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Q: Trademark lawsuits for using AAA in front of your business name ( Answered 1 out of 5 stars,   2 Comments )
Question  
Subject: Trademark lawsuits for using AAA in front of your business name
Category: Business and Money > Advertising and Marketing
Asked by: danrorapaugh-ga
List Price: $50.00
Posted: 16 Mar 2004 21:01 PST
Expires: 15 Apr 2004 22:01 PDT
Question ID: 317464
Trademark lawsuits from American Automobile Association tring to stop
small business from using AAA in thier name. Such as ei AAA Auto Towing
AAA Auto Insurance, AAA Roofing....Did any court in the USA  uphold
trademark Infringements in favor of American Automobile Association?

Request for Question Clarification by pafalafa-ga on 17 Mar 2004 05:02 PST
There are a number of cases involving the Automobile Association's
trademark and service mark for AAA.  At times, the courts have upheld
claims of infringement and unfair use, and at other times, have denied
the claims.

Are you looking for a simple list of cases?  For instance, one such citation is:

-----

American Auto. Asso. v. AAA Ins. Agency, Inc., Civil No. A-84-CA-157,
UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS, AUSTIN
DIVISION, 618 F. Supp. 787; August 23, 1985

-----

Is this what you're looking for?  If so, I can probably provide about
five or more such citations pertaining to trademark/service mark
cases.

Or do you need additional information as well?

Clarification of Question by danrorapaugh-ga on 17 Mar 2004 11:06 PST
Looking for detailed information of about 3or4 cases where AAA lost
the lawsuit (preferably automotive industry).  Looking for precedent.
Detailed info..

Clarification of Question by danrorapaugh-ga on 17 Mar 2004 11:10 PST
Looking for precedent.Detailed info about this case..
American Auto. Asso. v. AAA Ins. Agency, Inc., Civil No.
A-84-CA-157,UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF
TEXAS, AUSTIN DIVISION, 618 F. Supp. 787; August 23, 1985

Request for Question Clarification by pafalafa-ga on 17 Mar 2004 14:39 PST
Thanks for your clarification.  Hopefully, one of the researchers here
will be able to provide you with the case information you need.
Answer  
Subject: Re: Trademark lawsuits for using AAA in front of your business name
Answered By: pafalafa-ga on 19 Mar 2004 10:15 PST
Rated:1 out of 5 stars
 
Hello again, danrorapaugh-ga.

I was able to track down your cases after all, although there were not
as many AAA cases in the legal databases as I might have supposed.  My
guess is that most cases are resolved well before going to court, as
there are not many folks willing to take on the deep pockets of the
AAA in a face-to-face courtroom confrontation.


However, there are certainly several cases that are relevant to your
question.  Copyright rules prevent me from posting the cases here in
full, but I've summarized them for you, below, and excerpted the
salient points.

I have included cases where the American Automobile Association
challenged the use of its trademarks and service marks.  The outcomes
of the cases vary:  AAA was sometimes upheld, sometimes not, and
sometimes the courts were ambiguous in their actions.  However, each
case helps establish precedent about what is and is not acceptable
practice regarding use of the AAA mark, and similar terms and symbols.

My comments are enclosed in brackets [ ].  All other text is directly
excerpted from the cases themselves.


I hope this information fully meets you needs.  But if not, just let
me know by posting a Request for Clarification before rating this
answer, and I'll be happy to assist you further.

All the best.

pafalafa-ga

==========

[This California case (from 1932) affirms the lower court finding that
the name and symbols for the AAOC - the AMERICAN AUTOMOBILE OWNERS
ASSOCIATION -- did not infringe on AAA]

AMERICAN AUTOMOBILE ASSOCIATION (a Corporation) et al., Appellants, v.
AMERICAN AUTOMOBILE OWNERS ASSOCIATION (a Corporation) et al.,
Respondents

Supreme Court of California

216 Cal. 125; 13 P.2d 707; 1932 

 
August 1, 1932

(1) Unfair Competition...In this action to enjoin an automobile
association from doing business under its corporate name...the finding
that defendant did not extend its activities beyond the thirteen
southern counties of the state, in which counties plaintiffs did not
operate, would be no defense to an injunction if the emblems were so
similar as to fall under the ban of unfair competition...

(2) Id....The test to be applied in such a case is: Would a person...
mistake one of said emblems for the other?

(3) Id...The trial court in such action was justified in finding that
defendants' emblem would not deceive an ordinarily careful person,
where the only points of similarity were found in the size and diamond
shape of the emblems, in the small blue border and in the similarity
as to the metal color of the smaller lettering on the border, and in
all other respects the emblems were different as to name,
abbreviations, size and style of letters, design of motto and color...

(4) Id....Generic terms and words descriptive of place are not subject
to exclusive appropriation; and the words "American Automobile", being
in common use and regarded by the law as common property, may be used
by others in combination with other descriptive words, and are not
subject to exclusive appropriation, provided they are not used in
combination with such other words or symbols or designs as to render
it probable that they would mislead persons...

(5) Id....Diamond-shaped designs have been in common use for many
years and no claim of exclusive appropriation of such shaped designs
or emblems can be sustained...

