Alliance for Good Government v. Coalition for Bett
Opinion
This federal trademark infringement action involves a dispute between two civic organizations over their logos:
*502 The older organization, Alliance for Good Government, developed its logo in the late 1960s and has used it for fifty years in advertisements and sample ballots to promote political candidates in New Orleans and throughout Louisiana. The younger organization, Coalition for Better Government, developed its logo more recently (in the early 1980s or 1990s) and has also used it in sample ballots to promote political candidates in New Orleans. While the groups have locked talons before, the present appeal arises out of Alliance's 2017 lawsuit seeking to enjoin Coalition's use of its logo for federal trademark infringement under the Lanham Act. The district court granted Alliance summary judgment, finding that Coalition's logo infringed Alliance's marks as a matter of law, and enjoined Coalition from using both its name and logo in political advertisements. Coalition appeals that ruling.
On appeal, Coalition raises broad threshold questions concerning the applicability of the Lanham Act to what it characterizes as its political, noncommercial speech. We decline to address those questions, because Coalition failed to properly raise them below and the district court never reached them. Coalition also attacks the summary judgment, claiming that fact issues remain as to whether Alliance's marks are valid and whether Coalition's logo would likely create confusion with Alliance's. On the latter point, Coalition's most curious argument-urged below and renewed on appeal-is that the logos are different because its logo features a hawk while Alliance's features an eagle . We conclude the district court did not err in deciding the birds are identical.
Reviewing the summary judgment ruling de novo , we conclude that the evidence establishes without dispute that Alliance's logo is a valid composite mark and that the use of Coalition's logo infringes Alliance's composite mark as a matter of law. We modify the district court's injunction in one respect, however. By its terms, the injunction restrains Coalition from using its name as well as its logo. We find that aspect of the injunction overbroad and therefore modify it to restrain Coalition's use of its logo only.
Accordingly, we AFFIRM the district court's summary judgment ruling, but MODIFY the injunction to restrain only the use of Coalition's logo.
I.
A.
Alliance for Good Government ("Alliance") is a non-profit civic organization formed in 1967 to promote "honest and open government." Alliance's founding chapter is in Orleans Parish, but it operates both in New Orleans and throughout Louisiana. The organization hosts political forums, endorses candidates, and participates in campaigns through advertising. It also distributes and publishes sample ballots featuring endorsed candidates.
*503 Alliance ballots dating back to 1969 feature the same logo it continues to use today-a design with 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 1 with the United States Patent and Trademark Office ("PTO"): the word mark "Alliance for Good Government," and the composite mark consisting of the entire logo. 2
Coalition for Better Government ("Coalition") is a non-profit civic organization formed in New Orleans in 1982 to endorse political candidates. Coalition operates mainly in New Orleans and promotes preferred candidates by advertising sample ballots in New Orleans newspapers. Coalition and Alliance sometimes endorse the same, or opposing, candidates: candidates endorsed by each have run in the same election at least twice.
Coalition also has a logo, which it uses in sample ballots dating back to at least 1992 (possibly the early 1980s). Coalition's logo features its name in white type on a rectangular blue background arranged around a stylized bird. Coalition's bird appears identical to Alliance's, but Coalition believes the birds are different types: Coalition considers its bird to be a hawk, not an eagle. 3
Because pictures are worth a thousand words, here are the logos again:
*504 B.
Alliance first sued Coalition for trademark infringement in 2008 in Louisiana state court. After skirmishing over venue, Alliance moved to dismiss its suit when it believed Coalition had stopped activity and ceased use of the Coalition logo. But in 2016 Coalition resumed using its logo to endorse political candidates. Indeed, in the primary elections for Louisiana district judges on March 25, 2017, Alliance and Coalition endorsed opposing candidates. That same month Coalition filed two applications with the PTO to register its name and logo, which Alliance opposed. 4
In April 2017, Alliance sued Coalition in federal court claiming federal trademark infringement under
II.
We review a grant of summary judgment
de novo
, applying the same standard as the district court.
Smith v. Reg'l Transit Auth.
,
*505
TIG Ins. Co. v. Sedgwick James
,
III.
To prevail on a claim of federal trademark infringement under the Lanham Act,
A.
