORDER

Before the Court is Plaintiff’s Motion for Preliminary Injunction. 

ECF No. 7. For the following reasons, the Court GRANTS the Motion. 

FACTUAL & PROCEDURAL BACKGROUND

In 2008, Plaintiff Totalcare Healthcare Services—a family medicine 

and emergency care company—first used the unregistered mark

TOTALCARE in the greater Dallas-Fort Worth area. Ten years later, 

Defendant Total MD, LLC, an urgent care company historically 

marketed towards men—started using the mark TOTALCARE for its

new brand of urgent care centers in the Austin, Texas area. ECF No. 33 

at 30–32. In 2021, Defendant opened a “TotalCare Urgent Care” location 

on the same street as one of Plaintiff’s “Totalcare Family Medicine”

locations about half a mile away. Plaintiff sued and now seeks to enjoin 

Defendant’s use of the mark TOTALCARE in specific markets in various

North Texas counties. ECF No. 7. 

The Court held a preliminary injunction hearing on the matter on 

October 26,2022. Plaintiff presented the following evidence.

Plaintiff first called Robert Sek—Defendant’s founder and Chief 

Executive Officer—to the stand. ECF No. 33 at 91—233. Sek stated that 

Defendant chose the mark TOTALCARE to expand its consumer market 

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which was traditionally targeted at men under their “TotalMen’s”

brand. Id. at 31–36. Sek elaborated on Defendant’s strategy for opening 

new locations and explained Defendant’s plans to expand into the North 

Texas market. Id. at 43. Sek stated multiple times that he did not know 

of Plaintiff’s senior use of the mark in the greater Dallas-Fort Worth 

area. Id. at 58. 

Plaintiff next called Drew Valcourt—Defendant’s Vice President of 

Development—to the stand. Id. at 65. Valcourt testified that he was 

previously the Director of Real Estate and Construction. Id. at 65—67. 

After discussing Defendant’s methods for acquiring and building new 

locations, Valcourt also stated that he did not know of any of Plaintiff’s 

similarly named locations at any time before this suit was filed. Id. at 

88.

Plaintiff’s next witness was its founder, Wes Saad, M.D. ECF No. 33 

at 92. Dr. Saad discussed the origin of Plaintiff’s name and how he 

intentionally chose it in 2008 because “it would be a more distinctive 

name, a more memorable name.” Id. at 95. Dr. Saad discussed how he 

later combined the two-word mark TOTAL CARE into a single-word 

mark TOTALCARE after a trademark dispute with another medical 

care company, CareNow. Id. at 96. Dr. Saad noted that at some of their 

locations, the TOTALCARE logo stands alone with no descriptive text 

below. Id. at 98. Dr. Saad discussed Plaintiff’s expansion into new 

fields—including emergency rooms and behavioral health clinics—in 

North Texas and the success of the brand’s reputation in the community. 

Id. Dr. Saad also discussed instances when THS defended their mark 

against other companies seeking to use it. Id. at 114. Finally, Dr. Saad 

described his shock and dismay at Defendant’s opening of similarly

named facilities in the same markets—and even on the same street—as 

Plaintiff’s facilities. Id. at 113-16. 

Dion Lampe—Plaintiff’s Director of Brand Marketing—next took the 

stand and discussed Plaintiff’s marketing efforts in the greater DallasFort Worth area. Id. at 140–65. Lampe discussed the intentional and 

targeted marketing efforts THS makes on a yearly basis to garner 

goodwill and name recognition in the community. Id. These efforts 

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included major sponsorships of Texas Christian University and other 

universities in the North Texas market. Id. at 160–65. 

Finally, Stephanie LeBlanc—Plaintiff’s current Chief Executive 

Officer—took the stand. LeBlanc testified about Plaintiff’s positive

reputation in the community. She testified that individuals have 

approached her and congratulated her on Defendant’s “newest facility 

on Hulen [Street].” Id. at 219. Lastly, LeBlanc testified about a recorded 

call from a customer who was confused over a referral and billing 

between a “TotalMens Urgent Care” and a “Totalcare Behavioral Care”

location. Pl.’s Exhibit 101, ECF No. 33 at 226–27. The individual on the 

call was confused about the two companies and their related websites 

and names. Id. Further, the caller was frustrated and expressed 

disappointment with service and billing on multiple fronts. Id.

Defendant brought no witnesses to the stand and the motion is thus 

ripe for the Court’s review.

LEGAL STANDARD

A. Preliminary Injunction

A preliminary injunction is an “extraordinary remedy” and is 

granted only if the movant carries its burden on four requirements. 

