A.I.G. Agency, Inc. v. Am. Int'l Grp., Inc.
| Citation | 33 F.4th 1031 |
| Decision Date | 13 May 2022 |
| Docket Number | 21-1948 |
| Parties | A.I.G. AGENCY, INC. Plaintiff - Appellant v. AMERICAN INTERNATIONAL GROUP, INC., doing business as AIG Defendant - Appellee |
| Court | U.S. Court of Appeals — Eighth Circuit |
Matthew Braunel, David B. Jinkins, Thompson & Coburn, Saint Louis, MO, Anthony R. Friedman, Anthony G. Simon, Paul J. Tahan, Simon Law Firm, Saint Louis, MO, for Plaintiff-Appellant.
Jessica Lynn Falk, Weil & Gotshal, New York, NY, Michael Andrew Kahn, I, Capes & Sokol, Saint Louis, MO, Zachary Tripp, Weil & Gotshal, Washington, DC, for Defendant-Appellee.
Before LOKEN, GRUENDER, and GRASZ, Circuit Judges.
A.I.G. Agency, Inc. ("Agency") sued American International Group, Inc. ("International") for trademark infringement over International's use of the "AIG" trademark. The district court granted summary judgment for International, holding Agency's claims were barred by the doctrine of laches. We reverse and remand to the district court for further proceedings.
This case is about two insurance-related companies that both claim the name "AIG." Agency is a family-owned insurance broker in Missouri. Agency allegedly began calling itself "AIG" around 1958. International is an insurance company incorporated in 1967. International first used the "AIG" mark sometime between 1968 and 1970. International obtained a federal trademark registration for "AIG" in 1981, which is still active.
In 1995, International sent a letter through its attorney to Agency notifying Agency of its trademark registration and demanding Agency stop using "AIG" because it was likely to confuse consumers. Agency's attorney sent a response letter claiming Agency had a right to use the name in Missouri and Illinois because it used the name in those states before International registered its trademark. Agency also indicated it was open to selling its rights to International.
In 2008, International's attorney sent another letter to Agency demanding it stop using "AIG." Agency responded with a phone call asserting its rights to use the name in Missouri and Illinois. International's attorney then sent Agency another letter saying it did not object to Agency's use of "AIG" in St. Charles and St. Louis counties in Missouri but threatened legal action if Agency expanded its use beyond those counties.
In 2009, International renamed its property and casualty business "Chartis." The rebranding did not stick, and in 2012, International returned to using "AIG" for its property and casualty business. Agency claims that also around 2012, International changed its marketing strategy and began aggressively selling to consumers through direct advertisements. Agency says that over the course of the next few years, it began experiencing significant incidences of consumers confusing Agency with International.
Agency sued International in 2017 over International's use of "AIG." Relevant to this appeal, Agency alleged common-law trademark infringement and unfair competition along with violation of the Lanham Act, 15 U.S.C. § 1125. International answered and asserted multiple affirmative defenses, including the doctrine of laches. International also asserted counterclaims of trademark infringement, unfair competition, and trademark dilution under the Lanham Act. International moved for summary judgment, and Agency moved for partial summary judgment. International argued summary judgment was proper for multiple reasons, including because the doctrine of laches barred Agency's claims. Agency argued that as a matter of law, International's use of "AIG" in Missouri and Illinois created a likelihood of confusion for consumers.
The district court agreed with International that Agency's claims were barred by the doctrine of laches, so it granted summary judgment in favor of International and dismissed Agency's claims. Because none of Agency's claims survived, the district court denied Agency's motion for partial summary judgment as moot. After the district court's ruling, International moved to voluntarily dismiss its counterclaims against Agency without prejudice, which the district court granted.
On appeal, Agency argues the district court erred in granting summary judgment because it weighed disputed facts in International's favor. So, Agency asks us to reverse the district court's grant of summary judgment to International and its denial of Agency's motion for partial summary judgment. Agency also asks us to direct the district court to enter partial summary judgment for it on the issue of current likelihood of confusion. Finally, Agency argues the district court should have dismissed International's counterclaims with prejudice for the reason that International's counterclaims are barred because International unduly delayed in bringing such claims and has acquiesced to Agency's use of "AIG."