As a threshold matter, Coalition argues 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." Coalition failed to properly raise these arguments in the district court. To preserve either issue for appeal, Coalition had to " 'press and not merely intimate the argument during the proceedings before the district court ... to such a degree that the district court ha[d] an opportunity to rule on it.' "
Keelan v. Majesco Software, Inc.
,
During summary judgment proceedings, Coalition (1) raised the defense of laches, (2) urged the invalidity of Alliance's marks due to fraud and lack of distinctiveness, and (3) argued that fact issues precluded summary judgment on likelihood of confusion. Nowhere in those proceedings did Coalition brief or articulate-much less "press"-the argument that its political or non-profit nature insulates it from Alliance's trademark infringement claims. Because Coalition said nothing about those issues, the district court's ruling understandably did not address them. " 'If a party fails to assert a legal reason why summary judgment should not be granted, that ground is waived and cannot be considered or raised on appeal.' "
Keelan
,
*506
To be sure, Coalition's answer to Alliance's complaint raised-among thirteen affirmative defenses-the defense that "its actions constitute purely non-commercial and political free speech."
7
But Coalition never developed the argument beyond that cursory statement and, by the time of the summary judgment proceedings, the issue had vanished. The argument is thus waived.
See, e.g.,
Keenan
,
B.
We proceed to Alliance's federal trademark infringement claim. The district court granted Alliance summary judgment, finding the evidence undisputed that Alliance's marks are legally protectable and that Coalition's use of its marks creates a likelihood of confusion with Alliance's. Unless otherwise indicated, the following discussion in parts B.1 and B.2 focuses on Alliance and Coalition's logos . We separately address the district court's injunction as to Coalition's name in part C, infra .
1.
On appeal, Coalition disputes the district court's conclusion that Alliance's composite mark is legally protectable. "To be protectable, a mark must be distinctive, either inherently or by achieving secondary meaning in the mind of the public."
Am. Rice
,
First, Coalition claims summary judgment was improper on this point because fact issues exist as to whether Alliance obtained its mark "by a false or fraudulent declaration" under
Second, Coalition argues that Alliance offered no evidence that its mark was distinctive, and therefore legally protectable, and that fact issues persist on that issue. We disagree. Among other evidence, Alliance offered undisputed evidence that it registered both of its marks with the PTO in 2013-its word mark on May 7, 2013, and its composite mark on June 11, 2013. The registration of Alliance's composite mark with the PTO "is prima facie evidence that the mark[ ] [is] inherently distinctive."
Nola Spice
,
2.
Coalition also contests the summary judgment ruling that Coalition's use of its logo created a likelihood of confusion with Alliance's composite mark.
To prove infringement, a plaintiff "must show that the defendant's use of the mark 'creates a likelihood of confusion in the minds of potential customers as to the "source, affiliation, or sponsorship" ' " of the product or service at issue.
Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co.,
(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.
See generally, e.g.,
Am. Rice
,
Strength of Mark.
The district court found that "Alliance has a very strong mark[.]" We agree. In assessing the strength of Alliance's composite mark, we look to two factors. First, we consider where the mark falls on a spectrum of distinctiveness ranging from "generic, descriptive, [or] suggestive" to "arbitrary and fanciful"-with the strength of the mark increasing as " 'one moves away from generic and descriptive marks toward arbitrary marks.' "
Am. Rice,
Both factors support the strength of Alliance's composite mark. On the distinctiveness spectrum, the dominant feature of the logo-the stylized bird-is suggestive.
See, e.g.,
Xtreme Lashes
,
Mark Similiarity. The district court found that the two composite marks "looked exactly alike," strongly supporting likelihood of confusion. We agree.
In assessing mark similarity, we "compar[e] the marks' appearance, sound, and meaning."
Elvis Presley Enters. Inc. v. Capece
,
*511
The inquiry focuses, not on whether two marks are identical in every respect, but on "whether, under the circumstances of the use, the marks are sufficiently similar that prospective purchasers are likely to believe that the two users are somehow associated."
Capece
,
To cut to the chase: Alliance and Coalition
have the same logo.
