628 F. App'x 910
5th Cir.2015Background
- Robert Namer used the name “Voice of America” for seminars, a radio program (since 1991), and the domain thevoiceofamerica.com (registered in 1998); he incorporated Voice of America, Inc. in 1977.
- The Broadcasting Board of Governors (the Board), operator of the government-run Voice of America, registered the VOICE OF AMERICA trademark in 2005 and targeted international audiences via official websites.
- The Board sent a letter to Namer in 2000 demanding he stop using the name (no mention of the website); in 2011 it sent a cease-and-desist after registering the mark and initiated a UDRP proceeding that resulted in transfer of Namer’s domain.
- Namer sued for a declaratory judgment; the Board counterclaimed for trademark infringement. The district court granted summary judgment to the Board and issued an injunction barring Namer’s use of the mark/website.
- On appeal Namer raised: a laches defense to the Board’s infringement claim and argued the Board’s consumer survey should be excluded; other theories (First Amendment/Rogers, due process, prior use defense) were not preserved below and were not considered.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of consumer survey to show likelihood of confusion | Isaacson’s survey used wrong universe; should survey VOA’s (Board’s) audiences | Survey properly sampled likely visitors to Namer’s website—the relevant universe to measure confusion | Court affirmed admission: survey sampled the infringer’s likely consumers and showed 19.1% confusion |
| Laches defense (delay by senior user) | Board’s long delay in asserting rights bars its infringement claim | Namer cannot show undue prejudice from delay (no evidence of investments/loss) | Court affirmed: Namer failed to prove undue prejudice; laches defense fails |
| Laches as a bar to injunctive relief | (argued on appeal only) delay prejudiced his litigation strategy | Issue not raised below; Board maintained injunction was appropriate and public interest favors preventing confusion | Not considered on appeal (not preserved) |
| Other defenses (First Amendment/Rogers, due process, §1115(b)(5) prior use) | These defenses apply to protect his website and prior use | Not adequately raised below; Board argued they were forfeited | Not considered (forfeited for failure to raise in district court) |
Key Cases Cited
- Gen. Elec. Co. v. Joiner, 522 U.S. 136 (standard for abuse of discretion in admitting expert testimony)
- United States v. Valencia, 600 F.3d 389 (5th Cir. 2010) (appellate review standard for district court evidentiary rulings)
- Exxon Corp. v. Tex. Motor Exch. of Hous., Inc., 628 F.2d 500 (5th Cir. 1980) (surveys must sample purchasers most likely to use the alleged infringer’s goods/services)
- Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252 (5th Cir. 1980) (illustration of improper survey universe and proper sampling approach)
- Pennzoil-Quaker State Co. v. Miller Oil & Gas Operations, 779 F.3d 290 (5th Cir. 2015) (undue prejudice for laches requires showing significant investment or business expansion based on belief of permission to use the mark)
- Celanese Corp. v. Martin K. Eby Const. Co., 620 F.3d 529 (5th Cir. 2010) (issues not raised below are forfeited on appeal)
- Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145 (5th Cir. 1985) (laches ordinarily does not bar injunctive relief because public interest in avoiding confusion can outweigh delay)