Addressing whether the district court correctly found a likelihood of confusion as a matter of law between two “identical” logos arranged around a stylized bird, the US Court of Appeals for the Fifth Circuit affirmed the district court’s grant of summary judgment and upheld as modified an injunction prohibiting use of the infringing logo. Alliance for Good Gov’t v. Coalition for Better Gov’t, Case No. 17-30859 (5th Cir. Aug. 22, 2018) (Duncan, J).
The Alliance for Good Government and the Coalition for Better Government are both nonprofit civic organizations that operate in New Orleans, Louisiana, and endorse candidates for office. In 1969, the Alliance created its logo, a design with its name in blue type on a rectangular white background arranged around an eagle. The Coalition’s logo, adopted decades later, features a design with the Coalition’s name in white type on a rectangular blue background arranged around a hawk. As the Fifth Circuit aptly recognized, “pictures are worth a thousand words”:
The Alliance registered its composite mark consisting of its logo in 2013. In 2017, the Alliance sued the Coalition for trademark infringement and moved for summary judgment. The district court granted the Alliance’s motion, finding that the Coalition’s use of its logo infringed the Alliance’s registered composite mark as a matter of law and permanently enjoining the Coalition from using both its name and logo. The Coalition appealed.
The Fifth Circuit affirmed the district court’s grant of summary judgment holding that the Coalition’s use of its logo infringed the Alliance’s registered composite mark as a matter of law. As a procedural matter, the Court refused to consider the Coalition’s argument that the Lanham Act could not apply to use of the logo because the Coalition uses it for “political speech,” not commerce, holding that the Coalition waived the argument by failing to press it before the district court.
Turning to the merits, the Fifth Circuit agreed with the district court that the Coalition failed to adduce any evidence demonstrating that the Alliance’s composite mark was invalid. The Court rejected the proposition that the Alliance committed fraud on the US Patent and Trademark Office during registration by representing that no one else had the “right” to use the mark because the Alliance had long believed that the Coalition had no right to use of the logo. The Court also held that the Coalition presented no evidence to rebut the presumption of inherent distinctiveness attendant the Alliance’s registered composite mark.
The Fifth Circuit further agreed with the district court that the Coalition’s logo created a likelihood of confusion with the Alliance’s composite mark as a matter of law. The Court found that the two marks “looked exactly alike,” and “cut to the chase” by finding that the “Alliance and Coalition have the same logo,” which they use in the same field, market and advertising channels, and to perform the same function. The Court made short work of the Coalition’s “most curious argument”—that the use of a different species of bird defeated a likelihood of confusion—rejecting the Coalition’s distinction between the Alliance’s “eagle” and the Coalition’s “hawk.” In a final procedural move, the Court modified the district court’s injunction, which had enjoined the Coalition from using both its name and logo, to more appropriately enjoin only the Coalition’s use of its infringing logo.