Alliance for Good Government v. Coalition for Bett
901 F.3d 498
| 5th Cir. | 2018Background
- Alliance for Good Government (founded 1967) has used a composite logo (stylized bird + name, blue/white rectangular design) in Louisiana election advertising and sample ballots for ~50 years and registered a word mark and a composite/service mark with the PTO in 2013.
- Coalition for Better Government (founded 1982) used a very similar logo in New Orleans sample ballots (at least since 1992; the post-2008 iteration challenged here closely matches Alliance’s logo) and applied to register its own word and composite marks in 2017.
- Alliance sued Coalition in federal court (2017) for trademark infringement under the Lanham Act; district court granted Alliance partial summary judgment on §1114 infringement and entered a permanent injunction barring Coalition from using its name and logo.
- Coalition appealed, arguing (inter alia) that the Lanham Act should not apply to its political/noncommercial speech, that Alliance’s marks were invalid (fraud/lack of distinctiveness), and that there remained factual disputes on likelihood of confusion; Coalition also emphasized an asserted difference between the birds (hawk vs. eagle).
- The Fifth Circuit reviewed summary judgment de novo, held Alliance’s composite mark legally protectable and that Coalition’s logo created a likelihood of confusion as a matter of law, affirmed judgment, but narrowed the injunction to bar only Coalition’s logo (not the trade name), provided the name is disassociated from the confusing logo.
Issues
| Issue | Plaintiff's Argument (Alliance) | Defendant's Argument (Coalition) | Held |
|---|---|---|---|
| Applicability of the Lanham Act to political/noncommercial speech | Lanham Act applies to protect marks used in advertising/endorsements | Coalition: its activity is political, noncommercial, so Lanham Act shouldn’t apply | Waived on appeal — Coalition failed to press this below; court declined to decide |
| Validity/distinctiveness of Alliance's composite mark | Registered composite mark is inherently distinctive (prima facie) and/or has secondary meaning from long use | Coalition: registration procured by fraudulent declaration and mark lacks distinctiveness | Alliance’s composite mark is legally protectable; Coalition failed to rebut presumption of distinctiveness; fraud claim unsupported |
| Likelihood of confusion between logos | Logos are virtually identical; same market, services, media — confusion likely | Coalition: factual disputes remain; claims logo birds differ (hawk vs eagle) | Likelihood of confusion established as a matter of law — marks nearly identical and used in same market/channels; bird species argument rejected |
| Scope of injunction (name vs logo) | Seek to enjoin both Coalition’s name and logo | Coalition argued name alone is not confusingly similar | Modified: injunction upheld as to Coalition’s logo but overbroad as to the trade name; Coalition may use its name if it disassociates from the infringing logo |
Key Cases Cited
- Smith v. Reg’l Transit Auth., 827 F.3d 412 (5th Cir.) (summary judgment standard explained)
- TIG Ins. Co. v. Sedgwick James, 276 F.3d 754 (5th Cir.) (non-movant must show specific facts to create genuine issue)
- Nola Spice Designs, LLC v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir.) (prima facie effect of PTO registration for distinctiveness)
- Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321 (5th Cir.) (Lanham Act elements and likelihood-of-confusion digits)
- Xtreme Lashes v. Xtended Beauty, 576 F.3d 221 (5th Cir.) (mark-similarity and distinctiveness analysis)
- Elvis Presley Enters. Inc. v. Capece, 141 F.3d 188 (5th Cir.) (compare marks’ appearance, sound, meaning; confusion of origin focus)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. Sup. Ct.) (inherent distinctiveness and protectability of trade dress)
- Smack Apparel Co. v. Board of Supervisors for La. State Univ., 550 F.3d 465 (5th Cir.) (likelihood-of-confusion multi-factor approach)