SunAmerica Corp. v. Sun Life Assur. Co. of Canada

• Decision Date: 24 August 1994
• Docket Number: Civ. A. No. 1:89-CV-1315-JTC.
• Citation: 890 F. Supp. 1559
• Parties: SunAMERICA CORPORATION (formerly Sun Life Group of America, Inc.), a Delaware Corporation, and Sun Life Insurance Company of America, a Maryland Corporation, Plaintiffs, v. SUN LIFE ASSURANCE COMPANY OF CANADA, a Canadian Corporation, and Sun Life Assurance Company of Canada (U.S.), a Delaware Corporation, Defendants.
• Court: U.S. District Court — Northern District of Georgia

890 F. Supp. 1559

SunAMERICA CORPORATION (formerly Sun Life Group of America, Inc.), a Delaware Corporation, and Sun Life Insurance Company of America, a Maryland Corporation, Plaintiffs, v. SUN LIFE ASSURANCE COMPANY OF CANADA, a Canadian Corporation, and Sun Life Assurance Company of Canada (U.S.), a Delaware Corporation, Defendants.

Civ. A. No. 1:89-CV-1315-JTC.

United States District Court, N.D. Georgia, Atlanta Division.

August 24, 1994.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Miles J. Alexander, Jerre B. Swann, Virginia S. Taylor, Matthew John Mitten, Dean Wall Russell, Kilpatrick & Cody, Atlanta, GA, Richard C. Browne, Bishop Cook Purcell & Reynolds, Washington, DC, Susan L. Harris, Broad, Inc., Los Angeles, CA, for SunAmerica Corp.

Martin J. Elgison, Oscar N. Persons, Randall Lee Allen, James Jay Wolfson, Reta Gail Jordan, Alston & Bird, Atlanta, GA, Bingham B. Leverich, Steven Semeraro, Judith Sapp, Kathleen T. Gallagher-Duff, Covington & Burling, Washington, DC, David C. Hilliard, Joseph N. Welch, Brett August, Pattishall McAuliffe Newbury, et al., Chicago, IL, for defendants Sun Life Assur. Co. of Canada.

ORDER OF THE COURT

CAMP, District Judge.

This trademark action came before the Court for a non-jury trial during November and December, 1993. The trial record contains well over a thousand pages of live and deposition testimony, the controversial results of a joint survey, and many volumes of exhibits documenting the evolution of this conflict since 1916. Having carefully considered the evidence presented, the arguments of counsel, and the relevant law governing the parties' claims, the Court makes the following findings of fact and conclusions of law.

                                  TABLE OF CONTENTS
                FINDINGS OF FACT
                I.    Background                                         1563
                      A. The Parties                                     1563
                      B. Claims and Counterclaims                        1564
                      C. Decision on Appeal                              1564
                II.   History of the Parties and Their Names             1564
                      A. The Early Days of Cooperation                   1564
                

                       B. Expansion and Conflict                          1566
                       C. An Incomplete Accommodation                     1567
                       D. Hostilities Resume                              1568
                III.   The Joint Survey                                   1570
                IV.    Likelihood of Confusion                            1573
                CONCLUSIONS OF LAW
                V.    Defendants' Counterclaim                            1577
                VI.   Plaintiffs' Acquiescence Defense                    1577
                VII.  Inevitable Confusion                                1579
                VIII. "Sun Financial" Group and Services                  1580
                IX.   Miscellaneous Matters                               1582
                      A. Defendants' Other "Sun" Marks                    1582
                      B. Plaintiffs' State Law Claims                     1582
                      C. The "SunAmerica" Counterclaim                    1582
                      D. Attorney's Fees                                  1582
                X.    Conclusion                                          1582
                

FINDINGS OF FACT

I. BACKGROUND

Plaintiffs filed this trademark infringement action charging Defendants with violations of the Lanham Act and various state laws concerning trademark protection. Both Plaintiffs and Defendants currently use corporate names, trade names, and service marks featuring the term "Sun Life." Plaintiffs claim that Defendants recently began to use the names "Sun Life (U.S.)" and "Sun Life" prominently in advertising without any proximate reference to "Canada." Such use, said Plaintiffs, is confusing to consumers. At trial, Defendants did not deny the likelihood of confusion, but contended that the parties' simultaneous use of the salient phrase "Sun Life," even if modified by geographic terms such as "of America" or "of Canada," is inevitably confusing.

On motions for summary judgment, this Court ruled that Defendants' use of "Sun Life (U.S.)" presented a substantial likelihood of confusion with Plaintiffs' mark "Sun Life of America." See Order # 137, entered June 10, 1991. The Court enjoined Defendants from further use of the "Sun Life" name without the geographic modifier "of Canada." See Order # 143, entered August 22, 1991. On September 9, 1992, the Eleventh Circuit vacated this Court's injunction and remanded for further proceedings. See SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 24 U.S.P.Q.2d 1505, 974 F.2d 1348 (11th Cir.1992) (per curiam). The case came to trial on November 15, 1993.

