6 F.3d 1385 (9th Cir. 1993), 91-35597, Official Airline Guides, Inc. v. Goss

Docket Nº:91-35597, 91-35724 and 91-35725.
Citation:6 F.3d 1385
Party Name:28 U.S.P.Q.2d 1641 OFFICIAL AIRLINE GUIDES, INC., Plaintiff-Appellant, v. Mindy GOSS; Sandy Vanderzanden, d/b/a Mindy's Answering Service; Churchfield Publications, Inc.; Ashbyweb Limited Company, d/b/a American Concepts; Anne-Lise Fleisher, an individual, Defendants-Appellees. OFFICIAL AIRLINE GUIDES, INC., Plaintiff-Appellant-Cross-Appellee, v. C
Case Date:October 07, 1993
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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Page 1385

6 F.3d 1385 (9th Cir. 1993)

28 U.S.P.Q.2d 1641

OFFICIAL AIRLINE GUIDES, INC., Plaintiff-Appellant,

v.

Mindy GOSS; Sandy Vanderzanden, d/b/a Mindy's Answering

Service; Churchfield Publications, Inc.; Ashbyweb Limited

Company, d/b/a American Concepts; Anne-Lise Fleisher, an

individual, Defendants-Appellees.

OFFICIAL AIRLINE GUIDES, INC., Plaintiff-Appellant-Cross-Appellee,

v.

CHURCHFIELD PUBLICATIONS, INC.; Ashbyweb Limited Company;

Anne-Lise Fleisher; Mindy Goss; Sandy

Vanderzanden,

Defendants-Appellees-Cross-Appellants.

OFFICIAL AIRLINE GUIDES, INC., Plaintiff-Appellee-Cross-Appellant,

v.

CHURCHFIELD PUBLICATIONS, INC.; Ashbyweb Limited Company;

Anne-Lise Fleisher; Sandy Vanderzanden,

Defendants-Appellants-Cross-Appellees,

and

Mindy Goss, Defendant.

Nos. 91-35597, 91-35724 and 91-35725.

United States Court of Appeals, Ninth Circuit

October 7, 1993

Submitted July 12, 1993.[*]

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Richard E. Alexander, Dickinson, Wright, Moon, Van Dusen & Freeman, Chicago, IL, for plaintiff-appellant-cross-appellee.

Dennis E. Stenzel, Chernoff, Vilhauer, McClung & Stenzel, Portland, OR, for defendants-appellees-cross-appellants.

Appeal from the United States District Court for the District of Oregon.

Before: FARRIS, FERGUSON, and THOMPSON, Circuit Judges.

FARRIS, Circuit Judge:

Official Airline Guides appeals from the district court's judgment after a bench trial finding that the use by Mindy Goss, Ashbyweb Ltd., and other defendants ("Ashbyweb") of the phrases "THE TRAVEL PLANNER USA" and "USA TRAVEL PLANNER" did not infringe OAG's trademark "OAG TRAVEL PLANNER." Ashbyweb cross-appeals from the district court's finding that Ashbyweb infringed OAG's mark by using the phrase "THE TRAVEL PLANNER," standing alone. 756 F.Supp. 1393. The district court's judgment follows a remand from this court for reconsideration of whether OAG's mark qualifies for trademark protection. We have jurisdiction of the timely appeal and cross-appeal pursuant to 28 U.S.C. Sec. 1291.

FACTS

  1. OAG Travel Planner

    For more than sixty years, Official Airline Guides, Inc. has published travel directories containing listings of travel and hospitality services in the United States and abroad. OAG currently publishes and distributes three editions: a European Edition, a Pacific Asian Edition, and a North American Edition. The latter, entitled "OAG Travel Planner North American Edition," contains information about hotels, motels, ground transportation, and airline offices in various cities throughout the United States.

    The North American Edition, at issue here, is distributed almost exclusively in the United States; only one percent is distributed

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    in Europe and elsewhere. The quarterly guide is sold principally by subscription to travel agents, corporate travel coordinators and frequent flyers. Advertisers and subscribers commonly refer to the North American Edition as "OAG TRAVEL PLANNER."

    To obtain information for the guide, OAG mails listing forms directly to travel and hospitality establishments. The listing forms also solicit paid advertisements for the directory. Advertisers contribute nearly sixty-five percent of OAG's revenue, the balance coming from OAG's 70,000 subscribers.

    On May 31, 1966, OAG obtained a federal trademark registration for its mark "OAG TRAVEL PLANNER." The trademark examiner required it to disclaim as descriptive the words "Travel Planner." On September 1, 1987, OAG obtained a second trademark, but this time without disclaiming the words "Travel Planner." In support of OAG's second trademark application, OAG's Vice President of Sales and Marketing filed an affidavit claiming that the phrase "Travel Planner" had become distinctive as applied to OAG's guides as a result of OAG's "substantially exclusive and continuous use" in interstate commerce for more than five years. OAG's third federal trademark application, contested by Ashbyweb, is currently pending, and awaits the outcome of this action.