OPINION: ...American Automobile Association and California State
Automobile Association, appeal from a judgment denying their
application to enjoin defendant corporation from doing business under
its corporate name, American Automobile Owners Association...on the
ground that said name is so similar to the name of the American
Automobile Association, and its emblem so closely resembles the emblem
of the California State Automobile Association as to tend to deceive
and mislead.

...We do not understand that there is any contention on the part of
appellants that respondents have ever used the combination of letters
AAOA as a separate symbol or emblem. The initial letters have always
been a part of the emblems which are before this court as
exhibits....there can be no contention that the American Automobile
Association's emblem in any respect resembles the respondent's emblem
in form, or color, or shape, or size....This court is not permitted to
substitute its judgment ... for that of the trial court where, as
here, there is substantial evidence to support the trial court's
judgment.

The judgment appealed from is affirmed. 

==========


[This case is of interest because the use of the AAA name is so widely
disparate (an auto service, and a legal clinic).  The lower court
allowed some evidence damaging to the legal clinic to be ignored; the
appeals court overturned this judgement.  The outcome here is not
clear cut...the appeals court remanded the case back to the lower
court, based on this procedural issue.  I've included the case here
for the sake of completeness].

The AMERICAN AUTOMOBILE ASSOCIATION (INCORPORATED),
Plaintiff-Appellant Cross-Appellee, v. AAA LEGAL CLINIC OF JEFFERSON
CROOKE, P.C., a/k/a AAA Legal Clinic of James J. Crook, P.C.,
Defendant-Appellee Cross-Appellant

No. 90-8233

UNITED STATES COURT OF APPEALS FOR THE FIFTH CIRCUIT

930 F.2d 1117; 1991 U.S. App. 
 
May 13, 1991


A plaintiff alleging service-mark infringement appeals the district
court's decision upon completion of trial to ignore one admission of
the opposing party and deem another withdrawn... Because we find that
the plaintiff relied on the admissions, and the court's decision
therefore prejudiced the plaintiff...  we reverse and remand.

The American Automobile Association (AAA), a nationwide organization,
provides a variety of services to motor vehicle owners and travelers,
ranging from emergency road assistance to bail bond service,
assistance in obtaining legal services relating to traffic claims, and
arbitrating damage claims involving motor vehicles...

...AAA filed suit against the AAA Legal Clinic of Jefferson Crooke,
P.C., alleging that the Legal Clinic's use of the designation "AAA"
would be likely to cause confusion about its possible affiliation with
or ...sponsorship by AAA... AAA sought a permanent injunction barring
the Legal Clinic's use of the mark "AAA." The Legal Clinic provides
legal services in El Paso, Texas, which it has advertised in Austin,
Dallas, Houston and El Paso. These are all locations in which AAA has
offices.

==========

[In this case, the court ruled unambiguously in favor of the national
AAA, since they found the local AAA Automobile Club of Queens acted
deliberately to copy -- and thereby capitalize on the familiarity of
-- the AAA name and symbol]


THE AMERICAN AUTOMOBILE ASSOCIATION (INCORPORATED), Plaintiff, -
against - AAA AUTOMOBILE CLUB OF QUEENS, INC., Defendant.

97 CV 1180 (SJ)

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF NEW YORK


DISPOSITION:  [*1]  Plaintiff's motion for summary judgment pursuant
to Rule 56(c) of Federal Rules of Civil Procedure granted as to
liability.

The American Automobile Association...brings this action against AAA
Automobile Club of Queens...alleging infringement of its registered
service marks in violation of the Lanham Trade-Mark (Lanham) Act, 15
U.S.C.  1051-1127, and the laws of New York. ...Plaintiff's motion
is granted as to liability....

There are four categories that gauge the extent to which a mark
indicates a source of goods or services. A generic mark, which
includes "the common descriptive name of an article or substance," 15
U.S.C.  1064(c), is never entitled to trademark protection. A
descriptive mark, which describes a product's qualities, ingredients
or characteristics, is entitled to protection only upon proof that it
has acquired "secondary meaning" -- an identity that consumers
associate with a single source of goods or services. Gruner + Jahr,
991 F.2d at 1076. Suggestive marks "suggest[] the product, though it
may take imagination to grasp the nature of the product," and are
eligible for protection without proof of secondary meaning. Id.
Finally, arbitrary or fanciful marks "will almost always be seen as
strong marks," Sports Authority, 89 F.3d at 961, and "bear[] little or
no relationship [*14]  to the kind of product represented." Gruner +
Jahr, 991 F.2d at 1075. n5 They are protectible without proof of
secondary meaning and "with ease of establishing infringement." W.W.W.
Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993)
...

Not only are Defendant's marks confusingly similar ...those of
Plaintiff, but its chosen name mirrors that of Plaintiff's local
affiliate almost to the letter. Defendant advertises nearly all of the
primary services promoted by Plaintiff under the AAA marks, using the
same media, despite undisputed evidence that Defendant does not
actually provide some of those services. (Antonio Aff. P 4). The marks
do not reflect any of the characteristics of Defendant's services,
which is further indirect evidence of intentional copying. n8 Given
Plaintiff's widespread name recognition, any confusion on the part of
potential customers clearly would have benefitted Defendant.