Nichols v. Alcatel USA, Inc., 532 F.3d 364, 372 (5th Cir. 2008). The 

movant must show: “(1) a substantial likelihood of success on the merits; 

(2) a substantial threat of irreparable injury; (3) the threatened injury 

to the movant outweighs the threatened harm to the party sought to be 

enjoined; and (4) granting the injunctive relief will not disserve the 

public interest.” City of Dall. v. Delta Airlines, Inc., 847 F.3d 279, 285 

(5th Cir. 2017) (quotation omitted). “The decision to grant or deny a 

preliminary injunction is discretionary with the district court.” Miss. 

Power & Light Co. v. United Gas Pipe Line Co., 760 F.2d 618, 621 (5th 

Cir. 1985). 

ANALYSIS

A. Likelihood of Success on the Merits 

To show a likelihood of success on the merits, a plaintiff must present 

a prima facie case, but need not prove that it is conclusively entitled to 

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summary judgment. Daniels Health Scis., L.L.C. v. Vascular Health 

Scis., L.L.C., 710 F.3d 579, 582 (5th Cir. 2013). Before issuing an 

injunction for trademark infringement, the Court must consider

whether: (1) the claimed mark is eligible for protection; (2) the party 

seeking protection is the mark’s senior user; (3) there is a likelihood of 

confusion between the plaintiff’s mark and the defendant’s mark; and 

(4) this likelihood of confusion will cause the plaintiff irreparable injury 

for which there is no adequate legal remedy. Paulsson Geophysical 

Servs., Inc. v. Sigmar, 529 F.3d 303, 309 (5th Cir. 2008).

1. Whether the mark is eligible for protection

A trademark “is established by use, not by registration.” Union Nat’l

Bank of Tex. v. Union Nat’l Bank of Tex., 909 F.2d 839, 842 (5th Cir. 

1990). Unregistered marks are “governed generally by the same 

principles that qualify a mark for registration under the Lanham Act.”

Bd. Supervisors La. State Univ. Agric. & Mech. Coll. v. Smack Apparel 

Co., 550 F.3d 465, 475 (5th Cir. 2008). Under the Lanham Act, only 

“distinctive” marks are eligible for protection. Id. 

To determine the distinctiveness of the mark, courts must determine 

whether it is “(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or 

(5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 

(1992). In general, the first two categories—generic and descriptive—

are not distinctive while the last three categories—suggestive, 

arbitrary, and fanciful—are distinctive. Id. Notably, “[t]hese categories, 

like the tones in a spectrum, tend to blur at the edges and merge 

together.” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 

790 (5th Cir. 1983). Because of the blurry areas that exist in between 

some categories, “[t]he labels are more advisory than definitional, more 

like guidelines than pigeonholes.” Id. 

The table below provides a concise overview of the categories:

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Category Examples Protection 

Generic Bread, Water Unprotected

Descriptive Urgent Care, Bank of 

Texas, Vision Center Unprotected

Descriptive with 

Secondary Meaning ChapStick, Xerox Protected

Suggestive

Extend Your Beauty, 

Streamline Production 

Systems, Coppertone 

Protected

Arbitrary Apple, Camel, Pixar Protected

Fanciful Google, Exxon, 

Kleenex Protected

Plaintiff contends that TOTALCARE is a suggestive mark. 

Defendant argues that it is at most a descriptive mark without 

secondary meaning, and therefore not protected by the Lanham Act. The 

Court thus focuses its analysis on the first three classifications. 

a. Generic 

A generic mark—like “Bread”—is not distinctive because it identifies 

a common product or service rather than its source. Zatarains, 698 F.2d 

at 790. Defendant argues that TOTALCARE is a generic mark because 

“it is simply a generic word or phrase generally describing healthcare 

services.” ECF No. 23 at 14. The Court disagrees. 

While many healthcare services and products that use the words 

“total” and “care,” (ECF No. 23 at 14–16), there are many businesses 

that use the mark in drastically different industries—from airplane 

engines to pet grooming services. ECF No. 29 at 3–4. The nonspecific 

nature of the mark does not identify a product or a service directly. 

