Alliance for Good Gov't v. Coal. for Better Gov't, 17-30859

• Decision Date: 22 August 2018
• Docket Number: No. 17-30859,17-30859
• Citation: 901 F.3d 498
• Parties: ALLIANCE FOR GOOD GOVERNMENT, Plaintiff-Appellee v. COALITION FOR BETTER GOVERNMENT, Defendant-Appellant
• Court: U.S. Court of Appeals — Fifth Circuit

901 F.3d 498

ALLIANCE FOR GOOD GOVERNMENT, Plaintiff-Appellee

v.COALITION FOR BETTER GOVERNMENT, Defendant-Appellant

No. 17-30859

United States Court of Appeals, Fifth Circuit.

FILED August 22, 2018

Richard T. Sahuc, Gregory D. Latham, Intellectual Property Consulting, L.L.C., New Orleans, LA, for Plaintiff-Appellee.

Darleen M. Jacobs, Esq., Hunter Peter Harris, IV, Jacobs, Sarrat, Lovelace & Harris, New Orleans, LA, for Defendant-Appellant.

Before DAVIS, HAYNES, and DUNCAN, Circuit Judges.

STUART KYLE DUNCAN, Circuit Judge:

This federal trademark infringement action involves a dispute between two civic organizations over their logos:

The older organization, Alliance for Good Government, developed its logo in the late 1960s and has used it for fifty years in advertisements and sample ballots to promote political candidates in New Orleans and throughout Louisiana. The younger organization, Coalition for Better Government, developed its logo more recently (in the early 1980s or 1990s) and has also used it in sample ballots to promote political candidates in New Orleans. While the groups have locked talons before, the present appeal arises out of Alliance's 2017 lawsuit seeking to enjoin Coalition's use of its logo for federal trademark infringement under the Lanham Act. The district court granted Alliance summary judgment, finding that Coalition's logo infringed Alliance's marks as a matter of law, and enjoined Coalition from using both its name and logo in political advertisements. Coalition appeals that ruling.

On appeal, Coalition raises broad threshold questions concerning the applicability of the Lanham Act to what it characterizes as its political, noncommercial speech. We decline to address those questions, because Coalition failed to properly raise them below and the district court never reached them. Coalition also attacks the summary judgment, claiming that fact issues remain as to whether Alliance's marks are valid and whether Coalition's logo would likely create confusion with Alliance's. On the latter point, Coalition's most curious argument—urged below and renewed on appeal—is that the logos are different because its logo features a hawk while Alliance's features an eagle . We conclude the district court did not err in deciding the birds are identical.

Reviewing the summary judgment ruling de novo , we conclude that the evidence establishes without dispute that Alliance's logo is a valid composite mark and that the use of Coalition's logo infringes Alliance's composite mark as a matter of law. We modify the district court's injunction in one respect, however. By its terms, the injunction restrains Coalition from using its name as well as its logo. We find that aspect of the injunction overbroad and therefore modify it to restrain Coalition's use of its logo only.

Accordingly, we AFFIRM the district court's summary judgment ruling, but MODIFY the injunction to restrain only the use of Coalition's logo.

I.

A.

Alliance for Good Government ("Alliance") is a non-profit civic organization formed in 1967 to promote "honest and open government." Alliance's founding chapter is in Orleans Parish, but it operates both in New Orleans and throughout Louisiana. The organization hosts political forums, endorses candidates, and participates in campaigns through advertising. It also distributes and publishes sample ballots featuring endorsed candidates.

Alliance ballots dating back to 1969 feature the same logo it continues to use today—a design with the organization's name in blue type on a rectangular white background arranged around a stylized bird. Alliance considers its bird to be an eagle. In 2013, Alliance registered its service marks¹ with the United States Patent and Trademark Office ("PTO"): the word mark "Alliance for Good Government," and the composite mark consisting of the entire logo.²

Coalition for Better Government ("Coalition") is a non-profit civic organization formed in New Orleans in 1982 to endorse political candidates. Coalition operates mainly in New Orleans and promotes preferred candidates by advertising sample ballots in New Orleans newspapers. Coalition and Alliance sometimes endorse the same, or opposing, candidates: candidates endorsed by each have run in the same election at least twice.

Coalition also has a logo, which it uses in sample ballots dating back to at least 1992 (possibly the early 1980s). Coalition's logo features its name in white type on a rectangular blue background arranged around a stylized bird. Coalition's bird appears identical to Alliance's, but Coalition believes the birds are different types: Coalition considers its bird to be a hawk, not an eagle.³

Because pictures are worth a thousand words, here are the logos again:

B.

