Am. Ass'n For Justice A/k/a Ass'n Of Trial Lawyers Of Am. v. The Am. Trial Lawyers Ass'n A/k/a The Atla

• Decision Date: 18 March 2010
• Docket Number: Civil No. 07-4626 (JNE/JJG).
• Citation: 698 F.Supp.2d 1129
• Parties: AMERICAN ASSOCIATION FOR JUSTICE a/k/a Association of Trial Lawyers of America, Plaintiff,v.THE AMERICAN TRIAL LAWYERS ASSOCIATION a/k/a The ATLA, and J. Keith Givens, Defendants.
• Court: U.S. District Court — District of Minnesota

698 F.Supp.2d 1129

AMERICAN ASSOCIATION FOR JUSTICE a/k/a Association of Trial Lawyers of America, Plaintiff,v.THE AMERICAN TRIAL LAWYERS ASSOCIATION a/k/a The ATLA, and J. Keith Givens, Defendants.

Civil No. 07-4626 (JNE/JJG).

United States District Court,

D. Minnesota.

March 18, 2010.

COPYRIGHT MATERIAL OMITTED

Christopher K. Larus, Esq., and Kelly M. McLain, Esq., Robins Kaplan Miller & Ciresi LLP, for Plaintiff.

Angela J. Mason, Esq., and J. Keith Givens, Esq., Cochran, Cherry, Givens, Smith, Lane & Taylor PC, and Marshall H. Tanick, Esq., Mansfield Tanick & Cohen, PA, for Defendants.

ORDER

JOAN N. ERICKSEN, District Judge.

In July 2006, members of the Association of Trial Lawyers of America voted to change the name of the organization to the American Association for Justice (AAJ). The name change took effect in December 2006. In March 2007, J. Keith Givens (Keith Givens), a long-time AAJ member, reserved the corporate name The American Trial Lawyers Association, Inc. (Association). Articles of incorporation were filed and signed by his two college-aged sons less than a week later. The Association first sent solicitation letters to prospective members in June 2007. Additional solicitation letters followed in November 2007. AAJ filed this trademark infringement action soon thereafter. Before the Court are AAJ's Motion for Partial Summary Judgment on Defendants' Affirmative Defense of Abandonment and the Association's and Keith Givens's (collectively, Defendants) Motions for Summary Judgment. For the reasons discussed below, the Court grants AAJ's motion and denies the Association's and Keith Givens's motions.

I. BACKGROUND

A. American Association for Justice

AAJ is “the world's largest trial bar with members throughout the United States.” “Regular members” of AAJ must be “actively engaged in the practice of law in any field or phase of advocacy” and “for the most part, based on caseload and time, represent[ ] the plaintiff in civil litigation or represent[ ] the defendant in criminal litigation.” AAJ's stated mission is to:

Seek justice for all; preserve the constitutional right to trial by jury; prevent injury from occurring; champion the cause of those who deserve redress for injury to person or property; promote the public good through concerted efforts to secure safe products, a safe workplace, a clean environment, and quality health care; further the rule of law and the civil justice system, and protect the rights of the accused; inspire excellence in advocacy through training and education; encourage cooperation among members; advance the common law and the finest traditions of jurisprudence; uphold the honor and dignity of the legal profession and the highest standards of ethical conduct and integrity.

To further this mission, AAJ provides certain products and services, including AAJ memberships, continuing legal education (CLE) seminars and conferences, magazines, and legal publications. One such product is TRIAL magazine, “AAJ's monthly flagship magazine for 45 years [that] has a nationwide readership of civil plaintiff attorneys.” AAJ also engages in “public service initiatives” such as “lobbying and other communications with state and federal legislatures and ... the press.”

AAJ was formed in 1946 under the corporate name National Association of Compensation Attorneys.¹ After changing its name twice, AAJ became known as the American Trial Lawyers Association in 1964. In response to a trademark infringement action brought by the American College of Trial Lawyers, AAJ changed its name in 1973 to the Association of Trial Lawyers of America. Three years later, AAJ registered the mark “ATLA” with the United States Patent and Trademark Office (USPTO).