Thus, the mark is not generic. 

b. Descriptive

A descriptive mark—like “Urgent Care”—merely describes a

characteristic or quality of a product or service, rather than the source 

of the product or service. Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115

(5th Cir. 1979). “To be descriptive, a term need only describe the essence 

of a business, rather than to spell out comprehensively all its adjunct 

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services.” Sec. Ctr., Ltd. v. First Nat’l Sec. Ctrs., 750 F.2d 1295, 1299 

(5th Cir. 1985)

Most of the argument at the hearing concerned the role that context 

plays in determining descriptiveness. Defendant contends that the 

context in which a mark is advertised determines whether the mark is 

descriptive. Thus, Defendant contends that because Plaintiff often 

advertised its TOTALCARE mark alongside the type of services they 

offer—like “Totalcare Emergency Room” or “Totalcare Behavioral 

Services”—the mark is descriptive. See Def.’s Exhibit 5, ECF No. 33.

That is, Defendant asserts that based on the context of Plaintiff’s 

advertising there are three marks at issue, not just one. ECF No. 33 at 

268. To support its reasoning, Defendant cites two Fifth Circuit cases. 

Id. at 268–73. 

In Xtreme Lashes, the Fifth Circuit overturned a district court’s grant 

of summary judgment and found that there was a genuine issue of fact 

as to whether the mark “Extend Your Beauty” was suggestive. 576 F.3d

221, 227 (5th Cir. 2009). In evaluating this mark, the Fifth Circuit held

that courts must “examine the context in which a term appears, and the 

audience to which it is directed” and “look at multi-word marks as a 

unitary whole . . . not parse apart the constituent terms.” Id. (quoting 

Union Nat’l Bank, 909 F.2d at 846–47). In applying this context, the 

court noted that “Extend Your Beauty always appears in conjunction 

with Xtreme Lashes. Use in this context, may explain the nature of the 

product, weighing towards descriptiveness.” Id. Though the court noted 

that the context of “Extend Your Beauty” next to “Xtreme Lashes” might 

lend towards descriptiveness, the court found that this was an issue for 

a jury to decide. Id. 

Defendant next cites Streamline Prod. Sys., Inc. v. Streamline Mfg., 

Inc., 851 F.3d 440, 453 (5th Cir. 2017), where the Fifth Circuit upheld a 

jury’s finding that the mark “Streamline Production Systems” was 

suggestive. After citing Xtreme Lashes regarding the use of context for 

multiword marks, the court noted that the “SPSI logo . . . depicts a piece 

of natural gas processing equipment [which] might make this connection 

more explicit.” Id. Despite placing the exact depiction of a piece of 

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equipment in its logo, the court upheld the jury’s ruling that the mark 

was, at a minimum, suggestive.

Defendant’s contentions about the strict application of context are

wrong for three reasons. First, unlike the marks in Xtreme Lashes and 

Streamline Production Systems, the mark at issue is not a multiword 

mark—it is a single word TOTALCARE. See Pl.’s Exhibit 7, ECF No. 33 

at 10–11. This mark while evaluated in the context of its advertising is 

evaluated only as a singular mark: TOTALCARE. Plaintiff’s

advertising—while identifying its different services below the mark—

always maintains a single consistent element: the single-word mark 

itself. See Pl.’s Exhibits 7, 9, 14, 15. Plaintiff also showed instances 

where the TOTALCARE mark is advertised alone with no additional

context. See Pl.’s Exhibit 7, ECF No. 33 at 10–11. Further, Plaintiffs in 

every exhibit shown before the court affixed a trademark symbol after 

the TOTALCARE mark and before the descriptive advertising of their 

different services. See Pl.’s Exhibits 7, 9, 14, 15, 16, 97, 98. 

Second, though Defendant is correct that context is important, its 

narrowly drawn argument—if taken to its logical conclusion—would 

make advertising any multi-service brand nearly impossible. Based on 

Defendant’s reasoning, any suggestive mark that put “best omelets in 

town” or “tire shop” in its advertising materials would make the mark 

descriptive. This would lead to a de facto destruction of suggestive 

marks unless the brand refused to advertise their products. Given that 

the dual purpose of trademark protections is “(1) to protect consumers 

against confusion and monopoly, and (2) to protect the investment of 

producers in their trade names,” this narrow reading of context would 

destroy the very ability for companies to invest in their trade names 

through advertising efforts. Union Nat’l Bank, 909 F.2d at 843.

Third, unlike in Xtreme Lashes and Streamline Production, this 

Court is ruling on a preliminary injunction and not entering or 

contesting a final judgment. As a result, the Court need only find a 

likelihood of success on the merits. It is well established that “[a]

plaintiff is not required to prove its entitlement to summary judgment 

to establish a substantial likelihood of success on the merits for 

preliminary injunction purposes.” Byrum v. Landreth, 566 F.3d 442, 446 

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(5th Cir. 2009) (quotations omitted). Defendant seeks to impose a higher 

standard of review than is not required at this stage of the case. 