A. The Parties

Plaintiffs are an American holding company, SunAmerica, Inc. "SunAmerica" and its wholly-owned subsidiary, Sun Life Insurance Company of America "Sun Life of America" or "SLA". Defendants are a Canadian mutual life insurance company, Sun Life Assurance Company of Canada "Sun Life of Canada" or "SLC" and its wholly-owned U.S. subsidiary, Sun Life Assurance Company of Canada (U.S.). Both parties presently are in the business of selling annuity products to American consumers. Both Plaintiffs and Defendants have used the service mark "Sun Life" alone or in combination with geographic modifiers and other descriptive terms for over seventy-five years.

B. Claims and Counterclaims

Sun Life of America challenges both Sun Life of Canada's use of "Sun Life (U.S.)" as a name for its U.S. subsidiary and SLC's federal registration of "Sun Financial Group." Plaintiff SLA further alleges unfair competition and trademark infringement under federal law, common law trademark infringement and unfair competition, and deceptive trade practices and false advertising under state law. SLA also seeks the cancellation of federal registration for various other marks used by Sun Life of Canada.¹

Sun Life of Canada filed a counterclaim asserting that Plaintiffs are infringing Defendants' rights in the unmodified term "Sun Life." In addition, SLC wants the Court to cancel registration of Plaintiffs' "SunAmerica" marks.

C. Decision on Appeal

As noted, the Eleventh Circuit Court of Appeals vacated this Court's permanent injunction against Defendant SLC's use of "Sun Life (U.S.)" and remanded the case for trial. The Court of Appeals determined that this Court had failed to explicitly resolve the issues raised by SLC's counterclaim. Defendants argued that SLA did not have enforceable trademark rights in the "Sun Life of America" name, a prerequisite to a claim under section 43(a) of the Lanham Act. Thus, the Court must begin with an analysis of SLC's prior use of "Sun Life" and the legal effect of that use. In a concurring opinion, Judge Birch suggested an analytical framework for resolving the complex factual and legal issues presented on remand.

The Court will first determine whether Defendant SLC can demonstrate both enforceable rights in its "Sun Life of Canada" mark and that Plaintiffs' use of "Sun Life of America" generates a likelihood of confusion. The Court will next consider SLA's affirmative defense of acquiescence. In this regard, "acquiescence would estop Sun Life of Canada from extinguishing SunAmerica's use of `Sun Life of America,' unless there is an inevitability of confusion between the two marks." Id. at 1510. If confusion is inevitable, the public interest may require that Defendant's claim to the "Sun Life" name be revived, regardless of acquiescence. As for SLA's claim that Defendants' "Sun Life (U.S.)" is confusingly similar to "Sun Life of America," the Court will first decide whether SLA has a protectable trademark interest in the "Sun Life of America" name before reaching the issue of confusion.

The evidence presented at trial and the applicable law suggest that two basic issues dispose of the principal claims in this action:

(1) Whether Sun Life of Canada acquiesced in Sun Life of America's use of its "Sun Life" name; and

(2) Whether there is an inevitability of confusion between the two marks.

II. HISTORY OF THE PARTIES AND THEIR NAMES

A. The Early Days of Cooperation

Defendant Sun Life Assurance Company of Canada was founded in Montreal, Canada in 1865 and adopted its present name in 1882. SLC pioneered several highly successful innovations in the life insurance field, grew steadily, and by the 1890's was one of the leading Canadian life insurance companies. The company opened its first branch office in the United States in 1895. Employees known as "career agents" began selling life insurance in the United States under the "Sun Life of Canada" name in 1895 and annuities at least as early as 1902. By 1915, a respected reporting source described Sun Life of Canada as follows:

The company has built up a large income and operates in a widely extended territory .... The company is very strong financially.... Its actuarial methods are conservative and sound. The investments are sound and remunerative.... This company specializes on annuities and transacts a very large business under that plan.

Best's Insurance Reports,² Defendants' Exhibit "DX" 914 at 1916-1917 tab. SLC has used the name "Sun Life" as an abbreviation for its full name in promotional advertisements since at least May 18, 1914. See DX 648. The parties do not dispute that Defendant was the first user of the "Sun Life" service mark for insurance products in the United States.

Plaintiff Sun Life Insurance Company of America was founded in Baltimore in 1890 and was incorporated in 1897 as "Immediate Benefit Life Insurance Company." SLA began operation as a "debit company," selling small denominations of industrial life, health and disability insurance policies to low income workers through home service agents. These employees, also called "debit agents," personally visited policyholders and collected the premium payments on a weekly or monthly basis. The company officially adopted the name "Sun Life Insurance Company of America" in 1916.

Although SLC immediately protested SLA's name change, the American company's charter already had been amended. In a...