419 F.Supp.3d 765
S.D.N.Y.2019Background
- Better Angels Society, a Delaware nonprofit founded in 2011, owns a registered (incontestable) trademark for "The Better Angels Society" for "charitable fundraising services in connection with media- and entertainment-related projects."
- Better Angels funds documentary films (Ken Burns et al.), hosts related events, and operates UNUM, a digital educational platform; it has raised ~$82 million and spent marketing funds to promote its mark.
- Institute for American Values (IAV), a separate nonprofit, launched an initiative called "Better Angels" after the 2016 election and uses the mark "Better Angels" for programming, memberships, and fundraising.
- IAV filed two trademark applications for the mark "Better Angels" on September 11, 2018; Better Angels sued IAV for trademark infringement on December 6, 2018.
- The District Court applied the Polaroid likelihood-of-confusion framework, found multiple factors favor Better Angels, denied IAV’s Rule 56(d) discovery request, and granted Better Angels partial summary judgment on infringement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Strength/validity of mark | Better Angels: registered, incontestable mark and has acquired secondary meaning in civic/educational fundraising and related services. | IAV: name is generic/common (Lincoln phrase); Better Angels only a fundraiser with no branded goods/services. | Held: Mark is incontestable for registered services and is sufficiently strong/suggestive with secondary meaning for related civic/educational services. |
| Similarity & likelihood of confusion (Polaroid factors overall) | Better Angels: marks are similar and parties operate in proximate commerce (events, education, websites); bridging the gap likely (UNUM). | IAV: different missions/narrower fundraising role; consumer sophistication and donor deliberation reduce confusion. | Held: On balance, strength, similarity, commercial proximity, and bridging the gap weigh for plaintiff; overall likelihood of consumer confusion found. |
| Bad faith / actual confusion / quality concerns | Better Angels: IAV continued use after warnings and some instances of confusion exist; IAV’s programs could tarnish the brand. | IAV: no intent to trade on Better Angels’ goodwill; alleged actual confusion is minimal or unreliable; no evidence of tarnishment. | Held: No bad faith shown; actual confusion evidence given little weight; quality/tarnishment speculative and not supported. |
| Rule 56(d) discovery request | IAV: needs discovery on instances of confusion, donor base, and Better Angels’ involvement in funded programming to oppose summary judgment. | Better Angels: requested materials are immaterial to the infringement determination already supported by record. | Held: Denied — IAV failed to show requested discovery would produce material facts to defeat summary judgment; requests were speculative or immaterial. |
Key Cases Cited
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (formulation of multi-factor likelihood-of-confusion test)
- Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27 (2d Cir. 2016) (application of Polaroid factors)
- Savin Corp. v. Savin Grp., 391 F.3d 439 (2d Cir. 2004) (trademark registration as prima facie evidence; distinctiveness analysis)
- Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (bad faith and mark-strength discussion)
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (totality-of-products approach to consumer confusion)
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) (registration presumption of validity)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard and materiality)
- Miller v. Wolpoff & Abramson, LLP, 321 F.3d 292 (2d Cir. 2003) (requirements for a Rule 56(d) affidavit)
- In re Dana Corp., 574 F.3d 129 (2d Cir. 2009) (rejecting speculative Rule 56(d) discovery requests)