By Brian Craig, J.D.
In a trademark infringement case between two civic organizations that promote political candidates in Louisiana, the U.S. Court of Appeals for the Fifth Circuit has ruled that the district court properly found a likelihood of confusion between the two identical bird logos used by "Alliance for Good Government" and "Coalition for Better Government." While the Fifth Circuit affirmed the district court on trademark infringement, the appellate court modified the injunction to restrain use of the logo only, and not restrain use of the name "Coalition for Better Government" (Alliance for Good Government v. Coalition for Better Government, August 22, 2018, Duncan, K.).
Alliance for Good Government ("Alliance") is a non-profit civic organization formed in 1967 which supports political candidates in New Orleans and throughout Louisiana. Alliance’s logo features the organization’s name in blue type on a rectangular white background arranged around a stylized bird. Alliance considers its bird to be an eagle. In 2013, Alliance registered its service marks with the word mark "Alliance for Good Government," and the composite mark consisting of the entire logo. Coalition for Better Government ("Coalition") is a non-profit civic organization formed in New Orleans in 1982 to endorse political candidates. Coalition’s logo features its name in white type on a rectangular blue background arranged around a stylized bird. Coalition considers its bird to be a hawk, not an eagle. In April 2017, Alliance sued Coalition claiming federal trademark infringement and other claims. The district court granted partial summary judgment on federal trademark infringement and issued an order permanently enjoining Coalition from using both its name and logo. Coalition appealed to the Fifth Circuit.
Political speech. As a threshold question, the court considered Coalition’s argument that the Lanham Act cannot apply to its marks because Coalition engages only in "political speech" and is a non-profit entity not "engaged in commerce or the sale of goods." The Fifth Circuit held that Coalition failed to properly raise these arguments in the district court. Therefore, the Fifth Circuit dismissed the political speech contention.
Trademark infringement. The court then turned to whether the district court properly granted summary judgment on trademark infringement. Coalition first failed to rebut the presumption that Alliance’s composite mark was inherently distinctive and therefore legally protectable. The Fifth Circuit considers the following eight nonexhaustive "digits" to assess likelihood of confusion: (1) strength of the mark; (2) mark similarity; (3) product or service similarity; (4) outlet and purchaser identity; (5) advertising media identity; (6) defendant’s intent; (7) actual confusion; and (8) care exercised by potential purchasers. Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).
In analyzing the similarity of the marks, the Fifth Circuit agreed with the district court that the two composite marks look exactly alike, strongly supporting likelihood of confusion. The Fifth Circuit held "[t]o cut to the chase: Alliance and Coalition have the same logo." The logos have the same rectangular shape, same lines in the same, same arrangement of words, same colors, and the same birds. The appellate court rejected Coalition’s attempt to distinguish the two logos by the bird’s species rather than by the appearance, design, color, or font. The factors relating to the strength of the mark, outlet and purchaser identity, advertising media identity, and intent to infringe all favored likely confusion. The factors relating to actual confusion and care exercised by potential purchasers were neutral. Considering that the logos are identical and the other factors, the district court properly granted summary judgment on trademark infringement.
Scope of injunction. While the Fifth Circuit agreed with the district court’s ruling on trademark infringement, the court held that the scope of the injunction was overly broad. The court modified the district court’s injunction to the logo only. The Fifth Circuit concluded that Coalition’s use of its trade name does not create a likelihood of confusion with Alliance’s differently-worded trade name. Coalition may continue to use its name—provided it disassociates the name from its current logo or develops a different logo that does not create confusion with Alliance’s composite mark.
This case is No. 17-30859.
Attorneys: Richard T. Sahuc (Intellectual Property Consulting, LLC) for Alliance for Good Government. Darleen M. Jacobs (Jacobs, Sarrat, Lovelace & Harris) for Coalition for Better Government.
Companies: Alliance for Good Government; Coalition for Better Government
MainStory: TopStory Trademark LouisianaNews MississippiNews TexasNews
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