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

Decision Date19 March 1996
Docket NumberNo. 95-8751,95-8751
PartiesSUNAMERICA CORPORATION, a Delaware Corporation, f/k/a Sun Life Group of America, Sun Life Insurance Company of America, a Maryland Corporation, Plaintiffs-Counterdefendants-Appellants, v. SUN LIFE ASSURANCE COMPANY OF CANADA, a Canadian Corporation, Sun Life Assurance Company of Canada (U.S.), a Delaware Corporation, Defendants-Counterclaimants-Appellees.
CourtU.S. Court of Appeals — Eleventh Circuit

John J. Dalton, Mark S. Vanderbroek, Michael D. Hobbs, Troutman Sanders, Atlanta, GA, Jerome Gilson, William Brinks Hofer Gilson & Lione, Chicago, IL, for appellants.

Oscar Persons, Alston & Bird, Atlanta, GA, Binham B. Leverich, Covington & Burling, Washington, DC, David C. Hilliard, Joseph N. Welch, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, IL, for appellees.

Appeal from the United States District Court for the Northern District of Georgia.

Before DUBINA and CARNES, Circuit Judges, and MILLS *, District Judge.

CARNES, Circuit Judge:

This trademark case concerns a dispute between two insurance companies over the right to use the mark SUN LIFE. The plaintiffs are SunAmerica Corporation and its wholly-owned subsidiary, Sun Life Insurance Company of America ("Sun Life of America") (collectively, "SunAmerica"). The defendants are Sun Life Assurance Company of Canada and its subsidiary, Sun Life Assurance Company of Canada (U.S.) (collectively, "Sun Life of Canada"). SunAmerica appeals from a judgment entered in favor of Sun Life of Canada on a counterclaim it brought against SunAmerica. The district court's judgment permanently enjoined SunAmerica from further use of any SUN LIFE mark.

Although Sun Life of Canada is the senior user of the SUN LIFE mark, it acquiesced in SunAmerica's use of the mark. That acquiescence would estop Sun Life of Canada from asserting its counterclaim, were it not for the existence of "inevitable confusion" in the marketplace. The existence of inevitable

                confusion operates to revive a senior user's claim that is otherwise estopped by acquiescence.   However, we hold in this opinion that where such revival occurs, the district court must consider the feasibility and efficacy of relief other than a complete injunction against the junior user.   Because the district court's order is ambiguous as to whether it adequately considered the feasibility and efficacy of alternative forms of relief, we remand the case for further proceedings
                
I. BACKGROUND FACTS AND PROCEDURAL HISTORY

In June 1989, SunAmerica brought federal unfair competition and trademark infringement claims, and related state law claims, against Sun Life of Canada, alleging that Sun Life of Canada's use of the marks SUN LIFE (U.S.) and SUN LIFE, without any reference to the geographic modifier "of Canada," was causing unacceptable marketplace confusion. In response, Sun Life of Canada counterclaimed against SunAmerica for trademark infringement, seeking to enjoin SunAmerica from all use of the SUN LIFE mark. Both parties moved for summary judgment.

The district court found confusing similarity between the parties' marks. In particular, the district court found that the mark SUN LIFE (U.S.) was likely to be confused with the mark SUN LIFE OF AMERICA. Accordingly, the district court permanently enjoined Sun Life of Canada from using the mark SUN LIFE (U.S.) without some form of the geographic modifier "of Canada." Sun Life of Canada appealed.

On appeal, in a brief per curiam opinion, this Court held that the district court had erred by entering a permanent injunction without first resolving Sun Life of Canada's counterclaim. We vacated the permanent injunction issued by the district court and remanded the case for consideration of that counterclaim. SunAmerica v. Sun Life Assurance Co., 24 U.S.P.Q.2d 1505, 1506, 974 F.2d 1348 (11th Cir.1992) (hereinafter "SunAmerica I "). In a concurring opinion, Judge Birch provided not only a thorough summary of the facts and procedural history of the case through that stage, but also a detailed analytical framework to guide the parties and the district court on remand. Id. at 1506-13, 974 F.2d 1348 (Birch, J., concurring). We adopt Judge Birch's concurring opinion in its entirety as our statement of the facts and procedural history up through the time of the SunAmerica I decision. We also adopt as the law of the circuit his opinion's pronouncements about the relevant law. Because Judge Birch's concurring opinion in SunAmerica I has not previously been published in the Federal Reporter system, we attach that opinion and the per curiam opinion it accompanied, as an appendix to this opinion, infra pp. 1339-48.

