[E-trademarks] Law School Quiz - Let's Fly to Court

[Griff Thomas]

Scott,
Add this one in for class discussion!

*Greater Orlando Aviation Authority v. Sanford Airport Authority*, Opp.
Nos. 91234602 and 91235774, not precedential. Oppositions based on
likelihood of confusion sustained, March 14, 2023. Stephen H. Luther of
Luther Law PLLC for Greater Orlando Aviation Authority; Woodrow H. Pollack
of Shutts & Bowen LLP for Sanford Airport Authority. Shaw, Coggins, and
[Allard], Administrative Trademark Judges (60 pages).

*Sanford Airport Authority* (*SAA*) filed applications under Section 2(f)
of the *Trademark Act* to register ORLANDO SANFORD INTERNATIONAL AIRPORT
(INTERNATIONAL AIRPORT disclaimed; in standard character form) and
ORLANDOSANFORD INTERNATIONAL AIRPORT WE ARE SFB: SIMPLER. FASTER. BETTER. &
design (ORLANDO SANFORD and INTERNATIONAL AIRPORT disclaimed; the mark
consists of an incomplete oval-like shape sweeping left to right with
ORLANDO SANFORD above a bisection containing INTERNATIONAL AIRPORT and WE
ARE SFB: SIMPLER. FASTER. BETTER below the bisection; color is not claimed
as a feature of the mark; Fig. 1) for “airport services” in International
Class 39. *Greater Orlando Aviation Authority* (*GOA*) opposed registration
on the ground of likelihood of confusion with its previously registered
mark ORLANDO INTERNATIONAL AIRPORT & design (INTERNATIONAL AIRPORT
disclaimed; Fig. 2) for “airport services” in International Class 39 and
with its common law marks ORLANDO INTERNATIONAL AIRPORT and ORLANDO
INTERNATIONAL AIRPORT & design (Fig. 2). *GOA* alleged that its marks
acquired distinctiveness before *SAA* used or applied to register its
marks. *SAA *denied the salient allegations and asserted the affirmative
defense of acquiescence.


Robert Griffith Thomas, Esq.
100 17th Ave N, St Petersburg, FL 33704
Griffith Thomas Law <http://www.griffiththomaslaw.com>
(202) 253-3988
NY Bar No. 2068146; DC Bar No. 431275
Editor-in-Chief since 1998
Allen's Trademark Digest/WOLTERS KLUWER





On Thu, Apr 18, 2024 at 5:54 PM Scott Landsbaum via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> The City of Oakland, California, announced that it intends to re-brand
> Oakland International Airport as San Francisco Bay Oakland International
> Airport.  The City of San Francisco sued the City of Oakland, claiming the
> name change will infringe on the City of San Francisco's registered
> trademark for San Francisco International Airport for airport services.
> Your questions:
>
>    1. As a trademark examiner, would you have allowed the City of San
>    Francisco to register  San Francisco International Airport for airport
>    services or would you have refused the mark as being descriptive of airport
>    services for the City of San Francisco?  In your answer, address the impact
>    of whether the airport is physically within or outside of San Francisco's
>    city and county limits and whether your answer depends on the percentage of
>    airport users who actually live in the City or County of San Francisco.
>    2. Does the name San Francisco Bay Oakland International Airport
>    function as a trademark?  That is, does the name serve as a source
>    identifier for airport services provided by the City of Oakland?
>    3. Assume both airport names are valid trademarks. Are they
>    confusingly similar?  In your answer, address the use by consumers of the
>    three letter airport codes, SFO (San Francisco) and OAK (Oakland).  If the
>    City of Oakland changes the three letter code to SFB (San Francisco Bay),
>    does that impact your analysis?
>    4. Assume neither airport names are valid trademarks for airport
>    services.  Would the City of San Francisco be able to prohibit the City of
>    Oakland from using the name on ancillary merchandise, such as shirts and
>    mugs?  What facts would you need for your analysis?
>
> Resources:
>
> https://abcnews.go.com/US/san-francisco-oakland-airport-name-lawsuit/story?id=109394761
>
> https://tsdr.uspto.gov/#caseNumber=85421298&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
>
> Regards,
> Scott
>
> Scott Landsbaum, Inc.
> 323-314-7881 / f 323-714-2454
> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
> www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/
>
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