872 F.2d 1035 (D.C. Cir. 1989), 88-7107, Blinded Veterans Ass'n v. Blinded American Veterans Foundation

Docket Nº:88-7107.
Citation:872 F.2d 1035
Party Name:BLINDED VETERANS ASSOCIATION v. BLINDED AMERICAN VETERANS FOUNDATION, Appellant.
Case Date:April 11, 1989
Court:United States Courts of Appeals, Court of Appeals for the District of Columbia Circuit
 
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Page 1035

872 F.2d 1035 (D.C. Cir. 1989)

BLINDED VETERANS ASSOCIATION

v.

BLINDED AMERICAN VETERANS FOUNDATION, Appellant.

No. 88-7107.

United States Court of Appeals, District of Columbia Circuit.

April 11, 1989

As Amended April 21, 1989.

Argued Feb. 6, 1989.

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Appeal from the United States District Court for the District of Columbia (C.A. No. 86-1563).

Raphael V. Lupo, Washington, D.C., with whom Donna M. Tanguay was on the brief, for appellant.

Irving R.M. Panzer, Washington, D.C., for appellee.

Before RUTH BADER GINSBURG, SILBERMAN and BUCKLEY, Circuit Judges.

Opinion for the Court filed by Circuit Judge RUTH BADER GINSBURG.

RUTH BADER GINSBURG, Circuit Judge:

The Blinded Veterans Association (BVA or the Association) sought to enjoin the Blinded American Veterans Foundation (BAVF or the Foundation) from using the words "blinded" and "veterans" in its name and from using the initials "BAV" as an acronym. BVA contended that BAVF's name was confusingly similar to BVA's and would deceive the public into thinking BAVF was BVA. The district court agreed, concluding that BAVF had infringed BVA's trademark. That court therefore enjoined BAVF from using the name "Blinded American Veterans Foundation," the initials "BAV" or "BAVF," and "any name in which the words 'veterans,' and 'blind' or 'blinded,' are employed as noun and modifying adjective." Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 680 F.Supp. 442, 446 (D.D.C.1988). We hold that BVA's name is not a protectable trademark because the term "blinded veterans" is generic. BVA, however, may be entitled to protection against BAVF's passing itself off as BVA. We therefore vacate the judgment of the district court and remand for consideration of BVA's "passing off" claim.

I.

Appellee Blinded Veterans Association is a nonprofit organization founded in 1945 by a group of blinded World War II veterans. BVA was incorporated in New York in 1947 and was chartered by an act of Congress in 1958. Id. at 443. The Association has used the initials "BVA" as its logo since 1945. Id. at 445. BVA provides services for veterans who originally could see but have lost their sight, even if their blindness is not service-connected. Id. at 443. The Association's services and activities for its constituency include arranging for rehabilitation and job training and placement, advising on claims for government benefits, testifying before Congress, joining litigation likely to benefit blinded veterans, sponsoring events to publicize the plight of blinded veterans, and publishing a newsletter, the "BVA Bulletin," containing information of interest to blinded veterans. Id. at 444.

BVA has approximately 6,500 members; it employs sixteen persons on its headquarters

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staff in Washington, D.C. and eight field representatives outside the nation's capital. Id. The Association's annual operating budget is just under $1.5 million. Seventy percent of BVA's income represents contributions derived from direct mail solicitations; to gain these contributions, BVA mails more than four million solicitations per year. Id. The remainder of BVA's income comes from membership dues and contracts with the Department of Labor and the Veterans Administration to provide rehabilitation and employment services for blinded veterans. Id. at 443-44.

Appellant BAVF is a nonprofit District of Columbia corporation founded in September 1985 by three former officials of BVA. 1 Aside from the three founders, who also serve as BAVF's officers and directors (and who are employed full-time elsewhere), BAVF has no "members" or paid employees. Id. at 444. The Foundation maintains no office of its own; it operates from "free 'desk space' in a local consulting firm's office." Id. At the time of trial, the Foundation had a balance of approximately $10,000 in a bank, "the name of which [BAVF's] president could not then remember." Id.

BAVF's charter defines the Foundation's purpose broadly as assisting veterans with "sensory disabilities such as visual impairment, hearing impairment, speech impediments, etc." Id. at 443. Nevertheless, the Foundation has so far directed its efforts exclusively toward sightless former servicemembers. Id. at 444. BAVF has held Flag Day celebrations; it has presented awards to journalists and members of Congress for demonstrating an interest in handicapped veterans' issues; and it commissioned a recorded reading of the Constitution, which it mailed postage free to 17,500 blinded veterans nationwide. Id. In addition to these principal activities, BAVF found employment for three blinded veterans, and donated some "trial lenses" to the Veterans Administration. Id. BAVF plans to develop an inexpensive "folding cane" and to set up an outreach program for veterans blind in one eye and suffering from diabetes. Id. BAVF also "aspires someday to build a rehabilitation center." Id.

