The underlying dispute pits Dr. David Penner, a Thurston County psychiatrist who owns the Olympia Center for TMS & Psychiatry and holds a registered trademark for "Olympia TMS" (on the supplemental register), against Diana Wilcox, a psychiatric mental health nurse practitioner who co-owns a competing clinic in the same county called Clear TMS+. Wilcox entered the keywords "Olympia TMS clinic" to create a Google advertisement for Clear, and as a result, sponsored Google advertisements for Clear included Dr. Penner's name. Penner alleges the advertisements infringe on his trademark and mislead patients seeking treatment from him by directing them instead to Clear. Penner also names TMSTherapyNearMe.com, a paid online directory of TMS providers that Clear engaged for marketing, alleging its practices are deceptive, misleading, and violate consumers' privacy by sharing medical information with subscribed providers.
On cross-motions for summary judgment, Judge Benjamin H. Settle denied Wilcox's motion in full and granted Penner's cross-motion only on the narrow question of descriptiveness. The court held that the Olympia TMS mark is descriptive — a conclusion Wilcox effectively conceded in her briefing — but declined to resolve at this stage whether the mark has acquired the secondary meaning needed to make it protectable, finding that question turns on fact-intensive factors requiring a fuller record.
The abandonment question — Wilcox's central defense — also survives for trial. Wilcox argued Penner has unequivocally abandoned the mark since 2021, pointing to social media posts showing a rebrand and discovery responses in which Penner initially stated he ceased using the mark that year. The court held that Penner sufficiently rebutted that showing: a screenshot of his website from August 2023 displays "Olympia TMS & Psychiatry," and the court held that whether Penner continued to use his original mark through tacking raises a genuine dispute not resolvable on summary judgment. The court also rejected Wilcox's argument that Penner was barred from correcting his initial discovery response, noting that Wilcox neither argued nor established the elements of equitable estoppel.
Likelihood of confusion likewise goes to the jury. Wilcox argued that the mark is weak, that Clear was clearly labeled in its advertising, and that consumers spending thousands of dollars on psychiatric services are too sophisticated to be confused. The court applied the eight Sleekcraft factors and, consistent with Ninth Circuit guidance cautioning against summary judgment on confusion issues, held that the parties' extensive and conflicting briefing itself demonstrated the existence of genuine factual disputes.
On damages, the court held that Penner has sufficient support for his claim that Wilcox's use of the mark injured him and declined to rule as a matter of law that he is not entitled to damages. The court also left willfulness for the jury: while it held that no reasonable jury could find Wilcox took active steps to avoid acquiring knowledge of the infringement — the standard for willful blindness — it held that a jury could find she knowingly and intentionally infringed, given her deposition testimony that she added "Olympia Center for TMS" as a matching keyword because Google kept prompting her to do so. One issue dropped out entirely — Wilcox withdrew her affirmative defense that Google was an indispensable party, and Penner's motion on that defense was denied as moot.