Alliance for Good Government v. Coalition for Bett , 901 F.3d 498 ( 2018 )

Case: 17-30859 Document: 00514612216 Page: 1 Date Filed: 08/22/2018
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
United States Court of Appeals
Fifth Circuit
FILED
No. 17-30859 August 22, 2018
Lyle W. Cayce
ALLIANCE FOR GOOD GOVERNMENT, Clerk
Plaintiff - Appellee
v.
COALITION FOR BETTER GOVERNMENT,
Defendant - Appellant
Appeal from the United States District Court
for the Eastern District of Louisiana
Before DAVIS, HAYNES, and DUNCAN, Circuit Judges.
STUART KYLE DUNCAN, Circuit Judge:
This federal trademark infringement action involves a dispute between
two civic organizations over their logos:
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
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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, non-
commercial 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.
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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.
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
1 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.”
15 U.S.C. § 1127. A “word mark” refers to mark comprised only of words, while a “design
mark” refers to a mark comprised of symbols. See, e.g., Nola Spice Designs, LLC v. Haydel
Enters., Inc., 783 F.3d 527, 537, 540 (5th Cir. 2015). A “composite mark” refers to a mark
“containing both words and symbols in a distinct manner.” Igloo Prods. Corp. v. Brantex, Inc.,
202 F.3d 814, 815 (5th Cir. 2000); see also 4 MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 23:47 (5th ed. 2018) (“McCarthy”) (discussing comparison of “composite
marks involving both designs and words”).
2Specifically, 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.’”
3
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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:
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
3 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.
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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 15 U.S.C. § 1114, as well as various other
federal and state trademark and unfair trade practice claims. Coalition
counterclaimed for, inter alia, fraudulent trademark procurement under 15
U.S.C. § 1120. In August 2017 Coalition moved for summary judgment arguing
Alliance’s suit was barred by laches, and that same month Alliance moved for
partial summary judgment solely on federal trademark infringement. The
district court held a hearing on the cross-motions. Ruling from the bench, the
court denied Coalition’s motion for summary judgment on laches and granted
Alliance’s motion for partial summary judgment on federal trademark
infringement. Alliance voluntarily dismissed its remaining claims.
Subsequently, the district court issued an order permanently enjoining
Coalition from using both its name and logo. Coalition timely appealed the
district court’s trademark infringement ruling and injunction. 5
II.
We review a grant of summary judgment de novo, applying the same
standard as the district court. Smith v. Reg’l Transit Auth., 827 F.3d 412, 417
(5th Cir. 2016). Summary judgment is proper where the pleadings and record
materials show no genuine dispute as to any material fact, entitling the
4 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.
5Coalition raises no argument on appeal concerning the district court’s laches ruling,
and consequently the issue is not before us.
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movant to judgment as a matter of law. FED. R. CIV. P. 56(a). If the moving
party initially shows the non-movant’s case lacks support, “the non-movant
must come forward with ‘specific facts’ showing a genuine factual issue for
trial.” TIG Ins. Co. v. Sedgwick James, 276 F.3d 754, 759 (5th Cir. 2002). We
must view the evidence in the light most favorable to the non-moving party,
drawing all justifiable inferences in the non-movant’s favor. Envtl.
Conservation Org. v. City of Dallas, 529 F.3d 519, 524 (5th Cir. 2008).
III.
To prevail on a claim of federal trademark infringement under the
Lanham Act, 15 U.S.C. § 1051 et seq., a plaintiff must show (1) ownership of a
legally protectable mark and (2) a likelihood of confusion created by an
infringing mark. Nola Spice Designs, LLC v. Haydel Enters., Inc., 783 F.3d 527,
536 (5th Cir. 2015); Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321,
329 (5th Cir. 2008). 6 On appeal, Coalition first argues that the Lanham Act
cannot apply to its marks because Coalition engages only in “political speech”
and does not engage in “commerce or the sale of goods.” Coalition failed to raise
these arguments below, however, and we decline to address them. Second,
Coalition attacks the district court’s summary judgment grant, arguing that
the court erred in ruling that Alliance had a valid mark and that Alliance
proved Coalition’s marks created a likelihood of confusion. We affirm the
district court’s ruling and injunction as to Coalition’s logo but modify the
injunction as to Coalition’s name.