In sum, without Defendant’s narrow interpretation of context, 

TOTALCARE does not describe any product, business, industry, or 

characteristic. Though it may evoke a nebulous quality of service, it is 

not a word that has a dictionary definition like “speedy,” “reliable,” 

“green,” or “menthol.” Union Nat’l Bank, 909 F.2d at 845. This mark is 

different from marks like “Urgent Care,” “Vision Center,” or “Bank of 

Texas” in that what it describes is left up to the imagination and not 

plain on its face. See id. 

Thus, the mark is not descriptive.1 

c. Suggestive 

A suggestive mark—like “KitchenAid”—evokes an attribute of a good 

or service without describing the attribute, such that the consumer must 

exercise imagination or thought to determine the nature of the good or 

service. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir. 1980). 

To distinguish the gray area between descriptive marks and suggestive 

marks, courts apply two tests. First is the “the imagination test,” where 

courts ask whether a consumer would readily perceive the nature of the 

mark owner’s product or service or whether the consumer would need to 

make an imaginative leap to do so. Streamline Prod. Sys., Inc., 851 F.3d 

at 452. Second, the “competitor test” considers whether a competitor 

would need to use the purported mark to describe its product or service. 

Zatarains, 698 F.2d at 792 (asking whether competitors would need the 

terms used in the trademark to adequately describe their products) 

Under the imagination test, TOTALCARE does not immediately 

evoke urgent or family medical care centers. It may involve healthcare, 

dental care, pet care, furniture care, car care, lawncare, or a host of other 

1 Though the Court does not find an application of secondary meaning necessary, 

Plaintiff presented evidence of substantial marketing efforts in the greater Dallas-Fort

Worth area. See ECF No. 33 at 65–91. If this order is appealed and the mark is found 

to be descriptive by a higher court, Plaintiff has presented enough evidence to make a 

good-faith showing of secondary meaning. Id. 

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services.2 The imagination test thus lends towards TOTALCARE being 

a suggestive mark. Without Plaintiff’s use of descriptive wording after 

its mark, it would be difficult to figure out the services it offers. 

Under the competitor test, the word “care” is certainly needed to 

accurately describe a service in the urgent and family care industry. But

the combined mark of TOTALCARE is not. Even without using the 

combined mark, a competitor could operate an urgent care in perpetuity

without having to use the word “total” in its marketing efforts. 

Thus, TOTALCARE is a suggestive mark and entitled to protection.

2. Whether the party seeking protection is the senior user 

Because ownership of a mark is established by use, “[t]he first one to 

use a mark is . . . the ‘senior’ user and is entitled to enjoin other ‘junior’ 

users from using the mark . . . subject to limits imposed by the senior 

user’s market and natural area of expansion.” Union Nat’l Bank, 909 

F.2d at 842–43. A plaintiff’s use of the mark must be continuous to 

qualify as a senior user. Paulsson, 529 F.3d at 309. The industry and 

natural area of expansion are at issue and other users in different 

industries or remote locations are irrelevant to a court’s analysis. Id. 

While both parties stipulate that there are other active users of the 

mark TOTALCARE, the Court’s only consideration is whether there are 

other senior users in both a similar industry and the same geographic 

territory as Plaintiff. ECF Nos. 23 at 14–16; 29 at 3–4. Defendant does 

not dispute that Plaintiff is the senior user of TOTALCARE in most 

counties at issue, but at the hearing, Defendant disputed that it is not 

the senior user in Dallas County due to another business entity in the 

County called Totalcare Health Systems PA. ECF No. 33 at 123–25. 

While this would ordinarily be relevant information, the Court takes 

judicial notice that Totalcare Health Systems PA’s franchise tax status 

2 Both Plaintiff and Defendant note that many other businesses in varying

industries use the same mark. See ECF Nos. 7, 23. 

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was involuntarily ended and there is no longer an entity actively using 

the name in Dallas County.3

a. Tea-Rose Rectanus 

In its briefing, Defendant contends that the Tea Rose-Rectanus rule

bars Plaintiff from enjoining their use of TOTALCARE because it is a 

remote junior user of the mark. The Court disagrees. 

