American Farm Bureau Fed. v. ALA. FARMERS FED.
| Citation | 935 F. Supp. 1533 |
| Decision Date | 22 August 1996 |
| Docket Number | Civil Action No. 94-A-1408-N. |
| Parties | AMERICAN FARM BUREAU FEDERATION, Plaintiff, v. ALABAMA FARMERS FEDERATION, Elect-The Political Action Committee of the Alabama Farmers Federation, Alfa Life Insurance Corp., Alfa Mutual Insurance Co., Alfa Mutual Fire Insurance Co., Alfa Mutual General Insurance Co., Alfa Insurance Corp., and Alfa General Insurance Corp., Defendants. |
| Court | U.S. District Court — Middle District of Alabama |
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Joseph C. Espy, III, Melton, Espy, Williams & Hayes, P.C., Montgomery, AL, Richard A. Flynt, Alfred N. Goodman, Michael Thomas Murphy, Roylance, Abrams, Berdo & Goodman, Washington, DC, Richard J. Favretto, Marc Gary, Mayer, Brown & Platt, Washington, DC, for American Farm Bureau Federation.
Robert A. Huffaker, Rushton, Stakely, Johnston & Garrett, Montgomery, AL, Donald A. Kaul, Brownstein & Zeidman, P.C., Washington, DC, for Alabama Farmers Federation, Alfa Life Insurance Corporation, Alfa Mutual Insurance Company, Alfa Mutual Fire Insurance Company, Alfa Mutual General Insurance Company, Alfa Insurance Corporation, Alfa General Insurance Corporation, Elect, the Political Action Committee of the Alabama Farmers Federation.
I. INTRODUCTION
The Plaintiff, American Farm Bureau Federation ("American"), filed this suit on October 31, 1994, against the Alabama Farmers Federation ("AFF"); ELECT, AFF's political action committee; and AFF's insurance affiliates (collectively referred to as the "Alfa Companies"): Alfa Life Insurance Corporation, Alfa Mutual Insurance Company, Alfa Mutual Fire Insurance Company, Alfa Mutual General Insurance Company, Alfa Insurance Corporation, and Alfa General Insurance Corporation. (All of these defendants will be called "Defendants.") American claims that the Defendants made unauthorized use of American's federally registered mark, FARM BUREAU, in violation of a previous settlement agreement between the parties as well as federal and state trademark infringement and unfair competition laws.
The court has jurisdiction by virtue of 28 U.S.C. § 1332 and 28 U.S.C. § 1367 since there is complete diversity of citizenship between the parties and the amount in controversy exceeds $50,000.00, exclusive of interest and costs; and 28 U.S.C. §§ 1331, 1332, 1338(a) and (b), and 15 U.S.C. § 1121 for infringement of a federally registered service mark and for unfair competition.
On November 27, 1995, this court conducted a bench trial on the merits of the case. After consideration of the testimony of the witnesses, the exhibits, and the briefs of the parties, the court makes the following findings of fact and conclusions of law:
II. FINDINGS OF FACT
American is a nationwide organization representing the economic, social, and educational interests of farmers and ranchers in the United States. From its headquarters in Park Ridge, Illinois, and its legislative advocacy office in Washington, D.C., American represents over 4.5 million member families in all fifty states and Puerto Rico. American promotes the development of agriculture and serves the farm community through public policy advocacy, service to member programs, and numerous other activities.
American provides these services to individual members through state member organizations which, in turn, are comprised of county member organizations. In return, each state member organization pays to American an annual membership fee calculated on a per member basis. Historically, this fee has been an annual $3.50 per member.
American is the undisputed owner of the FARM BUREAU, FARM BUREAU INSURANCE, and AMERICAN FARM BUREAU FEDERATION marks. From its inception in 1919, American has continuously and extensively used the designations FARM BUREAU and AMERICAN FARM BUREAU FEDERATION as American's distinctive marks to identify the organization, its activities, and its services. American registered these marks with the United States Patent and Trademark Office, and these registrations are valid, subsisting, and incontestable under Sections 15 and 33(b) of the Trademark Act of 1946, 15 U.S.C. §§ 1065 and 1115(b).1 American, its state members and their affiliated companies give notice to the public of American's ownership of the mark by using the registration symbol (®) and by other means.
