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

Fri Apr 19 10:06:12 EDT 2024

And as a tie-in, SFB is the airport code for the Orlando Sanford airport.

Michael Brown
Michael J Brown Law Office
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On Thu, Apr 18, 2024 at 8:04 PM Griff Thomas via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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 Nos. 91234602 and 91235774, not precedential.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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