American International Group, Inc. v. American International Bank

926 F.2d 829, 91 Daily Journal DAR 1939, 17 U.S.P.Q. 2d (BNA) 1907, 91 Cal. Daily Op. Serv. 1143, 1991 U.S. App. LEXIS 2129, 1991 WL 17293

• Court: Court of Appeals for the Ninth Circuit
• Decided: February 14, 1991
• Docket: 88-5558
• Status: Published

Opinions

POOLE, Circuit Judge:

I. Overview

Appellant, American International Group, Inc. (“the Group”), sued American International Bank (“the Bank”) under the Lanham Trade Mark Act for federal trademark infringement, 15 U.S.C. § 1114(1) (1963), and false designation of origin, 15 U.S.C. § 1125(a) (1982), and, under California state law for trademark dilution, trademark infringement and unfair competition. California Business and Professional Code §§ 14330, 14400 and 17200. Appellant sought to recover damages and injunctive relief. The district court granted summary judgment in favor of the Bank on the grounds that appellant’s claims were barred by laches. We reverse and remand. The Group has adduced evidence sufficient to raise factual disputes which were not amenable to summary judgment.

II. Factual and Procedural Background

The Group, a Delaware corporation with its principal place of business in New York, serves as a holding company for its more than 150 subsidiary corporations throughout the United States and in over 130 foreign nations. The Group is one of the largest underwriters of commercial and industrial insurance in the United States, with assets currently exceeding $21 billion and annual revenues of more than $8 billion.

The Group began using the service mark “American International” in 1926.¹ Approximately eighty of the Group's subsidiaries bear names containing the words “American International”; still others utilize the abbreviations “AI” or “AIG.” The Group registered the service marks “American International” and “AIG” with the U.S. Patent and Trademark Office in October, 1975 and February, 1978, respectively. Subsequently, in 1981 and 1982, the Group reregistered those service marks to extend their use from strictly insurance underwriting purposes to also encompass a variety of additional financial services (most of which are insurance-related, such as actuarial, pension-fund, and installment loan services, and others relating to real estate).

The Group opened its first California office in San Francisco in the 1960’s. The Group’s presence in Los Angeles, the center of appellee’s banking operations, began in 1972.

In June, 1983, Wayland Mead, in-house counsel for the Group, learned of the Bank’s use of the words “American International” while browsing through a Los Angeles telephone directory. Some six months later, Mead contacted the Group’s outside counsel, Roy Hopgood, requesting that he investigate the Bank. Although steps were taken to look into the matter, the Group did not warn the Bank of its alleged infringement of the “American International” service mark until January, 1986, a full two and one-half years after Mead’s discovery.² The Group offers no excuse for this delay.

Appellee, the Bank, is a California corporation which provides commercial banking services in the Los Angeles area. Prior to initiating operations in 1978, the Bank did not conduct a search of federal trademark records to ascertain whether its name had been preempted. Nor did it attempt to register the “American International” mark with the U.S. Patent and Trademark Office.

Beginning in July 1982, the Bank sought and later obtained insurance from National Union Fire Insurance Company of Pittsburgh, Pennsylvania (“National Union”) which, as it turns out, was actually a wholly owned subsidiary of the Group. The Bank’s financial condition was at that time extremely precarious, prompting National Union and the Group’s Banking Division in New York to monitor closely the appellee’s financial progress. Because of the Bank’s poor performance, National Union refused to renew the Bank’s policy in early 1985.

By the end of 1985, however, the Bank had extricated itself from its dire financial straits and had begun to reflect a profit.³ At about the same time, in January 1986, the Bank received a letter from Hopgood written on behalf of appellant notifying appellee of its possible infringement of the Group’s service mark and requesting that the Bank change its name. In February 1986, the Bank opened a second branch office as scheduled in Alhambra, California. Appellee is currently seeking approval to open a third office in Glendale, California.

The Group brought its complaint against the Bank on June 26, 1986. The Bank counterclaimed for damages, injunctive relief and declaratory relief. Later, the Bank moved for summary judgment based on the affirmative defense of laches. The district court granted the Bank’s motion and, pursuant to the parties’ stipulation to dismiss the Bank’s counterclaim without prejudice, entered a final judgment on December 4, 1987. The Group timely appealed.