6 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[.]” 15 U.S.C. § 1114(1)(a).
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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., 407 F.3d 332, 340 (5th Cir. 2005) (quoting N.Y. Life Ins. Co. v. Brown, 84
F.3d 137, 141 n.4 (5th Cir. 1996)) (brackets added). Coalition did not do so and
we therefore decline to reach the arguments. See, e.g., Reyes v. Manor Indep.
Sch. Dist., 850 F.3d 251 (5th Cir. 2017) (“We do not consider issues brought for
the first time on appeal.”).
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, 407 F.3d at 339-40 (quoting
Keenan v. Tejeda, 290 F.3d 252, 262 (5th Cir. 2002)).
To be sure, Coalition’s answer to Alliance’s complaint raised—among
thirteen affirmative defenses—the defense that “its actions constitute purely
7
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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, 290 F.3d at 262 (explaining that “‘[e]ven an issue raised in
the complaint but ignored at summary judgment may be deemed waived’”)
(quoting Grenier v. Cyanamid Plastics, Inc., 70 F.3d 667, 678 (1st Cir. 1995));
see also Frank C. Bailey Enters., Inc. v. Cargill, Inc., 582 F.2d 333, 334 (5th
Cir. 1978) (holding that “an appellate court, in reviewing a summary judgment
order, can only consider those matters presented to the district court”). 8
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
Coalition’s motion to dismiss also stated it engages in “political free speech,” without
7
ever making, briefing, or otherwise developing a distinct First Amendment claim.
8 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, 786 F.3d
316 (4th Cir. 2015) (observing “[a]t least five of our sister circuits”—the D.C., 10th, 9th, 6th,
and 8th—“have interpreted [‘in connection with the sale … or advertising of any goods or
services’ in 15 U.S.C. § 1114(1)(a) of the Lanham Act] as protecting from liability all
noncommercial uses of marks”); id. at 323-24 (adopting commercial speech doctrine as
“guidance” in applying Lanham Act’s “in connection” requirement); but see United We Stand
Am., Inc. v. United We Stand Am. N.Y., Inc., 128 F.3d 86, 90 (2nd Cir. 1997) (observing “[t]he
Lanham Act has … been applied to defendants furnishing a wide variety of non-commercial
public and civic benefits” and concluding that “[a] political organization that … endorses
candidates under a trade name” satisfies the “in connection” requirement). This Court does
not appear to have spoken directly on this debate but has held that a different section of the
Lanham Act, 15 U.S.C. § 1125(a), encompasses only “commercial advertising or promotion.”
Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1382-83 (5th Cir. 1996); see also TMI Inc. v.
Maxwell, 368 F.3d 433, 436 n.2 (5th Cir. 2004) (stating that “[t]his Court has previously
determined that §43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1), which addresses false and
misleading descriptions, only applies to commercial speech”) (citing Procter & Gamble Co. v.
Amway Corp., 242 F.3d 539, 547 (5th Cir. 2001), abrogated on other grounds by Lexmark Int’l,
Inc. v. Static Control Components, Inc., 572 U.S. 118, 134-37 (2014)).
8
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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, 518 F.3d at 329 (citations omitted). We reject
Coalition’s arguments.
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 15 U.S.C. § 1120. Even assuming this
argument is pertinent here, 9 it fails. Coalition’s only evidence is Alliance’s 2012
PTO declaration stating that, to the best of Alliance’s knowledge, “no other
person has the right to use such mark in commerce either in the identical form
thereof or in such near resemblance thereto as to be likely … to cause
confusion[.]” See 15 U.S.C. § 1051(b)(3)(D) (requiring this verification with
trademark application). Coalition suggests this declaration was fraudulent
because, in 2012, Alliance was “fully aware” Coalition was using its own mark.