Same shape (rectangular). Same lines in the same place (two parallel, horizontal lines over and under the bird). Same arrangement of words (one big word above the top line; three smaller words below the bottom line). Same colors (one, blue on a white background; the other, white on a blue background). And, of course, the same birds. Not
similar
birds; the
same
birds-with the same down-pointed beak, gazing over the same wing (the right), sporting the same number of identically-stylized feathers (forty-three). As Alliance's brief succinctly puts it, "Coalition ... uses a virtual copy of Alliance's trademarked logo[.]" It is no answer that Coalition's name is slightly different from Alliance's ("COALITION" instead of "ALLIANCE"; "BETTER" government instead of "good" government), or that the two logos use obverse color schemes. Rather than focusing on "a comparison of individual features," the district court correctly focused on the "total effect" of the logos and on their "dominant features."
Xtreme Lashes
,
We must focus, of course, not merely on whether the marks are identical, but on whether the virtually-identical marks are used in a manner that prospective "purchasers" of the two organizations' services (i.e., voters who rely on Alliance and Coalition endorsements) are "likely to believe that the two users are somehow associated."
Capece
,
Finally, we observe that Coalition attempted to distinguish the two logos-not by appearance, design, color, or font-but by the birds' species :
DISTRICT COURT: They look exactly alike to me, the two birds.
COUNSEL: [...] [N]o, they really aren't, your Honor, if you look at the wing span. The wing span of the eagle is different from the hawk. It's much larger and it fans out, and that's just the way the hawk looks.
COURT: I'll tell you, unless my eyes are deceiving me, ... those two look exactly alike. They even look like the same feathers, same number of feathers, same arrangement, head is facing the same way, the same beak. I don't know if you call them-I don't know technically what kind of bird it is, but whatever they are, they look exactly alike to me.
*512 COUNSEL: Well, they're both birds of prey; one is an eagle and one is a hawk.
COURT: Okay.
COUNSEL: And when we filed with the Secretary of State to get our font, we said it was a hawk. We were represented by a hawk, not an eagle.
We agree with the district court: the birds are identical. Whether that bird is a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk), or some other bird, we need not determine.
Product or service similarity.
" 'The greater the similarity between the products and services, the greater the likelihood of confusion.' "
Xtreme Lashes
,
Outlet and purchaser identity.
The district court found that the outlet and purchaser identity for the two organizations was the same, and again Coalition offers no argument to the contrary. We agree with the district court. The undisputed evidence shows that Alliance and Coalition both target New Orleans voters, often through the same local channels. The greater the overlap between the outlets for, and consumers of, the services, the greater the potential for confusion.
See, e.g.,
Exxon
,
Advertising media identity.
The district court found that the two organizations advertised on behalf of candidates "in the same or similar media." Coalition again fails to dispute this finding. We agree with the district court. The undisputed evidence shows both organizations advertised in New Orleans newspapers using the same means, such as sample ballots in the newspaper and flyers distributed by mail or by hand. "[A]dvertising in similar media [i]s an indication that consumers might be confused as to the source of similar products."
Am. Rice
,
Defendant's intent to infringe.
" '[I]f the [challenged] mark was adopted with the intent of deriving benefit from the reputation of (the plaintiff,) that fact alone may be sufficient to justify the inference that there is confusing similarity.' "
Chevron Chem. Co. v. Voluntary Purchasing Grps., Inc.,
The district court correctly inferred from the striking similarity between the marks that Coalition's later mark was adopted "with the intent of deriving benefit from [Alliance]."
Chevron
,
Actual confusion.
Alliance admitted, and the district court acknowledged, that there was no evidence of actual confusion. On appeal Coalition relies heavily on this point, to no avail. "Although actual confusion is the 'best evidence' of confusion, it 'is not necessary to a finding of likelihood of confusion.' "
Am. Rice
,
Care exercised by potential purchasers.
The district court did not analyze this factor and Coalition does not address it on appeal.
See, e.g.,
Smack Apparel
,
***
In sum, we agree with the district court that Alliance established likelihood of confusion as a matter of law. See, e.g., Viacom , 891 F.3d at 192 (affirming summary judgment on likelihood of confusion even though " every digit" of confusion did not weigh in movant's favor) (emphasis in original). We therefore affirm the district court's injunction as to Alliance's composite mark.
C.