In 2005, to counteract the perceived derogation of the term “trial attorney,” AAJ's executive committee, headed by chief executive officer, Jon Haber, began to consider changing AAJ's corporate name to highlight the organization's mission rather than its membership. After submitting various options to consumer testing, the executive committee settled on the “American Association for Justice” as the proposed new name. In response to significant opposition from members, Haber, Ken Suggs (AAJ's president from July 2005 to July 2006), and others conducted a concerted lobbying effort to promote the name change, including drafting talking points, expanding a presentation, polling, checking for conflicts, contacting the state associations, presenting data nationwide, answering list serves, and talking individually to numerous members. The effort was successful. The executive committee first obtained the required approval from the Board of Governors in June 2006. At the annual convention the following month, seventy-nine percent of the voting members in attendance voted in favor of the name change.²

After AAJ's membership voted to change the organization's name, members and staff were instructed to continue using ATLA for identification purposes until the name change officially took effect. The logistics of transitioning to the new name required development of a new logo, slogan, and style guide, as well as an inventory of all of the ATLA publications and communications. By September 30, 2006, Haber estimated that the name change would occur in mid-December. Haber noted, however, that the change would be a “ ‘soft launch’ rather than ... a ‘hard launch.’ For example, due to printing deadlines, there will be a transition period during which certain publications and materials will continue to bear the ATLA name.” The name change officially occurred on December 11, 2006. A new website-www. justice. org-was launched on that date and AAJ formatted the old websites-www. atla. org and www. atlanet. org-to automatically redirect users to the new website for a minimum of six months. Although a “universal find-and-replace for ‘ATLA’ and ‘Association of Trial Lawyers of America’ ha[d] been performed on the [new website],” Haber asked staff to “help in catching any inconsistencies.” All internal documents were updated, including leave forms, fax cover sheets, stationery, and memo templates. New AAJ letterhead and business cards were made available, and the member services booth for AAJ's January 2007 annual conference was remodeled “to reflect [the] new name” and ensure “ATLA [would not] appear anywhere on [the] booth.” Haber indicated in a memorandum to all AAJ staff that “[b]y necessity, the names of our various entities and subsets will be changed.” Haber identified the following changes: “Friends of ATLA = Friends of Justice; ATLA Leaders Forum = AAJ Leaders Forum; ATLA PAC = TBD; ATLA Extras = Extras; ATLA Education = Education; ATLA Press = AAJ Press.”

Despite the official name change, AAJ continued to use the Association of Trial Lawyers of America or ATLA marks in the following contexts:

• AAJ's new website continuously displayed the language “Formerly the Association of Trial Lawyers of America.”

• Beginning as early as January 2007, AAJ identified itself in advertisements and seminar solicitations as “American Association for Justice Formerly the Association of Trial Lawyers of America.”

• Some AAJ staff members were using the “formerly” language in their signature blocks in e-mails as early as March 2007.

• On June 7, 2007, AAJ sent 51,645 solicitation letters to lapsed members. ³ The letters identified AAJ as “formerly the Association of Trial Lawyers of America (ATLA®).” In addition, the outside of the mailing envelope and the return envelope displayed circular seals. The seals consisted of two concentric circles with the ATLA mark displayed in front of the scales of justice inside the inner circle and the Association of Trial Lawyers of America inscribed in the space between the inner and outer circles.⁴

• AAJ continued to license its ATLA mark after December 2006, and at least one third-party licensee continuously used the mark.

• A book first published in 2007 titled “Negotiating and Settling Tort Cases” indicated on its spine, front cover, and inside title page that it was published by “ATLA Press” through Thomson West. Sales of the book from April 2007 until the end of March 2009 totaled $33,857.49.

• AAJ continued to sell books incorporating ATLA in the title throughout 2007, including “ATLA's Litigating Tort Cases,” “ATLA's Trial Notebook,” and “ATLA's Deposition Notebook.” These titles generated over $119,000 in revenue in 2007, including $14,000 in the first quarter.

• Since December 2006, the websites www. atla. org and www. atlanet. org have continuously directed users to the new website www. justice. org. Between October 1, 2008, and May 15, 2008, users were redirected from the web addresses incorporating the ATLA mark to the new website 1,496 times.

• A promotional video produced in 2006 was reproduced after the name change to refer to the American Association for Justice. The reproduced video, which was used to recruit new members until December 2008, displays both “ATLA” and the “American Association for Justice.” The video was aired at various seminars in February, March, April, and May 2007.

In a September 3, 2007, e-mail to all AAJ staff, Haber indicated that “we continue to use the phrase ‘Formerly the Association of Trial Lawyers of America’ in many places. We will continue to do that for some time as many of our members still know us by the old name as it will take them some time to get used to the new one.” Haber further noted that “when you use the old name, it's important to include the acronym ‘ATLA’ as well.” The following day, Haber sent another e-mail telling all staff members to use the “registered trademark symbol (circle R) after ‘ATLA.’ ”

B. The American Trial Lawyers Association

On January 29, 2007, Keith Givens sent an e-mail to Jerome Tew, an employee of Keith Givens's law firm, asking Tew to “reserve” the following domain names in Keith Givens's name: Americantriallawyerassociation.com; Americantriallawyersassoc.com;...