But Coalition misreads the declaration, which states only that Alliance
9 Coalition points to no authority suggesting that whether a mark was fraudulently
obtained under 15 U.S.C. § 1120 is relevant to whether a mark is “distinctive,” the touchstone
for validity in a section 1114 infringement claim. See Nola Spice, 783 F.3d at 537 (citing Wal-
Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210-11 (2000)). Even if it were, however, we
note that Coalition raised fraudulent procurement under § 1120 in a separate counterclaim
that was dismissed by the district court. Coalition’s appellate briefing neither mentions this
ruling nor explains why it was incorrect, thus abandoning the issue. Yohey v. Collins, 985
F.2d 222, 224-25 (5th Cir. 1993); FED. R. APP. P. 28(a)(4). Consequently, we doubt that
Coalition’s fraud claim is pertinent to the distinctiveness of Alliance’s mark, and we also
doubt the issue is properly before us. Nonetheless, we reach the issue because Coalition
raised it in opposing summary judgment and because it is easily resolved.
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believed in 2012 that no one else had the “right” to use its mark or any
confusingly-similar mark. The record is undisputed that Alliance believed it
had the exclusive right to use its marks in 2012—otherwise, why would
Alliance have sued in 2008 to stop Coalition from using its marks? The 2012
declaration does not remotely create a fact issue as to whether Alliance
obtained its mark by fraud. See, e.g., Meineke Disc. Muffler v. Jaynes, 999 F.2d
120, 126 (5th Cir. 1993) (explaining that a fraudulent registration claim
requires proof “by clear and convincing evidence that the applicant made false
statements with the intent to deceive the licensing authorities”).
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, 783 F.3d at 537 (citing
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th Cir. 2010);
15 U.S.C. § 1057(b)). 10 To be sure, Coalition could have offered evidence “to
10 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.” 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin, Inc. v. Ishtar Skin
Care Prods., Inc., 745 F.3d 877, 882 (8th Cir. 2014). “[T]he presumption of validity that
attaches to a § 2(f) registration includes a presumption that the registered mark has acquired
distinctiveness, or secondary meaning, at the time of its registration.” Id. at 882-83 (citations
omitted). While this presumption differs from the presumption of inherent distinctiveness
enjoyed by Alliance’s composite mark, see, e.g., Nola Spice, 783 F.3d at 537 n.1, here we
consider only Alliance’s composite mark. See, e.g., Igloo Prods. Corp., 202 F.3d at 817
(explaining that the prima facie presumption arising from a composite mark’s registration
“pertains to the whole mark … rather than to any individual portion of the mark”) (citing In
re Nat’l Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985); In re Bose Corp., 772 F.2d 866, 873
(Fed. Cir. 1985)) (emphasis in original).
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overcome the presumption of inherent distinctiveness that accompanies
[Alliance’s] registration[.]” Nola Spice, 783 F.3d at 542 (citing Amazing Spaces,
608 F.3d at 234). But Coalition offered no evidence concerning the inherent
distinctiveness of Alliance’s composite mark; rather, it offered evidence
concerning Alliance’s word mark only (specifically, evidence of similarly-
named organizations outside Louisiana). Such evidence has nothing to do with
the central inquiry governing the inherent distinctiveness of Alliance’s
composite mark—namely, whether the mark’s “design, shape or combination
of elements is so unique, unusual or unexpected in this market that one can
assume without proof that it will automatically be perceived by customers as
an indicator of [the] origin” of Alliance’s services, and whether Alliance’s logo
“was capable of creating a commercial impression distinct from the
accompanying words.” Nola Spice, 783 F.3d at 541 (quoting Amazing Spaces,
608 F.3d at 232, 243-44) (internal quotation marks omitted); see also Seabrook
Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)
(setting forth analysis governing inherent distinctiveness of design marks). 11
Consequently, Coalition failed to rebut the presumption that Alliance’s
11 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); 686 So. 2d 83, 86 (holding
that, for purposes of Louisiana trademark law, the name “Alliance for Good Government” has
acquired secondary meeting “[g]iven the length of time that [Alliance] has been in existence”
and given that “there is obviously a great amount of name recognition and/or goodwill
associated with the name ‘Alliance for Good Government’”). We need not reach the issue of
secondary meaning, however, given the unrebutted presumption of distinctiveness attaching
to Alliance’s mark by virtue of its PTO registration.
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composite mark was inherently distinctive and therefore legally protectable.