Unregistered marks are limited to protection in the territory where

the mark is known and recognized by potential customers. Hanover Star 

Milling Co. v. Metcalf, 240 U.S. 403, 415–16, (1916). As a result, the TeaRose Rectanus rule states that a national senior user of an unregistered 

mark cannot stop the use of a remote good-faith junior user. United Drug 

Co. v. Theodore Rectanus Co., 248 U.S. 90, 100(1918) (“It would be a 

perversion of the rule of priority to give it such an application in our 

broadly extended country that an innocent party . . . might afterwards 

be prevented from using it . . . at the instance of one who theretofore had 

employed the same mark, but only in other and remote jurisdictions.”); 

see also C.P. Interests, Inc. v. Cal. Pools, Inc., 238 F.3d 690, 692 (5th Cir. 

2001) (rule applied to a senior user in California who entered territory 

of remote junior user in Houston, Texas). At bottom, the seeks to protect

the territorial rights of good-faith users. C.P. Interests, 238 F.3d at 692. 

Each party is entitled to its own exclusive areas of the unregistered 

trademark’s use and, as a result, neither may invade the market area of 

the other. Id. 

In asserting the Tea-Rose Rectanus rule, Defendant has its role in 

this conflict reversed. It is a junior remote user from Central Texas who 

entered the local North Texas territory of a senior user. If Plaintiff 

sought to enjoin Defendant’s use of TOTALCARE in Austin—a remote 

territory to Plaintiff’s senior use—this rule would apply. Yet Plaintiff is 

seeking to oust Defendant’s use of the mark in Plaintiff’s local territory. 

The reasoning behind the rule—protecting the territorial rights of 

users—cuts against Defendant’s assertion. 

3 Texas Comptroller of Public Accounts, Totalcare Healthcare, PA, (November 23, 

2022), https://mycpa.cpa.state.tx.us/coa/coaSearchBtn. 

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Thus, the Tea-Rose Rectanus rule does not apply, and Plaintiff is the 

senior user of the mark in the Dallas-Fort Worth area.

3. Whether there is a likelihood of confusion between the 

marks 

In determining the likelihood of confusion element, courts analyze

the aptly named “digits of confusion.” Xtreme Lashes, 576 F.3d at 227.

Courts consider eight non-dispositive factors: (1) the type of trademark; 

(2) mark similarity; (3) product similarity; (4) outlet and purchaser 

identity; (5) advertising media identity; (6) defendant’s intent; (7) actual

confusion; and (8) care exercised by potential purchasers. Id. And like 

most eight-part multifactor tests, the application of the eight digits 

ultimately results in a common-sense judgment call. See Gruma Corp. 

v. Mexican Rests., Inc., 497 F. App’x 392, 395 (5th Cir. 2012) (“No digit 

is dispositive, and the digits may weigh differently from case to case, 

depending on the particular facts and circumstances involved.”). 

Obviously, actual confusion is “the best evidence of a likelihood of 

confusion.” Xtreme Lashes, 576 F.3d at 229. But where a Defendant uses 

an identical mark “a thorough analysis of the digits of confusion is 

unnecessary, and a presumption of confusion exists.” See Choice Hotels 

Int’l, Inc. v. Patel, 940 F. Supp. 2d 532, 540 (S.D. Tex. 2013)

(citing Paulsson, 529 F.3d at 310–11). 

Though Plaintiff and Defendant both use the identical word mark 

TOTALCARE, the Court proceeds to analyze the digits of confusion. 

a. Type of trademark 

The first digit of confusion is chiefly concerned with the strength of 

the mark. Future Proof Brands, L.L.C. v. Molson Coors Beverage Co., 

982 F.3d 280, 290 (5th Cir. 2020). To determine the strength of a mark, 

courts examine: “(1) where the mark falls on a spectrum of categories 

and (2) the standing of the mark in the marketplace.” Id. (cleaned up). 

In determining the standing of the mark in the marketplace, courts 

consider the extent of third-party usage of similar marks on related 

products. Id. at 289. “Extensive third-party use of a term throughout the 

market suggests that consumers will not associate the junior mark’s use 

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with the senior mark user.” Springboards to Edu., Inc. v. Hous. Indep. 

School Dist., 912 F.3d 805, 815 (5th Cir. 2019).

Defendant contends that the pervasive use of TOTALCARE and 

TOTAL CARE in the healthcare industry makes the mark weak and 

without strong standing in the marketplace. ECF No. 23 at 28. The 

Court disagrees for two reasons. First, as established above, the mark is 

suggestive and is entitled to protection. Second, Defendant mistakenly 

applies a national review of the mark’s use irrespective of geographic 

boundaries while the Court is only concerned with the mark’s strength 

in locally disputed markets, i.e., the Dallas-Fort Worth area. See Union 

Nat’l Bank, 909 F.2d at 842–43 (noting that the senior user is “subject 

to limits imposed by the senior user’s market and natural area of 

expansion”).

