IP Law Daily Use of ‘Better Angels’ mark infringes Ken Burns’ film company’s senior mark
Monday, November 18, 2019

Use of ‘Better Angels’ mark infringes Ken Burns’ film company’s senior mark

By Pamela C. Maloney, J.D.

Use of the word mark "Better Angels" by the Institute for American Values infringed on the "The Better Angels Society" mark registered by a documentary film company associated with Ken Burns.

Use of the "Better Angels" word mark by the Institute for American Values infringed the senior word mark registered by The Better Angels Society, as a matter of law, the federal district court in New York City ruled. According to the court, four of the eight Polaroid factors, favored Better Angels: strength of the mark, similarity of the marks, commercial proximity, and bridging the gap, while the two other factors—bad faith and actual consumer confusion—did not affect the district court’s determination as to whether there was a likelihood of confusion between of the two marks. Only consumer sophistication and quality of services weighed in favor of IAV and were not sufficient to overcome a finding of confusion (The Better Angels Society, Inc. v. Institute for American Values, Inc., November 15, 2019, Cote, D.).

In 2011, American Documentaries, Inc., which is affiliated with the documentary filmmaker, Ken Burns, registered the word mark "The Better Angels Society" ("Better Angels" mark) with the PTO for use with goods and services associated with the Society, including charitable fundraising services in connection with media- and entertainment-related projects. Better Angels funds historical documentary films by Burns and other filmmakers and works to ensure that these films were broadcasted, promoted, and preserved for widespread audiences. It also provided funding for a digital platform called UNUM, which went live in 2017. The PTO issued the mark in 2012.

Institute for American Values (IAV), which was founded in 1987, has, as its stated mission, the studying and strengthening of civil society. IAV hosted public seminars and workshops on civil society topics, partnered with leaders and groups to promote depolarizing public conversation, and produced a range of civil society-themed products and services. In late 2016, IAV began an initiative labelled "Better Angels," which remained IAV’s only initiative and in September 2018, IAV filed two trademark applications for the word mark "Better Angels" (the IAV Mark). In January 2019, Better Angels filed a new trademark application for "The Better Angels Society" and in February, it filed an objection to IAV’s trademark application. Prior to filing both its new trademark application and its opposition to the registration of the IAV mark, The Better Angels Society ("Better Angels") filed a lawsuit against IAV alleging claims of trademark infringement, trademark dilution, false designation of origin, unfair competition, and deceptive trade practices under the Virginia Consumer Protection Act and seeking declaratory and injunctive relief, treble damages, costs, and attorneys’ fees. Before the district court was Better Angels motion for summary judgment, which was granted based on a balancing of the Polaroid likelihood of confusion factors.

Trademark protection. Better Angels had registered the senior Better Angels mark with the PTO and, therefore, it was entitled to a presumption of validity, which IAV did not contest.

Strength of the mark. Noting that a "conclusive presumption of distinctiveness" was afforded to registered marks that had been in continuous use for five years subsequent to their registration and that were still in use (known as "incontestable marks,")the district court held that the first of the eight Polaroid factors used to determine likelihood of confusion—strength of the mark—weighed in favor of Better Angels. The Better Angels mark (1) was incontestable with respect to the goods and services noted in the registration certificate; (2) had strength with respect to civil-discourse-oriented non-profit, charitable, and educational services that Better Angels provided and funded; and (3) was suggestive of the services provided and funded by Better Angels. The words also communicated that the organization had a philanthropic or civic mission which entitled Better Angels to protection in this area. Finally, Better Angels demonstrated that its mark possessed secondary meaning in the relevant market.

Similarity of the mark. With regard to the similarity of the mark factor, there was no doubt that the two marks were similar and IAV did not contest the similarity of its mark to the Better Angels mark. Thus, this factor also weighed in favor of finding a likelihood of confusion.

Proximity. The evidence also established that the areas in which the two organizations operated were similar enough to support a finding that the proximity factor weighed in favor of a likelihood of confusion. Both parties were non-profit organizations dedicated to fostering a civil society. They both offered educational services, workshops, and film screenings that promoted civic discourse and their programs had been offered at similar times and in similar places. In addition, Better Angels’ UNUM digital platform promoted similar ideals to that of IAV. Finally, both organizations used their websites, which had similar domain names, to promote their outreach and programming services, and as platforms upon which to accept donations.

Bridging the gap. Under the bridging the gap factor, the senior user of a mark was the "entitled user" and could not be confined within the scope of its commerce by the risk of confusion that could result from a reasonably plausible expansion of its business. Better Angels’ development of the digital platform UNUM made it clear that its business could expand into an area of commerce similar to that in which IAV operated. Thus, the bridging the gap factor weighed heavily in favor of finding a likelihood of confusion, the district court concluded, pointing out that IAV had made no argument to the contrary.

Actual consumer confusion. With respect to actual consumer confusion, IAV challenged the evidence presented by Better Angels as hearsay and otherwise unreliable. Rather than resolve the evidentiary dispute, the district court afforded no weight to the few instances of actual confusion cited by Better Angels, especially given the strength of the other factors demonstrating a likelihood of confusion.

Bad faith. Although Better Angels argued that bad faith could be inferred because IAV failed to discontinue its use of the mark despite repeated warnings from Better Angels, the court found that Better Angels failed to proffer evidence that IAV adopted its mark in bad faith or that IAV had adopted the mark to exploit Better Angels’ good will or to sow confusion between the two organizations. Explaining that bad faith was most relevant to the determination of an appropriate remedy for a junior user’s infringement, the district court stated that it was not an essential element of an infringement claim and, therefore, had no weight in its determination of a likelihood of confusion.

Quality of services. Similarly, there was no evidence that the quality of IAV’s services risked diluting or tarnishing those offered by Better Angels or negatively affected Better Angels’ reputation.

Consumer sophistication. Evidence presented by Better Angels established that donations exceeding $1,000 comprised the vast majority of is fundraising in the three years preceding the filing of the infringement action. Therefore, the sophistication of consumers in the relevant market weighed in IAV’s favor because individuals who donated over $1,000 to a non-profit corporation likely made a deliberate, careful decision to do so and, thus, were less likely to be confused by the marks, the district court explained.

This case is No. 1:19-cv-03285-DLC.

Attorneys: Derek Andrew Williams (Jonathan D. Davis, PC) for The Better Angels Society, Inc. Christopher Joseph Siebens (Orrick Herrington & Sutcliffe LLP) for Institute for American Values, Inc.

Companies: The Better Angels Society, Inc.; Institute for American Values, Inc.

MainStory: TopStory Trademark NewYorkNews

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