The district court properly granted summary judgment on this point.
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., 550 F.3d 465, 478 (5th Cir. 2008) (quoting Westchester Media v.
PRL USA Holdings, Inc., 214 F.3d 658, 663 (5th Cir. 2000)). The required
showing is a “probability” of confusion, not merely a “possibility.” Xtreme
Lashes v. Xtended Beauty, 576 F.3d 221, 226 (5th Cir. 2009) (citing Smack
Apparel, 550 F.3d at 478). This 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.
See generally, e.g., Am. Rice, 518 F.3d at 329 (citing Oreck Corp. v. U.S. Floor
Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)); Xtreme Lashes, 576 F.3d at 227
(citing Smack Apparel, 550 F.3d at 478). “‘The absence or presence of any one
factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion
need not be supported even by a majority of the … factors.’” Am. Rice, 518 F.3d
at 329 & n.19 (quoting Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d
145, 150 (5th Cir. 1985)). While likelihood of confusion typically presents a
contested fact issue, “summary judgment may be upheld if the … record
compels the conclusion that the movant is entitled to judgment as a matter of
law.” Smack Apparel, 550 F.3d at 474 (citing Beef/Eater Rests., Inc. v. James
12
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Burrough, Ltd., 398 F.2d 637, 639 (5th Cir. 1968)). In its ruling, the district
court found that the first six digits pointed strongly towards a likelihood of
confusion; that there was no evidence as to the seventh digit (actual confusion);
and that the eighth digit (care exercised by potential purchasers) did not seem
applicable. We agree with the district court’s ruling as to the parties’ logos.
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, 518 F.3d at 330 (quoting Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc.,
725 F.2d 336, 346 (5th Cir. 1984)); see also, e.g., Xtreme Lashes, 576 F.3d at
227 (discussing spectrum) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768 (1992)). 12 Second, we consider “the standing of the mark in the
marketplace.” Am. Rice, 518 F.3d at 330 (citing Sun Banks of Fla., Inc. v. Sun
Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th Cir. 1981)).
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, 576 F.3d at 227 (explaining that “[i]t is
12 A generic term “refers to the class of which a good is a member” and receives no
trademark protection. Xtreme Lashes, 576 F.3d at 227 (citing Two Pesos, 505 U.S. at 768). A
descriptive term “provides an attribute or quality of a good,” and may be protected only if it
has acquired secondary meaning. Id. A suggestive term “suggests, but does not describe an
attribute of the good; it requires the consumer to exercise his imagination to apply the
trademark to the good.” Id. (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d
786, 791 (5th Cir. 1983)). Arbitrary or fanciful terms “bear no relationship to the products or
services to which they are applied.” Amazing Spaces, 608 F.3d at 241 (quoting Zatarains, 698
F.2d at 790-91). Suggestive, arbitrary, and fanciful terms, “because their intrinsic nature
serves to identify a particular source of a product, are deemed inherently distinctive and are
entitled to protection.” Xtreme Lashes, 576 F.3d at 227 (quoting Two Pesos, 505 U.S. at 763).
13
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proper to give more weight to the distinctive portions of a mark and less weight
to unremarkable or generic portions”) (citing In re Dixie Rests., Inc., 105 F.3d
1405, 1407 (Fed. Cir. 1997)). The image of the bird—which Alliance considers
to be an eagle—is not “intrinsic” to the services of a good-government
organization promoting preferred candidates, which would be characteristic of
a merely generic or descriptive feature. See, e.g., Am. Rice, 518 F.3d at 330
(explaining that “the image of a girl icon being used to sell rice is not intrinsic
to rice as a product”). Instead, the audience for Alliance’s endorsements must
“exercise some imagination” to associate the logo’s bird symbolism with
Alliance’s services. See, e.g., Xtreme Lashes, 576 F.3d at 227 (explaining that
“a suggestive term … requires the consumer to exercise his imagination to
apply the trademark to the good”). Moreover, as explained, Alliance’s
composite mark enjoys an unrebutted presumption of distinctiveness 13 due to
its PTO registration, see Nola Spice, 783 F.3d at 537, further enhancing the
strength of the mark. See, e.g., Amazing Spaces, 608 F.3d at 237 (explaining
that PTO registration constitutes prima facie evidence “that the registrant has
the exclusive right to use the registered mark in commerce with respect to the
specified goods or services”); 15 U.S.C. §§ 1057(b) & 1115(a); see also, e.g., Am.