Thus, the first digit weights towards a likelihood of confusion.

b. Similarity of the marks 

“The similarity of the marks in question is determined by comparing 

the marks’ appearance, sound, and meaning.” Elvis Presley Enters., Inc. 

v. Capece, 141 F.3d 188, 201 (5th Cir. 1998). The appearance of 

Defendant’s mark—though slightly different—is substantially like 

Plaintiff’s. See ECF Nos. 7 at 3; 23 at 28. Though Defendant uses green 

and white lettering, the format is substantially the same with 

TOTALCARE showcased above the descriptor “Primary Care.” Id.

Below is a photo of the comparison. 

The sound of the mark is the same as they both say TOTALCARE.

Id. Importantly, for the modern era—in which business is heavily driven 

by internet search results—this identical mark is likely to muddy search 

results for first time or even repeat customers. 

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Additionally, the meaning of the marks is the same. Totalcare—

though it has no dictionary meaning—is identical in both uses minus

small changes in capitalization. Though Defendant disputes that 

primary cares are different than family medicine, they are essentially 

the same thing. ECF No. 33 at 106–109. Regardless of the slight 

differentiation in color and design the mark at issue is TOTALCARE 

alone. 

The second digit thus weighs towards a likelihood of confusion. 

c. Product similarity

“The greater the similarity between products and services, the 

greater the likelihood of confusion.” Exxon Corp. v. Texas Motor Exch. of 

Hous., Inc., 628 F.2d 500, 505 (5th Cir.1980). Direct competition is not 

required to find a likelihood of confusion. Pro. Golfers Ass’n of Am. v. 

Bankers Life & Cas. Co., 514 F.2d 665, 669–70 (5th Cir. 1975); see also 

Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 666 (5th 

Cir. 2000) (“The parties do not have to be direct competitors to establish 

a likelihood of confusion.”).

Family medicine and primary care are different words for essentially

the same service. ECF No. 29 at 9. Family medicine merely incorporates 

pediatrics but offers the same services for adults. Id. That Plaintiffs also 

operates an emergency room does not detract from this factor as direct 

competition is not required to find a likelihood of confusion. Pro. Golfers, 

514 F.2d at 669–70. Both parties are on the front lines of the medical 

care industry.

The third digit thus weighs towards a likelihood of confusion. 

d. Outlet and purchaser identity 

If consumer bases between the parties overlap, there is a greater 

likelihood of confusion. Exxon Corp., 628 F.2d at 505. Both parties have 

the same market and demographic of consumers—people seeking quick 

and convenient quality healthcare services. See ECF No. 33 at 52. That

Defendant—who additionally operates a medical care company called

“TotalMen’s”—added a new TotalCare brand to target a wider audience

further proves this point. ECF No. 33 at 52.

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Thus, the fourth digit weights towards a likelihood of confusion. 

e. Advertising media identity 

Where there is a similarity in the streams of advertising and in the 

types of advertising campaigns, there is a greater the likelihood of 

confusion. Exxon Corp., 628 F.2d at 506. Defendant admits to using 

some of the same marketing channels including in person events, social 

media, and search engine channels. Compare ECF No. 1 at 53 with ECF 

No. 13 at 10. Though Plaintiff engages in many more extensive channels 

of advertising—like sponsoring events at various state and private 

universities—the advertising channels substantially overlap and 

encompass the same geographic area. 

Thus, the fifth digit weighs towards finding a likelihood of confusion. 

f. Defendant’s intent

“Although not necessary to a finding of likelihood of confusion, a 

defendant's intent to confuse may alone be sufficient to justify an 

inference that there is a likelihood of confusion.” Bd. of Supervisors v. 

Smack Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008). Though the Court 

notes the proximity of some locations, no evidence offered by Plaintiff

reflects malicious intent or freeloading by Defendant. See ECF No. 33 at 

58–59. 

The sixth digit weighs against Plaintiff. 

g. Actual confusion 

“Evidence that consumers have been actually confused in identifying 

the defendant's use of a mark as that of the plaintiff may be the best 

evidence of a likelihood of confusion.” Streamline Prod. Sys., Inc., 851 

F.3d at 457. Even minor and isolated incidents of confusion weigh 

towards finding a likelihood of confusion. See La. World Exposition v. 

Logue, 746 F.2d 1033, 1041 (5th Cir. 1984) (finding that a single incident 

was enough to establish a likelihood of confusion). 