On remand after SunAmerica I, the district court found that Sun Life of Canada had enforceable rights in its SUN LIFE marks and that a likelihood of confusion existed between the names SUN LIFE OF AMERICA and SUN LIFE OF CANADA. The district court also found, however, that Sun Life of Canada had acquiesced to SunAmerica's use of its allegedly infringing marks. Such acquiescence operates to estop a senior user's trademark claim against a junior user's use of the mark unless there is inevitable confusion between the marks. Coach House Restaurant v. Coach and Six Restaurants, 934 F.2d 1551, 1564 (11th Cir.1991). Applying that standard to the facts, the district court found that inevitable confusion existed between the parties' names and that this inevitable confusion revived Sun Life of Canada's trademark rights. Accordingly, the district court permanently enjoined SunAmerica from any further use of the SUN LIFE mark. 1

SunAmerica filed motions to alter or amend the judgment, to stay the judgment pending appeal, and for a new trial. The district court denied these motions, and SunAmerica filed with this Court an Emergency Motion to Stay Injunction Pending Appeal and to Expedite Appeal. We denied the motion to stay, but granted the motion to expedite the appeal. While the appeal was

pending, SunAmerica complied with the injunction by changing the name of Sun Life of America to "SunAmerica Life Insurance Company."

II. WHETHER THIS APPEAL SHOULD BE DISMISSED AS MOOT
A. THE ESTOPPEL ISSUE

In support of its motion to stay the injunction pending appeal, SunAmerica repeatedly represented to the district court that if it complied with the district court's injunction by changing its name from Sun Life Insurance Company of America, it would be impossible, from both a commercial and regulatory standpoint, to later revert back to that name if SunAmerica prevailed on appeal. For example, SunAmerica's senior vice-president and general counsel stated in an affidavit that once a name change had been implemented, the change would be "essentially irreversible" and that reverting back to the prior name would be "commercially impossible." SunAmerica's counsel made numerous representations to the district court to the effect that "[e]ven if Sun Life of America were to prevail on appeal, it could not revert, either as a legal or practical matter, to its Sun Life of America name," and that "to deny a stay is to effectively deny any appellate relief." The district court rejected this argument and denied SunAmerica's motion for a stay, finding that a name change could be reversed if SunAmerica prevailed on appeal.

Echoing its refrain from the district court, SunAmerica made repeated representations to this Court, in connection with its emergency motion to stay, that compliance with the district court's injunction would "effectively moot and deny appellate rights and relief." SunAmerica made no fewer than eight such representations in its Emergency Motion to Stay Injunction Pending Appeal and to Expedite Appeal, including, for example, the following statements:

(1) [I]mplementing a name change is irreversible and would effectively moot Appellants' right of appeal.

(2) [O]nce [SunAmerica] begins to implement a name change, as a matter of commercial practicality it cannot reverse it. It will have lost ... its right to an appeal.

(3) [U]nless its initiation of the [compliance] process is stayed pending appeal, ... Sun Life of America's right of appeal will be a nullity.

A panel of this Court nonetheless denied SunAmerica's motion for a stay pending appeal, and SunAmerica has complied with the injunction by changing its name.

The vigor with which SunAmerica argued that the name change would moot this appeal is matched only by the vigor with which it now argues, having been forced to change its name, that the appeal is not moot after all. The same corporation and attorneys who unequivocally represented to the district court and this Court that a name change would be irreversible "as a matter of commercial practicality," now just as unequivocally represent to this Court that the practical effects of the name change are, in fact, reversible. Such a sea change in factual representations prompted us to ask SunAmerica's counsel at oral argument which of their statements were false: the ones they made while seeking a stay, or the ones they made after the stay was denied.

The essence of counsel's response was that the representations were not really inconsistent because, even if it were commercially impractical for SunAmerica to "officially" revert back to its former name, relief from the injunction would permit SunAmerica to make other beneficial use of the SUN LIFE mark, such as using the mark in connection with a subsidiary created to market insurance products that the marketplace already associated with the Sun Life of America name. Therefore, reasoned counsel, the name change did not moot this appeal. Of course, SunAmerica was careful to omit any mention of the possibility of subsidiary use of the mark when it was insisting that a name change would moot this appeal. SunAmerica's representations to the district court and this Court that the name change would be irreversible and as a result its appeal would...

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