  2. USA Travel Planner

    Since 1983, Ashbyweb has sold, promoted, distributed, and solicited advertisements for a travel directory similar to OAG's travel guide. Ashbyweb's directory was distributed in Europe and the Middle East under the names "THE TRAVEL PLANNER USA," "USA TRAVEL PLANNER," and "THE TRAVEL PLANNER." Ashbyweb has known of OAG's directory for over twenty years. Ashbyweb's directory, however, unlike OAG's guide, was not distributed in the United States.

    Ashbyweb's first corporate sponsor was Trans World Airlines, which agreed to underwrite Ashbyweb's publication. TWA's name appeared in the title of the first edition, but only on the cover and spine of the next edition, which was called "THE TRAVEL PLANNER USA." TWA's stationery was used initially to solicit advertisements and listing information from hotels, motels, automobile rental agencies and other travel service organizations.

    Ashbyweb then obtained its listings and solicited advertisements, without TWA stationery, by sending forms to various travel-related establishments. These forms, with the heading "THE TRAVEL PLANNER," made no mention of either TWA or Churchfield publications, Ashbyweb's predecessor. In addition to targeting (like OAG) hotels, car rental agencies and airline offices, Ashbyweb sent forms (unlike OAG) to charter bus lines, rail lines, tourist attractions, RV rental agencies, and national parks.

    In contrast to OAG's guide, which is pitched to the American domestic traveler, Ashbyweb's directory was designed for the use of foreigners travelling to the United States. The listings are organized by state; OAG's guide is organized by city. Ashbyweb's guide lists Watts line or direct dial phone numbers for the establishments; OAG's directory contains a section of "800" numbers, dialable only in the United States. Ashbyweb's directory, unlike OAG's, contains information on travel documents and Bed and Breakfasts, European-style lodging.

    Ashbyweb sold its directory in bulk and not through individual subscriptions. Between 1984 and 1986, TWA distributed copies to travel agents in Europe to encourage agents to book their clients on TWA. Pan American Airlines did the same for the 1987-88 directory, the last directory published by Ashbyweb. Ashbyweb ceased publication pending resolution of this litigation.

  3. OAG versus Ashbyweb

    In 1987, advertisers mistakenly mailed six copies of Ashbyweb's listing forms to OAG. OAG requested Ashbyweb to cease and desist using the phrase "USA TRAVEL PLANNER." Ashbyweb did not comply.

    OAG then filed suit in the district court against Ashbyweb alleging four counts: 1) Federal Trademark Infringement in violation 15 U.S.C. Sec. 1114(1)(a); 2) False Description and False Designation of Origin in violation of 15 U.S.C. Sec. 1125(a); 3) Trademark Infringement

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    and Unfair Competition under Oregon Common Law; and 4) Disseminating Material Containing False Description and False Representation of Defendants' Business in violation of 15 U.S.C. Sec. 1125(a). Ashbyweb counterclaimed, alleging that OAG fraudulently procured the second trademark, in violation of 15 U.S.C. Sec. 1120, and intentionally interfered with Ashbyweb's business relations. Ashbyweb also raised two affirmative defenses: 1) laches; and 2) unclean hands in the allegedly fraudulent procurement of the second trademark.

    The district court issued a temporary restraining order enjoining Ashbyweb from using "THE TRAVEL PLANNER," "USA TRAVEL PLANNER," and "TRAVEL PLANNER USA" in the marketing, distribution and sales of its products. The court then denied OAG's motion for a preliminary injunction. OAG appealed from this decision to the Ninth Circuit.

    We affirmed the district court's denial of a preliminary injunction, but remanded for a determination whether the term "Travel Planner" has common law protection as a mark, and if so, whether OAG is entitled to permanent injunctive or other relief against Ashbyweb's use of the term "Travel Planner." Official Airline Guides, Inc. v. Goss, 856 F.2d 85, 88 (9th Cir.1988).

    Since our decision, OAG has registered its trademark "OAG TRAVEL PLANNER" without disclaiming the words "Travel Planner." The district court therefore found it unnecessary upon remand to determine whether the term "Travel Planner," standing alone, has common law protection as a mark.

    On September 14, 1990, over Ashbyweb's objection, the district court bifurcated OAG's claim for trademark infringement from Ashbyweb's counterclaim for intentional interference with business relations. The trademark infringement claims were tried first in the district court without a jury. The court found that Ashbyweb's use of the phrase "THE TRAVEL PLANNER" without the words "USA," "ASHBYWEB," or "CHURCHFIELD" infringed OAG's mark "OAG TRAVEL PLANNER." The court permanently enjoined Ashbyweb from using "THE TRAVEL PLANNER," standing alone, in its publications, listing forms, letterhead, advertising, or promotional materials. Ashbyweb was permitted, however, to continue using "THE TRAVEL PLANNER USA" and "USA TRAVEL PLANNER," phrases which the district court held do not infringe any OAG trademark.

    Ashbyweb's counterclaim for intentional interference with business relations was then tried to a jury, which returned a verdict for OAG. Ashbyweb's counterclaim for fraudulent procurement of trademark was dismissed on summary judgment as time barred. Both sides appeal.

    DISCUSSION

    I. Trademark Infringement

    The Lanham Act defines "trademark" as any combination of words or symbols used in commerce to identify and distinguish one's goods from...

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