Plaintiff’s evidence of actual confusion is sparse, but it presents

enough to make this factor weigh in its favor. See ECF No. 33 at 182–

246. Leblanc testified that customers have approached her and 

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congratulated her on “your newest facility in Hulen,” which was 

Defendant’s facility. Id. at 219. Plaintiff also presented evidence of a 

recorded call from a customer who was confused over a referral and 

billing between a “TotalMen’s” and a “Totalcare Behavioral Care”

location. Plaintiff’s Exhibit 101, ECF No. 33 at 226–227. While confusion 

was not directly centered on the infringing mark, the individual on the 

call was confused over the two companies and their related websites and 

names. Id. Most importantly, the individual on the call was frustrated 

and expressed disappointment with multiple items. Id. Because the 

accrual of goodwill is one of the chief aims of trademark law, a mistaken 

bad review from a customer in an internet search driven era could be 

costly for a company. See Union Nat’l Bank, 909 F.2d at 843. Though

this is not direct evidence of confusion, the fact that an individual was

confused between the different networks of related care adds weight to 

this factor.

Thus, these minor and isolated incidences of confusion are enough to 

make the seventh digit favor Plaintiff. 

h. Care exercised by potential purchasers

Care exercised by consumers in the world of services is different than 

that of products. This is especially true for healthcare decisions which

might come down to a Google search or a snap decision to call your 

primary care doctor. The confusion might lead repeat patients who 

wished to return to accidentally go to the wrong clinic. Even worse, 

confusion might lead to a delay in time sensitive medical decisions. 

Plaintiff’s founder Dr. Wes Saad testified to this issue directly:

Well, as you know, medicine has an aspect to it that’s time 

sensitive. So, let’s say you called Totalcare to leave a

message for your doctor. And you say, my blood pressure

medicine is not working, could you recommend another 

medicine, and you wait. And in the meantime, oh, this was 

the wrong clinic. It could be dangerous in coming to our ER 

thinking that you're going to an ER to take care of a chest 

pain, only to end up in a place where they—I don’t know 

what they have, but I doubt they can take care of a chest 

pain or a heart attack or a stroke. So, I think it could be 

dangerous.

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ECF No. 33 at 116. Medical care might be the most sensitive and 

important field in which consumers make choices. It is thus necessary 

for their choices to be clear for both times of emergency and times of 

ordinary care. 

Thus, the eighth digit weighs toward Plaintiff. 

i. A likelihood of confusion exists

Seven of the eight digits of confusion favor a likelihood of confusion. 

The Court finds that Plaintiff has proven by clear and convincing 

evidence that it is likely to succeed in showing that consumers are likely 

to be confused or deceived by Defendant’s use of the TOTALCARE mark.

The entire analysis is largely unimportant however as Defendant’s use 

of the word mark—TOTALCARE—is identical to Plaintiff’s. Any 

commonsense individual would find this alone to be confusing when 

positioned in the same geographic area and in the same or a 

substantially similar industry. At its very core, this is the type of 

commonsense analysis that the digits of confusion seek to synthesize.

4. Whether the likelihood of confusion will cause irreparable 

injury

Courts assume irreparable injury where a likelihood of confusion 

exists. Here likelihood of confusion in the greater Dallas-Fort Worth 

area is likely, thus the fourth element is met. 

B. Irreparable Injury 

The Lanham Act states that irreparable injury is presumed in cases 

of trademark infringement whenever there is a likelihood of confusion. 

Pub. L. No. 116-260, § 221(a), 134 Stat. 1182, 2208 (December 27, 2020) 

(amending 15 U.S.C. § 1116(a)); see also Abraham v. Alpha Chi Omega, 

708 F.3d 614, 627 (5th Cir. 2013) (“All that must be proven to establish 

liability and the need for an injunction against infringement is the 

likelihood of confusion—injury is presumed.”). Even without the 

presumption of the Lanham Act, “[a] plaintiff’s lack of control over the 

quality of the defendant’s goods or services constitutes an immediate 

and irreparable injury, regardless of the actual quality of those goods or 

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services.” Quantum Fitness Corp. v. Quantum Lifestyle Ctrs., LLC, 83 F. 

Supp. 2d 810, 831 (S.D. Tex. 1999).

As exhaustively shown above, a likelihood of confusion exists in this 

case. Plaintiff’s lack control over the actions and qualities of Defendant’s 

services and thus are harmed in their ability to control its goodwill and 

reputation in the community. 

Thus, irreparable injury is met.