We modify the district court's injunction in one respect. The injunction restrains Coalition from using "the Coalition Marks," which are defined to encompass not only Coalition's logo, but also its "designation 'Coalition for Better Government.' " To the extent the injunction restrains Coalition from using the name "Coalition for Better Government" in connection with endorsing candidates or its other activities, we find the injunction overbroad. Based on our own review of the record, we conclude that Coalition's use of its trade name (as distinct from its logo) does not create a likelihood of confusion with Alliance's differently-worded trade name.
15
In other words, Coalition
*514
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. We therefore modify the injunction only to the extent that it restrains the use of Coalition's name. We leave the injunction intact in all other respects.
See, e.g.,
Wynn Oil Co. v. Purolator Chem. Corp.
,
IV.
For the foregoing reasons, we AFFIRM the district court's summary judgment ruling, but MODIFY the injunction to restrain only the use of Coalition's logo.
AFFIRMED AS MODIFIED
A "service mark" means "any word, name, symbol, or device, or any combination thereof used by a person ... to identify and distinguish the services of one person ... from the services of others and to indicate the source of the services, even if that source is unknown."
Specifically, Alliance registered its word mark as No. 4,330,957 on May 7, 2013. This mark is for the name "Alliance for Good Government" in "standard characters without claim to any particular font, style, size, or color." Alliance registered its composite mark as No. 4,349,156 on June 11, 2013. This mark is described as follows: "[A] bold line drawing of an eagle with outstretched wings with head facing left. Above the image is the word 'Alliance' and below the eagle are the words 'good government' and on the next line is 'since 1967.' "
The record reflects that Coalition has used at least two slightly different bird designs in its logos. The bird on Coalition's 1992 ballot looks modestly different from the bird on its post-2008 ballots. But because Alliance challenges the use of Coalition's logo only from 2008 forward, we need not address whether Coalition's 1992 logo infringed Alliance's mark.
Coalition's word mark application, dated March 17, 2017, seeks to register the name "Coalition for Better Government" in "standard characters, without claim to any particular font style, size, or color." Coalition's composite mark application, also dated March 17, 2017, seeks to register its logo, described as "white letters spelling the words 'Coalition For Better Government' with a drawing of a hawk." Attached to the application are Coalition's present logo (the subject of this suit) and the 1992 version. The parties inform us that the PTO has stayed Alliance's opposition proceeding pending the outcome of this suit.
Coalition raises no argument on appeal concerning the district court's laches ruling, and consequently the issue is not before us.
The Lanham Act provides in relevant part that a person "shall be liable in a civil action" by the registrant of a mark if the person, without the registrant's consent, "use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.]"
Coalition's motion to dismiss also stated it engages in "political free speech," without ever making, briefing, or otherwise developing a distinct First Amendment claim.
The interplay between the Lanham Act and the First Amendment's political and commercial speech doctrines raises a thicket of issues we decline to enter when the issues were not preserved or ruled on below.
See, e.g.,
Radiance Found., Inc. v. NAACP
,
Coalition points to no authority suggesting that whether a mark was fraudulently obtained under
Unlike its composite mark, Alliance's word mark was registered under section 2(f) of the Lanham Act, which allows registration based on evidence that the mark has "become distinctive" based on "proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for five years before the date on which the claim of distinctiveness is made."
Alliance also argues on appeal that the unrebutted evidence showed its marks have achieved secondary meaning-such as evidence that Alliance has continuously used its marks for nearly fifty years in connection with hundreds of Louisiana elections in a variety of advertising media.
See also, e.g.,
Alliance for Good Gov't, Inc. v. St. Bernard Alliance for Good Gov't, Inc
., No. 96-CA-0635, at *6 (La. App. 4th Cir. 12/18/96);
A
generic
term "refers to the class of which a good is a member" and receives no trademark protection.
Xtreme Lashes
,
We again note that Alliance's word mark enjoys an unrebutted presumption that it had secondary meaning when registered.
See
While Alliance does not argue the point, it appears from the record that Alliance's marks are eligible for incontestability status.
See
See, e.g.,
Holiday Inns, Inc. v. Holiday Out in Am.
,
Reference
- Full Case Name
- ALLIANCE FOR GOOD GOVERNMENT, Plaintiff-Appellee v. COALITION FOR BETTER GOVERNMENT, Defendant-Appellant
- Cited By
- 36 cases
- Status
- Published