Alliance first sued Coalition for trademark infringement in 2008 in Louisiana state court. After skirmishing over venue, Alliance moved to dismiss its suit when it believed Coalition had stopped activity and ceased use of the Coalition logo. But in 2016 Coalition resumed using its logo to endorse political candidates. Indeed, in the primary elections for Louisiana district judges on March 25, 2017, Alliance and Coalition endorsed opposing candidates. That same month Coalition filed two applications with the PTO to register its name and logo, which Alliance opposed.⁴

In April 2017, Alliance sued Coalition in federal court claiming federal trademark infringement under 15 U.S.C. § 1114, as well as various other federal and state trademark and unfair trade practice claims. Coalition counterclaimed for, inter alia , fraudulent trademark procurement under 15 U.S.C. § 1120. In August 2017 Coalition moved for summary judgment arguing Alliance's suit was barred by laches, and that same month Alliance moved for partial summary judgment solely on federal trademark infringement. The district court held a hearing on the cross-motions. Ruling from the bench, the court denied Coalition's motion for summary judgment on laches and granted Alliance's motion for partial summary judgment on federal trademark infringement. Alliance voluntarily dismissed its remaining claims. Subsequently, the district court issued an order permanently enjoining Coalition from using both its name and logo. Coalition timely appealed the district court's trademark infringement ruling and injunction.⁵

II.

We review a grant of summary judgment de novo , applying the same standard as the district court. Smith v. Reg'l Transit Auth. , 827 F.3d 412, 417 (5th Cir. 2016). Summary judgment is proper where the pleadings and record materials show no genuine dispute as to any material fact, entitling the movant to judgment as a matter of law. FED. R. CIV. P. 56(a). If the moving party initially shows the non-movant's case lacks support, "the non-movant must come forward with 'specific facts' showing a genuine factual issue for trial."

TIG Ins. Co. v. Sedgwick James , 276 F.3d 754, 759 (5th Cir. 2002). We must view the evidence in the light most favorable to the non-moving party, drawing all justifiable inferences in the non-movant's favor. Envtl. Conservation Org. v. City of Dallas , 529 F.3d 519, 524 (5th Cir. 2008).

III.

To prevail on a claim of federal trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq. , a plaintiff must show (1) ownership of a legally protectable mark and (2) a likelihood of confusion created by an infringing mark. Nola Spice Designs, LLC v. Haydel Enters., Inc. , 783 F.3d 527, 536 (5th Cir. 2015); Am. Rice, Inc. v. Producers Rice Mill, Inc. , 518 F.3d 321, 329 (5th Cir. 2008).⁶ On appeal, Coalition first argues that the Lanham Act cannot apply to its marks because Coalition engages only in "political speech" and does not engage in "commerce or the sale of goods." Coalition failed to raise these arguments below, however, and we decline to address them. Second, Coalition attacks the district court's summary judgment grant, arguing that the court erred in ruling that Alliance had a valid mark and that Alliance proved Coalition's marks created a likelihood of confusion. We affirm the district court's ruling and injunction as to Coalition's logo but modify the injunction as to Coalition's name.

A.

As a threshold matter, Coalition argues that the Lanham Act cannot apply to its marks because Coalition engages only in "political speech" and is a non-profit entity not "engaged in commerce or the sale of goods." Coalition failed to properly raise these arguments in the district court. To preserve either issue for appeal, Coalition had to " 'press and not merely intimate the argument during the proceedings before the district court ... to such a degree that the district court ha[d] an opportunity to rule on it.' " Keelan v. Majesco Software, Inc. , 407 F.3d 332, 340 (5th Cir. 2005) (quoting N.Y. Life Ins. Co. v. Brown , 84 F.3d 137, 141 n.4 (5th Cir. 1996) ) (brackets added). Coalition did not do so and we therefore decline to reach the arguments. See, e.g., Reyes v. Manor Indep. Sch. Dist. , 850 F.3d 251 (5th Cir. 2017) ("We do not consider issues brought for the first time on appeal.").

During summary judgment proceedings, Coalition (1) raised the defense of laches, (2) urged the invalidity of Alliance's marks due to fraud and lack of distinctiveness, and (3) argued that fact issues precluded summary judgment on likelihood of confusion. Nowhere in those proceedings did Coalition brief or articulate—much less "press"—the argument that its political or non-profit nature insulates it from Alliance's trademark infringement claims. Because Coalition said nothing about those issues, the district court's ruling understandably did not address them. " 'If a party fails to assert a legal reason why summary judgment should not be granted, that ground is waived and cannot be considered or raised on appeal.' " Keelan , 407 F.3d at 339-40 (quoting Keenan v. Tejeda , 290 F.3d 252, 262 (5th Cir. 2002) ).

To be sure, Coalition's answer to Alliance's complaint raised—among thirteen affirmative...