...The undisputed evidence supports the finding that Defendant acted
with the intent to capitalize on Plaintiff's market goodwill.

==========

[Here is another case where the courts found in favor of the American
Automobile Association regarding infringment.  This case involved some
unusual legal arguments by the defendant -- essentially, that the AAA
was using its own name illegally, since it was not authorized to be in
the insurance business]


AMERICAN AUTOMOBILE ASSOCIATION (INCORPORATED) v. AAA INSURANCE AGENCY, INC.

Civil No. A-84-CA-157

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS, AUSTIN DIVISION

618 F. Supp. 787; 

 
August 23, 1985

This is an action for service mark infringement and unfair
competition. Plaintiff contends that Defendant's use of the
designation "AAA" in its insurance business is likely to cause
confusion and constitutes infringement of Plaintiff's federally
registered service marks under Section 32(1) of the Lanham
Act...Plaintiff seeks a permanent injunction and its costs of suit.

Defendant responds that its use of "AAA" is not likely to cause
confusion. Defendant also contends that Plaintiff's use of "AAA" for
insurance services in Texas is illegal, and that Plaintiff's Service
Mark Registration No. 829,265 was fraudulently obtained, because
Plaintiff is not licensed to engage in the insurance business in
Texas...

...the Court finds that Defendant has infringed Plaintiff's federally
registered service marks and has committed acts of unfair competition
in violation of federal and state law, as more fully detailed in the
following findings of fact and conclusions of law. Accordingly,
Plaintiffs are entitled to injunctive relief and to their costs of
suit.



==========

Just for the record, I also ran a search on law review journals to see
if any articles had been published that reviewed AAA trademark cases. 
There were no such articles that I could find, however.

Once again, if you find you need any additional information, just let
me know by posting a Request for Clarification.


pafalafa-ga




search strategy:  Searched several legal databases for the terms [ AAA
or Automobile Association ] and [trademark or service mark or
infringement ]

Request for Answer Clarification by danrorapaugh-ga on 19 Mar 2004 16:08 PST
Looking for precedent of cases that AMERICAN AUTOMOBILE ASSOCIATION
'LOST' in the Auto Business

Clarification of Answer by pafalafa-ga on 19 Mar 2004 19:55 PST
danrorapaugh-ga,

I spent a good deal of time looking for additional relevant cases, but
have not found any other than the ones I've already listed.

I didn't have a clear understandng of what you were after, I fear. 
Your original question asked for cases where the court ruled "in favor
of the American Automobile Association".  Your clarifications then
added that you were looking for "cases where AAA lost", "looking for
precedent", and looking for "detailed info" about the Texas case I had
cited, AAA vs AAA Insurance Agency.

Since your question covered a lot of territory, I thought my answer
should as well, so I included the Texas case, as well as information
on cases both won and lost by AAA.

It is vitally important to this service - and to me personally -- that
the customers get the best possible information to meet their needs. 
I've done the best I know how to provide this for you.

If the answer I've given you doesn't meet your needs, let me know, and
I will ask the editors to withdraw it.  You would not be charged.

All the best,

pafalafa-ga

Request for Answer Clarification by danrorapaugh-ga on 20 Mar 2004 06:14 PST
I'm so sorry I was looking for only cases "LOST" precedent of the
AMERICAN AUTOMOBILE ASSOCIATION

Clarification of Answer by pafalafa-ga on 20 Mar 2004 06:23 PST
No need for apologies...we just need to figure out how to go forward
at this point.

As I mentioned earlier, I have not found other cases in the "lost"
column.  If you feel the information I've provided will be -- in some
fashion -- useful to you, then we can consider the question answered.

But if not, let me know, and I'll withdraw my answer, and you will not
be charged.

pafalafa-ga

Request for Answer Clarification by danrorapaugh-ga on 22 Mar 2004 02:56 PST
Clarification of Question by danrorapaugh-ga on 17 Mar 2004 11:06 PST 
Looking for detailed information of about 3or4 cases where AAA lost
the lawsuit (preferably automotive industry).  Looking for precedent.
Detailed info..

As I Clarified to you on the 17 of March,I was only looking for cases
That AAA LOST...............Not won

Clarification of Answer by pafalafa-ga on 22 Mar 2004 05:01 PST
Dan,

I saw that clarification, along with other one that you posted after
that.  The question now is:  How would you like to proceed on this,
per my note of March 20?
  

Please let me know.
danrorapaugh-ga rated this answer:1 out of 5 stars

Comments  
Subject: Re: Trademark lawsuits for using AAA in front of your business name
From: tutuzdad-ga on 17 Mar 2004 11:46 PST
 
Just an amusing bit of irony here:

The American Arbitration Association (AAA) has arbitrated cases for
the UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS.
The probably weren't consulted on the one you mentioned though.

tutuzdad-ga
Subject: Re: Trademark lawsuits for using AAA in front of your business name
From: danrorapaugh-ga on 18 Mar 2004 21:14 PST
 
That is very amusing!

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