According to BAVF's president, it never occurred to the three BAVF founders that the name "Blinded American Veterans Foundation" resembles the name of the founders' former employer, "Blinded Veterans Association." See Joint Appendix (J.A.) at 389. 2 There can be no doubt, however, that the names are similar. BAVF's original logo--"BAV" in large type, followed by "foundation" in small type below--also bore a marked resemblance to the Association's "BVA." See 680 F.Supp. at 445 n. 1 (noting, inter alia, that BAVF has "since abandoned" "BAV" in large type as its logo).

In 1986, BAVF applied to 552 local campaign organizations involved in the Combined Federal Campaign (CFC). Those organizations listed BAVF, alphabetically ahead of BVA, as a prospective recipient of CFC funds. Id. at 444. Despite its lack of significant accomplishments at that point, BAVF did rather well in its initial fundraising foray: the Foundation's 1986 income totalled between $35,000 and $40,000, half from CFC pledges and half from corporate contributions. Id.

On June 5, 1986, BVA filed an action in the district court under section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), 3

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seeking to enjoin the Foundation "from using the words 'Blinded' and 'Veterans' in its name, and from using the initials 'BAV' to describe itself." Complaint for Injunction, Blinded Veterans Ass'n v. Blinded Am. Veterans' [sic] Found., C.A. No. 86-1563 at 8 (D.D.C. June 5, 1986). The complaint sought no damages. BVA alleged that BAVF's "deliberate choice of a too-similar name ... constitutes unfair competition, false representation and description, false advertising, palming off, and deception of the public, and injures the good will of [BVA]." Id. at 1.

On March 8, 1988, the district court decided that BAVF had infringed BVA's trademark. The court therefore enjoined BAVF from using the name "Blinded American Veterans Foundation," the initials "BAV" or "BAVF," and any name in which "veterans" and "blind" or "blinded" appear as noun and modifying adjective. 680 F.Supp. at 446.

The district court ruled first that the term "blinded veterans" is not a "generic term ... incapable of acquiring trademark significance." Rather, the term is "at the least, a 'descriptive term' in trademark parlance, which is entitled to protection against infringement if it has, over time, acquired in the mind of the relevant public a 'secondary meaning.' " Id. at 445. The court next concluded that "Blinded Veterans Association" has acquired a secondary meaning. As evidence, the court relied on the effort and expense that have gone into BVA's continuous promotion of itself "as the preeminent private voluntary proponent of the interests of blinded former U.S. service personnel" and of its services for blinded veterans. Id. The court added that its conclusion concerning secondary meaning was "reinforced ... by both BAVF's startling success in its maiden fundraising venture with no history of significant accomplishment, and by the tenacity with which it seeks to preserve its right to use the name it has chosen for itself." Id.

Finally, the district court found it likely that potential contributors would confuse BVA and BAVF. BVA's name is "easily misapprehended by intending benefactors even when no alleged imposter is on the scene," the court observed, citing mistaken variations of BVA's name on contributions and bequests clearly intended for the Association. Id. at 446 & n. 3. "When [BAVF's] name is offered as an alternative," the court reasoned, "the potential for confusion approaches totality." Id. at 446. The court also credited the results of a survey conducted by a University of Maryland professor of English and linguistics. That survey presented three lists of organizational names, one with only BVA's and BAVF's names and two with other names as well, to groups of between thirty and fifty-eight college students. The results of these tests "demonstrated that a substantial majority of the subjects either did not perceive a distinction between BVA and BAVF, or so garbled their names as to create a genuine doubt as to which they had in mind." Id. The court acknowledged that the tests were not a "market survey." Id. It doubted whether such a survey would be "practicable" in this case, however; and it concluded that, in any event, a market survey "would add little to the commonsense [sic] inference (which the test results confirm) that ordinary contributors believe one organization soliciting for sightless veterans is as good as another, because the ultimate beneficiaries are ostensibly the same." Id.

BAVF appealed, arguing that "blinded veterans" is a generic term incapable of acquiring trademark protection even if the term has acquired secondary meaning. Alternately, if secondary meaning is relevant, the Foundation faults the district court for not requiring survey evidence and for...

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