We typically review a grant of summary judgment de novo, Roederer v. J. Garcia Carrion, S.A. , 569 F.3d 855, 858 (8th Cir. 2009), affirming only where "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). But we review the district court's application of laches for abuse of discretion. Roederer , 569 F.3d at 858. Harmonizing these two standards, we have said, "Although the defense of laches lies within the district court's discretion, this does not change the fact that summary judgment requires ‘evidence of the non-movant ... to be believed, and all justifiable inferences ... to be drawn in [its] favor.’ " Id. at 860 n.3 (alterations in original) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ).
Thus, we use a two-pronged standard to review summary judgment based upon laches: (1) we determine whether there are any genuine disputes of material fact de novo, and (2) we review the district court's application of the laches defense to the facts for abuse of discretion. See id. ; accord Ray Commc'ns, Inc. v. Clear Channel Commc'ns, Inc ., 673 F.3d 294, 299 (4th Cir. 2012) ; Jarrow Formulas, Inc. v. Nutrition Now, Inc. , 304 F.3d 829, 833–34 (9th Cir. 2002) ; Hot Wax, Inc. v. Turtle Wax, Inc. , 191 F.3d 813, 819 (7th Cir. 1999).
Laches is an equitable affirmative defense which bars a trademark claim when the "claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim is ultimately asserted." Roederer , 569 F.3d at 858–59 (quoting Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc. , 182 F.3d 598, 602 (8th Cir. 1999) ). A party raising a laches defense bears the burden of establishing: "(1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted." Id. (quoting Kason Indus., Inc. v. Component Hardware Grp., Inc. , 120 F.3d 1199, 1203 (11th Cir. 1997) ). In deciding whether there was inexcusable delay, one factor we consider is the doctrine of progressive encroachment. Id. at 859.
"[U]nder the doctrine of progressive encroachment, the time of delay is to be measured not from when the [claimant] first learned of the potentially infringing mark, but from when such infringement became actionable and provable." Id. Thus, "the progressive encroachment doctrine requires a[ ] ... finding of when the infringement became actionable to determine the period of delay[.]" Id. at 859–60. Although a district court is not required "to locate the precise moment a trademark claim became actionable before proceeding with its laches analysis, more is required than merely citing marginal or irrelevant factors without reference to any of the principles governing trademark infringement." Id. at 860. The doctrine saves trademark holders from being "hoisted upon the horns of an inequitable dilemma—sue immediately and lose because the alleged infringer is insufficiently competitive to create a likelihood of confusion, or wait and be dismissed for unreasonable delay." Id. at 859.
Agency argues it did not have an actionable and provable infringement claim until late 2012, at the earliest, when International allegedly changed its marketing strategy. A trademark infringement claim becomes actionable and provable when the infringer's use of the mark becomes likely to confuse customers as to the source or sponsorship of the goods or services. See Davis v. Walt Disney Co ., 430 F.3d 901, 903 (8th Cir. 2005) (citing 15 U.S.C. § 1125(a)(1) ); see also Minn. Min. & Mfg. Co. v. Rauh Rubber, Inc. , 130 F.3d 1305, 1308 (8th Cir. 1997) () (quoting Polymer Tech. Corp. v. Mimran , 37 F.3d 74, 80 (2d Cir. 1994) ). Likelihood of confusion is an issue of fact and a "highly fact-intensive inquiry." Select Comfort Corp. v. Baxter , 996 F.3d 925, 934 (8th Cir. 2021), cert. denied sub nom. Dires, LLC v. Select Comfort Corp ., ––– U.S. ––––, 142 S. Ct. 561, 211 L.Ed.2d 351 (2021).
We consider six factors in evaluating likelihood of confusion:
1) the strength of the plaintiff's mark; 2) the similarity between the plaintiff's and defendant's marks; 3) the degree to which the allegedly infringing product competes with the plaintiff's goods; 4) the alleged infringer's intent to confuse the public; 5) the degree of care reasonably expected of potential customers[;] and 6) evidence of actual confusion.
Roederer, 569 F.3d at 860 (quoting Davis , 430 F.3d at 903 ). "[A]lthough no one factor is determinative, each must be analyzed." Insty*Bit, Inc. v. Poly-Tech Indus., Inc. , 95 F.3d 663, 670 (8th Cir. 1996). Because International bears the burden of showing inexcusable delay, it bears the burden of showing there was a likelihood of confusion, under the six-factor analysis, at some past time from which Agency...
To continue reading
Request your trial