The Court of Appeals for the Fifth Circuit held that two nonprofit organizations that endorse political candidates in New Orleans, LA, use different names (Alliance For Good Government v. Coalition for Better Government) which are not likely to cause consumer confusion or mistake (not trademark infringement), but when Coalition began using a virtually identical, similar logo (a bird with wings outstretched) in 2008 as compared to Alliance’s (a bird with wings outstretched) used by Alliance since the 1960s, the post-2008 Coalition logo was trademark infringement due to the likelihood of consumer confusion or mistake. The Appeals Court reversed the lower court’s decision commanding Coalition to change its name, but affirmed the decision as to the logos and resulting trademark infringement. Alliance For Good Government v. Coalition for Better Government, Case No. 18-30759 (5th Cir., Mar. 21, 2019) (Full text of opinion available here).
Alliance began using a logo featuring a bird with wings outstretched in the late 1960s. Coalition began using a similar logo in the 1980s or 1990s, then changed its logo in 2008 to be virtually identical to Alliance’s. The district court granted Alliance’s motion for summary judgment on its trademark infringement claim against Coalition, enjoined Coalition from the use of both its logo and its trade name, and then awarded Alliance attorney’s fees incurred in bringing the lawsuit.
The Appeals Court agreed that Alliance was entitled to attorneys fees (about $68,000), but sent the case back to the lower court to apportion the fees between the several counts in the complaint because Coalition is entitled to use its trade name, bit no longer use the post 2008 bird logo.
The Appeals Court concluded that based on the summary judgment record, Coalition’s trade name did not by itself generate a likelihood of confusion with Alliance’s “differently-worded” trade name.
As for fees, the Trademark Act, The Lanham Act, authorizes the award of “reasonable attorney fees to the prevailing party” in “exceptional cases.” In Octane Fitness, LLC v. ICON Health & Fitness, Inc., a party seeking fees under the Patent Act must demonstrate that the case “stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Lanham Act’s fee-shifting provision is identical to the Patent Act’s.
The district court first found that the case stood out due to the strength of Alliance’s litigating position: Alliance adopted its logo at least 15 years before Coalition began using its similar logo; Alliance’s composite mark was strong; the marks were very similar; and both parties provided the same “product,” used the same advertising channels, and targeted the same “customers.”
When a party advances both Lanham Act and non-Lanham Act claims, a district court should make efforts to award fees only for successful Lanham Act claims. This reflects “the background rule in America . . . [that] the prevailing party usually cannot recover fees absent statutory authority.” The same apportionment principle should apply “when in one lawsuit some Lanham Act claims qualify for an attorney’s fee award and other Lanham Act claims do not.”
Since Alliance did not prevail in its effort to enjoin Coalition from using the “Coalition for Better Government” designation, Alliance is only entitled to fees for work its attorneys performed on its claim that Coalition’s logo infringed its composite mark. Per the Court: “While Alliance’s composite-mark claim may be intertwined with its other claims to some extent, ‘the impossibility’ of making an exact apportionment does not relieve the district court of its duty to make some attempt to adjust the fee award in an effort to reflect an apportionment.’”