American licenses its state member organizations to use the FARM BUREAU mark. Like American, the state member organizations and their affiliated companies have used and heavily promoted the FARM BUREAU mark since the early 1920's. Virtually all of them incorporate the FARM BUREAU mark in their names, calling themselves the "Georgia Farm Bureau Federation," the "Mississippi Farm Bureau Federation," and so forth.
American and its state Farm Bureau organizations use the FARM BUREAU mark and its variations and abbreviations (such as "FARM BUREAU INSURANCE," "FB," and "AFBF") in numerous ways: in newsletters, brochures, computer services, and magazines; in connection with insurance services; on stationary; in position papers and contacts with government representatives; on building signs; on television and radio; in telephone directories and directory assistance, etc. The more than fifty affiliated insurance companies providing insurance to American's farmer and non-farmer members typically identify themselves through a name that includes the term "Farm Bureau Insurance." As a result of this extensive use, the FARM BUREAU mark has come to identify American and its sponsored state and county organizations along with the services they provide.
Alabama Farmers Federation is the successor, by change of name, to American's original Alabama member organization known as the Alabama Farm Bureau Federation. Originally chartered in Alabama in 1921, what is now AFF operated as the "Farm Bureau" and extensively promoted the FARM BUREAU mark in Alabama until it withdrew its affiliation with American in 1981. AFF has county affiliates in each of the sixty-seven counties of this state with a total membership of approximately 384,000 people, consisting of roughly 104,000 active members and 280,000 associate members. (Associate members do not derive income from farm-related activities and join AFF primarily to obtain the insurance benefits offered exclusively to AFF members.)
The insurance companies now known as the Alfa Companies were organized in the mid-1940's and 1950's and the decades that followed to provide insurance to Alabama Farm Bureau members. Through overlapping officers and directors, the Alfa Companies and AFF maintain a close relationship and affiliation and are all related companies. For example, the companies are headquartered in the same building, which they jointly own, where they maintain common departments that function for their mutual benefit: the office of General Counsel represents the legal interests of each of the Alfa Companies; the Alfa Companies share a common marketing department and also use a common public relations department; and Creative Consultants, a wholly owned subsidiary of AFF, provides in-house advertising and promotional services to the Alfa Companies and AFF.
AFF, unlike American, has a political action committee, ELECT, that makes political contributions to federal and state candidates throughout the United States. Formerly known as "ELECT-The Political Action Committee of the Alabama Farm Bureau Federation," ELECT changed its name and its bylaws in 1987 to correctly reflect its affiliation with AFF.
In 1981 Alabama Farm Bureau Federation severed its ties with American following a lengthy dispute over the sale of insurance outside the state of Alabama. AFF and its insurance affiliates continued to use the FARM BUREAU mark after ending their affiliation with American, eventually causing American in 1983 to file suit in this court against AFF for trademark infringement. AFF's two insurance affiliates, Alabama Farm Bureau Mutual Casualty Insurance Company, Inc. (now Alfa Mutual Insurance Company) and Alabama Farm Bureau Mutual Insurance Service, Inc. (now Alfa Mutual Fire Insurance Company), intervened. On the eve of trial, following two years of litigation in this court, the parties agreed to a settlement. (AFF, Alfa Mutual Insurance Company, and Alfa Mutual Fire Insurance Company will be referred to collectively as the "Contracting Defendants.")
The parties executed the Settlement Agreement on March 20, 1986. It provided that, if AFF (identified in the Settlement Agreement by its former name, "Alabama Farm Bureau Federation") did not reaffiliate with American by the end of 1986, AFF, its two insurance affiliates (Pl.'s Ex. 1, ¶ 6.)
The Settlement Agreement further provided that American was free to organize a new affiliate in Alabama after 1986, but that the name of that...
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