Rice, 518 F.3d at 330 (relying on presumption of validity from PTO registration
as a factor in mark strength). 14 Finally, as to the standing of Alliance’s mark
13 We again note that Alliance’s word mark enjoys an unrebutted presumption that it
had secondary meaning when registered. See 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin,
745 F.3d at 882-83. Thus, to the extent that Alliance’s name is separately relevant to the
strength of Alliance’s composite mark, the name’s presumed secondary meaning under
section 1052(f) also supports the strength of the mark. See, e.g., Viacom Int’l v. IJR Capital
Investments, LLC, 891 F.3d 178, 193 (5th Cir. 2018) (finding mark at issue strong “because
it has acquired distinctiveness through secondary meaning”).
14While Alliance does not argue the point, it appears from the record that Alliance’s
marks are eligible for incontestability status. See 15 U.S.C. § 1065 (providing an owner’s right
to use a mark “shall be incontestable,” if the mark “has been in continuous use for five
consecutive years subsequent to the date of … registration”). Incontestability furnishes
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in the marketplace, it is undisputed that Alliance has used its mark for some
fifty years to promote candidates in yearly elections in a variety of Louisiana
advertising media. See, e.g., Sun-Fun Prods. v. Suntan Research & Devel. Inc.,
656 F.2d 186, 190-91 (5th Cir. Unit B Sept. 1981) (considering duration of use
and promotion of the mark in assessing standing of the mark in the
marketplace). Coalition offers no argument on appeal to counter these indicia
of strength. We agree with the district court that the evidence points to the
strength of Alliance’s mark.
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, 141 F.3d 188, 201
(5th Cir. 1998). “Similarity of appearance is determined on the basis of the
total effect of the designation, rather than on a comparison of individual
features,” but “courts should give more attention to the dominant features of a
mark.” Xtreme Lashes, 576 F.3d at 228 (internal quotation marks and citations
omitted); see also, e.g., Sun-Fun Prods., 656 F.2d at 189 (noting the “well-
established proposition that similarity of design stems from the overall
impression conveyed by the mark and not a dissection of individual features”)
(citations omitted). The inquiry focuses, not on whether two marks are
“conclusive evidence” of the registrant’s exclusive right to use the mark, id. § 1115(b), but
does not relieve a plaintiff from his burden of proving infringement. KPO Permanent Make-
Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004). Incontestability does,
however, preclude an infringement action from being “defended on the grounds that the mark
is merely descriptive.” Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985).
It also shows strength of the mark. See, e.g., Am. Rice, 518 F.3d at 330 (noting in the strength-
of-mark analysis that mark at issue was “incontestable”). The record reflects that Alliance’s
two marks were registered in May and June of 2013. We express no opinion on whether
Alliance’s marks satisfy the additional requirements of section 1065. See, e.g., 15 U.S.C.
§ 1065(3) (requiring, inter alia, filing an affidavit with the Director within one year of
expiration of the five-year period).
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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, 141 F.3d at 201
(citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. c (1995)); see
also, e.g., Xtreme Lashes, 576 F.3d at 229 (“Confusion of origin, not the identity
of marks, is the gravamen of trademark infringement”) (citing KPO Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004)).
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, 576 F.3d at 228. The district court could not have
said it better: “It looks like if [you] place one over the other[,] it would be
virtually identical. Maybe exactly identical.”
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
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users are somehow associated.” Capece, 141 F.3d at 201. Here we also find the
evidence uncontested and overwhelming. It is undisputed that Alliance and
Coalition work in the same field (elections), operate in the same market (New
Orleans), use the same advertising channels (newspapers, sample ballots,
flyers), and sometimes endorse the same or opposing candidates.
Consequently, there is no question that the overall similarity of the marks, in
the context of their use, creates a likelihood in the minds of voters that the two
organizations are “somehow associated.” Capece, 141 F.3d at 201.