III. Standard of Review

We review de novo the district court’s grant of summary judgment. Pope v. Savings Bank of Puget Sound, 850 F.2d 1345, 1356-57 (9th Cir.1988). Summary judgment is proper if, when viewing the evidence in the light most favorable to the party opposing the motion, the court determines that there remains no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Lundy v. Union Carbide Corp., 695 F.2d 394, 396 (9th Cir.1982).

IV. Discussion

The Group argues that material factual issues exist which should have precluded the grant of summary judgment with respect to the laches defense asserted by the Bank. Appellant contends, in the alternative, that even if the finding that laches barred the recovery of money damages was proper, the court committed error by concluding as a matter of law that appellant’s claim for prospective injunctive relief was also necessarily foreclosed.

The district court may properly grant summary judgment on the basis of laches. See Boone v. Mechanical Specialties, 609 F.2d 956, 960 (9th Cir.1979) (upholding summary judgment of a Title VII claim on grounds of laches). “Issues concerning the correct test to be used in evaluating trademark infringement are reviewed de novo.” Clamp Manufacturing Co. v. Eneo Manufacturing Co., 870 F.2d 512, 514 (9th Cir.), cert. denied, — U.S. -, 110 S.Ct. 202, 107 L.Ed.2d 155 (1989). We agree with the district court that the proper standard for evaluating this case is that enumerated in E-Systems, Inc. v. Monitek, Inc, 720 F.2d 604 (9th Cir.1983). In E-Systems we established a balancing test to be applied in examining the issue of laches which requires the district court to consider a variety of factors, including (1) the strength and value of the trademark rights asserted; (2) the senior user’s diligence in enforcing the mark; (3) the harm to the senior user if relief is denied; (4) whether the junior user acted in good faith ignorance of the senior’s rights; (5) the degree of competition between senior and junior users; and (6) the extent of harm suffered by the junior user because of the senior user’s delay in asserting his rights. Id. at 607.

A. Existence of Contested Material Facts

The district court issued an express statement of uncontroverted facts and conclusions of law on the Bank’s laches defense. The court resolved each of the E-Systems factors in the Bank’s favor, concluding that (1) the Group’s mark is not strong since the term “American International” has commonly been employed by many companies; (2) the Group has failed to diligently police infringement of its mark since it “did nothing — intentionally or unintentionally — while [the Bank] struggled to establish itself as a viable entity, even though [the Group] probably knew of the struggle and surely knew of the existence of defendant ... at least as early as 1983, and yet it took no step to enforce its alleged rights until 1986”; (3) any prejudice accruing to the Group in the event the Bank is permitted to continue using the name “American International” is likely to be de minimis; (4) the Bank was acting in good faith ignorance of the Group’s rights since even had appellee performed a trademark search before selecting its name it would only have discovered a registration restricted to insurance underwriting services, not commercial banking; (5) there is minimum competition between the two parties making it extremely improbable that consumers will confuse their services; and (6) as “a struggling entity that only recently turned the corner into profitability in the highly competitive Southern California banking world,” detriment to the Bank would be extreme should the Group prevail in this litigation.

Despite the district court’s extensive findings on these factors, we conclude that the entry of summary judgment on the grounds that laches was established as a matter of law was improper. First, with regard to the strength and value of the “American International” mark and appellant’s diligence in protecting it, the Group presented uncontroverted evidence showing that it had utilized the “American International” name since 1926; that over 80 of its subsidiaries also use the name; that it had operated successfully under this name, amassing assets in the billions of dollars; that it has conducted extensive advertising; and that it has on many occasions attempted through litigation and otherwise to protect its service mark from infringement by companies representing a variety of financial fields, not simply infringers in the insurance industry. Although a suggestive or descriptive mark such as “American International” is inherently a weak mark, it “may be strengthened by such factors as extensive advertising, length of exclusive use, public recognition_” Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531, 1536 (9th Cir.1989). With the material evidence it submitted, the Group has raised genuine factual disputes as to the strength and value of its mark and its diligence in protecting it.