C. Balance of the Equities

Because a preliminary injunction is an extraordinary remedy courts 

“must balance the competing claims of injury and must consider the 

effect on each party of the granting or withholding of the requested 

relief.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008). This 

requires more than a mere cursory analysis. Id. 

Here, the balance of the equities tips in favor of Plaintiff. Plaintiff is 

not seeking to stop Defendant from providing competing services—it is

merely seeking to stop Defendant from using Plaintiff’s mark or 

confusingly similar variations in the Dallas-Fort Worth area. ECF No. 

7 at 10. That said, Defendant asserts that there are major expenses 

associated with rebranding and changing the name and signage of its 

locations. ECF No. 33 at 59. Defendant further contends that an 

injunction would confuse its customers and harm its business in the end.

Id. While these are important considerations, Plaintiff’s burden of losing

control of its mark, the potential loss of customers, and the potential 

harm to its reputation and goodwill are far greater than the cost of 

changing the branding of a few locations to Defendant. This is the reason 

the United States of America—through its enactment in the 

legislature—values and enforces trademark law.

The balance of the equities thus favors granting the injunction. 

D. Public Interest

“The public interest is served whenever state and federal laws are 

enforced.” Blue Bell Creameries, L.P. v. Denali Co., LLC, No. CIV.A. H08-0981, 2008 WL 2965655, at *7 (S.D. Tex. July 31, 2008) (unpublished)

(citing DS Waters of Am., Inc. v. Princess Abita Water, L.L.C., 539 F. 

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Supp. 2d 853, 864 (E.D. La. 2008); Pet Silk, Inc v. Jackson, 481 F. Supp. 

2d 824, 834 (S.D. Tex. 2007)). Beyond enforcing the law, the public 

interest is directly considered in the purposes behind this country’s 

trademark laws, which are “(1) to protect consumers against confusion 

and monopoly, and (2) to protect the investment of [businesses] in their 

trade names.” Union Nat’l Bank, 909 F.2d at 843; see also Lakedreams 

v. Taylor, 932 F.2d 1103, 1110 (5th Cir. 1991).

Plaintiff’s situation falls into these two interest categories. First, the

public has an interest in preventing confusion to consumers—especially 

in an industry as sensitive and important as healthcare. Second, the 

public has a strong interest in promoting fair competition in the 

marketplace, where individuals are certain that their investments into 

the goodwill of their business are not stolen—whether maliciously or 

accidentally—by others.

Thus, the public interest favors an injunction. 

CONCLUSION

The Court—having found all elements present to justify a 

preliminary—hereby GRANTS Plaintiff’s Motion. ECF No. 7. 

Defendant—effective immediately and until a final judgment is

reached—is enjoined from the following: 

1. using “TOTALCARE” or any other confusingly similar variation 

of it, alone or combined with other words, terms, names, symbols, 

or devices, as a trademark, service mark, corporate name, trade 

name component, domain name, or domain name component, or 

in advertising or signage, or otherwise, to market, advertise, or 

identify Defendant Total MD, LLC or any of its healthcare 

services or facilities anywhere in the following North Texas 

counties: Collin, Dallas, Denton, Ellis, Hunt, Kaufman, Rockwall, 

Johnson, Parker, Tarrant, and Wise; and

2. from opening any new or additional facilities (or from re-branding 

or re-naming any existing facilities) using “TOTALCARE” or any 

confusingly similar variation of it, alone or combined with other 

words, terms, names, symbols, or devices, as a trademark, service 

mark, corporate name, trade name component, domain name, or 

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domain name component, or in advertising or signage, in meta 

tag data (including, for example, in connection with search engine 

optimization techniques), or otherwise.

It is also ORDERED that Plaintiff must file a proposed preliminary 

injunction order, conditioned on posting a $50,000.00 surety bond, no 

later than December 1, 2022. Plaintiff must file an application for a 

permanent injunction no later than January 9, 2023. A hearing on a 

permanent injunction will be set by the Court at the joint request of the 

parties upon an agreed date. 

It is further ORDERED that the parties must mediate with Mr. Dee

J. Kelly, Jr. on or before January 30, 2023. Within seven days after 

the mediation, the parties will jointly prepare and file a written report, 

which must be signed by counsel for each party, detailing the date on 

which the mediation was held, the persons present, and a statement 

informing the Court of the effect of their mediation and whether this 

case has been settled by agreement of the parties. The parties shall 

contact Mr. Dee J. Kelly, Jr. and arrange the details of the mediation on 

or before December 9, 2022. 

SO ORDERED on this 29th day of November 2022.

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