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.
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.
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Product or service similarity. “‘The greater the similarity between the
products and services, the greater the likelihood of confusion.’” Xtreme Lashes,
576 F.3d at 229 (quoting Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628
F.2d 500, 505 (5th Cir. 1980)). The district court found the services provided
by the two organizations—endorsement of candidates—are “exactly the same.”
On appeal Coalition offers no response. The district court was correct.
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, 628 F.2d at 505 (finding similarity of
products where both plaintiff and defendant were involved in “car care”); cf.
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 262 (5th Cir. 1980)
(explaining that “[d]issimilarities between the retail outlets for and the
predominant consumers of plaintiff’s and [defendant’s] goods lessen the
possibility of confusion, mistake, or deception”).
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, 518 F.3d 332 (brackets added); see also, e.g.,
Xtreme Lashes, 576 F.3d at 229 (inferring similar advertising and marketing
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channels where both parties targeted the same class of buyers using “print
advertisements, direct mailings, and Internet promotion”).
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., 659 F.2d
695, 703-04 (5th Cir. Unit A Oct. 1981) (quoting Amstar Corp., 615 F.2d at 263)
(brackets added). The district court found that, while there was no evidence of
“actual intent to infringe,” Coalition’s logo “was certainly intended to mimic,
and largely mimic[s] … Alliance’s logo.” In response, Coalition argues this issue
should not have been resolved on summary judgment because Alliance did not
introduce evidence of intent to infringe.
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, 659 F.2d at 704. “‘[A]s soon as we see that a
second comer in a market has, for no reason that he can assign, plagiarized the
‘make-up’ of an earlier comer, we need no more[.]’” Id. (quoting American
Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 563 (2nd Cir. 1953)).
Coalition’s own evidence bolsters this conclusion. At oral argument, Coalition
drew our attention to a 1992 version of its logo featuring a slightly different
stylized bird. But the mark challenged here is Coalition’s 2008 mark, which
features a newer iteration of the bird exactly like Alliance’s. “[W]e can think of
no other plausible explanation for such behavior” than Coalition’s intent to
benefit from Alliance’s pre-existing reputation. Chevron, 659 F.2d at 704.
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
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confusion.’” Am. Rice, 518 F.3d at 333 (quoting Amstar, 615 F.2d at 263); see
also, e.g., Exxon, 628 F.2d at 506 (explaining that “evidence of actual confusion
… is not essential to a finding of likelihood of confusion”) (citation omitted).
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, 550 F.3d at 483 (explaining that, “[w]here items are relatively
inexpensive, a buyer may take less care in selecting the item, thereby
increasing the risk of confusion”). We need not consider this factor, since no
one factor is dispositive, Am. Rice, 518 F.3d at 329, and since the balance of
the factors point overwhelmingly in Alliance’s favor.
***
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
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with Alliance’s differently-worded trade name. 15 In other words, 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. 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., 536 F.2d 84, 86 (5th
Cir. 1976) (modifying injunction on appeal by deleting one subsection).
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
15 See, e.g., Holidays Inns, Inc. v. Holiday Out in Am., 481 F.2d 445 (5th Cir. 1973)
(affirming conclusion that “Holiday Inn” and “Holiday Out” were not confusingly similar); see
also, e.g., W.L. Gore & Assoc., Inc. v. Johnson & Johnson, 882 F. Supp. 1454 (D. Del. 1995)
(concluding “‘Easy Slide’ is dissimilar from ‘Glide’ in appearance and sound, tipping the
balance against a finding of likelihood of confusion”), aff’d, 77 F.3d 465 (3rd Cir. 1996); Coca-
Cola Co. v. Essential Prods. Co., 421 F.2d 1374, 1376 (C.C.P.A. 1970) (holding Coca-Cola and
Coco Loco not confusingly similar because, inter alia, “the articulate utterance of one mark
is far from identical with that of the other mark”); see also generally 4 McCarthy §23:30
(collecting cases holding word marks not confusingly similar). We reach this conclusion based
solely on the record before us and offer no view regarding Alliance’s pending opposition to
Coalition’s PTO application, which was stayed pending this lawsuit.
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