The Group was unsuccessful in demonstrating present confusion stemming from the Bank’s use of the term “American International.” However, actual confusion is not necessary to a finding of likelihood of confusion under the Lanham Trade Mark Act. New West Corp. v. NYM Co. of California, 595 F.2d 1194, 1201 (9th Cir.1979). The parties apparently agree that there is some minor overlap of their respective services. Although the parties are not direct competitors, they both provide financial services. Their businesses may be sufficiently “complementary” or “related” that the public is likely to be confused as to the source of the services. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979) (high-speed waterskiing boats for racing and recreational boats for families are “related”); Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 152-55 (9th Cir.), cert. denied, 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053 (1963) (beer and Scotch whiskey are sufficiently similar to create a likelihood of confusion regarding the source of origin when sold under the same trade name). See also E-Systems, 720 F.2d at 607 (mentioning that plaintiff’s and defendant’s products are “complementary”). Given the similarities between the services offered by the two companies, the Group could well be harmed by customer confusion, particularly if the Bank at some point plunges into its former unfortunate condition of financial instability. As the party opposing the summary judgment motion, the Group was entitled to have all inferences of this sort resolved in its favor. The Group should be permitted to present relevant evidence at trial.

Finally, there is no demonstration in the record that the Bank was prejudiced by the Group’s delay in filing its complaint. The fact that the Bank was admittedly unaware of the Group prior to the date it received a warning from Hopgood precludes the possibility of detrimental reliance.

Similarly, the record is devoid of direct evidence bearing on the likelihood and extent of injury to the Bank should the court enjoin its further use of the term “American International.” Since mere delay alone generally will not constitute laches without some further showing of prejudice to the junior user, this factor is critical. Graham v. Atchison, T. & S.F. Ry. Co., 176 F.2d 819, 827 (9th Cir.1949) (mere delay without injury will not give rise to laches). Consequently, it was inappropriate for the trial judge to have concluded that harm to the Bank was bound to be extreme based upon appellee’s unsubstantiated projections that a major loss of goodwill would necessarily result from a forced name change.

Since five of the six E-Systems factors involve disputed questions of material fact, it cannot be said that, as a matter of law, the balance of the factors tips in favor of the Bank. Thus, the district court’s grant of summary judgment was inappropriate.

B. Denial of Injunctive Relief

While not directly disputing that laches can serve as a bar to injunetive relief, appellant maintains that the district court was not required to deny the Group’s claim for injunctive relief as a matter of law simply because the issue of laches was concluded in the Bank’s favor. In other words, appellant believes that the court should only have refused to afford it money damages for possible past infringement of its mark, while affording it the opportunity to recover prospective injunctive relief.

To overturn the summary judgment ruling on the basis of the Group’s artfully devised argument would effectively mean that the district court was obligated to allow the Group to get to trial on the issue of injunctive relief, and consequently, that the court’s conclusion that laches applied could not preclude such relief. Such an interpretation would be contrary to the current body of law in this circuit, where it has been found that laches may bar injunc-tive relief in trademark actions. See E-Systems, Inc. v. Monitek, Inc., 720 F.2d at 607; Prudential Ins. Co. v. Gibraltar Financial Corp., 694 F.2d 1150, 1152 (9th Cir.1982), cert. denied, 463 U.S. 1208, 103 S.Ct. 3538, 77 L.Ed.2d 1389 (1983).

The Group’s argument regarding this issue does not support reversal. However, since we have determined on other grounds that summary judgment was improperly granted, that portion of the judgment denying appellant injunctive and other relief is also vacated in order to avoid prematurely foreclosing all relief to the Group before it has been permitted to try its case.

REVERSED AND REMANDED.

1 . Generally speaking, a service mark is a distinctive mark used in connection with the sale or advertising of services, such as insurance, while a trademark is typically used to identify and distinguish tangible goods. See Black’s Law Dictionary 1228, 1338 (5th ed. 1979). Service marks are registrable in the same manner and entitled to the same protection under federal law as trademarks. 15 U.S.C. § 1053.

2 . Appellee suggests that the Group had notice of the Bank’s putative infringement as early as 1980 while the Group was heavily embroiled in litigation against another alleged infringing company. We disregard this belated assertion, however, since, as appellee concedes, the Bank's motion for summary judgment in this action was premised upon the position that the Group acquired notice in 1982 at the time the Bank obtained insurance from one of the Group’s subsidiary companies.

3 . Appellee’s net earnings increased from $209,-979 in 1985 to $395,266 in 1986. During a period of only the first six months of 1987, the Bank’s net income had surged to $357,055.