Alliance for Good Government v. Coalition for Bett

Case: 17-30859 Document: 00514612216 Page: 1 Date Filed: 08/22/2018

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

United States Court of Appeals

Fifth Circuit

FILED

No. 17-30859 August 22, 2018

Lyle W. Cayce

ALLIANCE FOR GOOD GOVERNMENT, Clerk

Plaintiff - Appellee

v.

COALITION FOR BETTER GOVERNMENT,

Defendant - Appellant

Appeal from the United States District Court

for the Eastern District of Louisiana

Before DAVIS, HAYNES, and DUNCAN, Circuit Judges.

STUART KYLE DUNCAN, Circuit Judge:

This federal trademark infringement action involves a dispute between

two civic organizations over their logos:

The older organization, Alliance for Good Government, developed its logo in

the late 1960s and has used it for fifty years in advertisements and sample

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ballots to promote political candidates in New Orleans and throughout

Louisiana. The younger organization, Coalition for Better Government,

developed its logo more recently (in the early 1980s or 1990s) and has also used

it in sample ballots to promote political candidates in New Orleans. While the

groups have locked talons before, the present appeal arises out of Alliance’s

2017 lawsuit seeking to enjoin Coalition’s use of its logo for federal trademark

infringement under the Lanham Act. The district court granted Alliance

summary judgment, finding that Coalition’s logo infringed Alliance’s marks as

a matter of law, and enjoined Coalition from using both its name and logo in

political advertisements. Coalition appeals that ruling.

On appeal, Coalition raises broad threshold questions concerning the

applicability of the Lanham Act to what it characterizes as its political, non-

commercial speech. We decline to address those questions, because Coalition

failed to properly raise them below and the district court never reached them.

Coalition also attacks the summary judgment, claiming that fact issues remain

as to whether Alliance’s marks are valid and whether Coalition’s logo would

likely create confusion with Alliance’s. On the latter point, Coalition’s most

curious argument—urged below and renewed on appeal—is that the logos are

different because its logo features a hawk while Alliance’s features an eagle.

We conclude the district court did not err in deciding the birds are identical.

Reviewing the summary judgment ruling de novo, we conclude that the

evidence establishes without dispute that Alliance’s logo is a valid composite

mark and that the use of Coalition’s logo infringes Alliance’s composite mark

as a matter of law. We modify the district court’s injunction in one respect,

however. By its terms, the injunction restrains Coalition from using its name

as well as its logo. We find that aspect of the injunction overbroad and therefore

modify it to restrain Coalition’s use of its logo only.

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Accordingly, we AFFIRM the district court’s summary judgment ruling,

but MODIFY the injunction to restrain only the use of Coalition’s logo.

I.

A.

Alliance for Good Government (“Alliance”) is a non-profit civic

organization formed in 1967 to promote “honest and open government.”

Alliance’s founding chapter is in Orleans Parish, but it operates both in New

Orleans and throughout Louisiana. The organization hosts political forums,

endorses candidates, and participates in campaigns through advertising. It

also distributes and publishes sample ballots featuring endorsed candidates.

Alliance ballots dating back to 1969 feature the same logo it continues to

use today—a design with the organization’s name in blue type on a rectangular

white background arranged around a stylized bird. Alliance considers its bird

to be an eagle. In 2013, Alliance registered its service marks 1 with the United

States Patent and Trademark Office (“PTO”): the word mark “Alliance for Good

Government,” and the composite mark consisting of the entire logo. 2

1 A “service mark” means “any word, name, symbol, or device, or any combination

thereof used by a person … to identify and distinguish the services of one person … from the

services of others and to indicate the source of the services, even if that source is unknown.”

15 U.S.C. § 1127. A “word mark” refers to mark comprised only of words, while a “design

mark” refers to a mark comprised of symbols. See, e.g., Nola Spice Designs, LLC v. Haydel

Enters., Inc., 783 F.3d 527, 537, 540 (5th Cir. 2015). A “composite mark” refers to a mark

“containing both words and symbols in a distinct manner.” Igloo Prods. Corp. v. Brantex, Inc.,

202 F.3d 814, 815 (5th Cir. 2000); see also 4 MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 23:47 (5th ed. 2018) (“McCarthy”) (discussing comparison of “composite

marks involving both designs and words”).

2Specifically, Alliance registered its word mark as No. 4,330,957 on May 7, 2013. This

mark is for the name “Alliance for Good Government” in “standard characters without claim

to any particular font, style, size, or color.” Alliance registered its composite mark as No.

4,349,156 on June 11, 2013. This mark is described as follows: “[A] bold line drawing of an

eagle with outstretched wings with head facing left. Above the image is the word ‘Alliance’

and below the eagle are the words ‘good government’ and on the next line is ‘since 1967.’”

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Coalition for Better Government (“Coalition”) is a non-profit civic

organization formed in New Orleans in 1982 to endorse political candidates.

Coalition operates mainly in New Orleans and promotes preferred candidates

by advertising sample ballots in New Orleans newspapers. Coalition and

Alliance sometimes endorse the same, or opposing, candidates: candidates

endorsed by each have run in the same election at least twice.

Coalition also has a logo, which it uses in sample ballots dating back to

at least 1992 (possibly the early 1980s). Coalition’s logo features its name in

white type on a rectangular blue background arranged around a stylized bird.

Coalition’s bird appears identical to Alliance’s, but Coalition believes the birds

are different types: Coalition considers its bird to be a hawk, not an eagle. 3

Because pictures are worth a thousand words, here are the logos again:

B.

Alliance first sued Coalition for trademark infringement in 2008 in

Louisiana state court. After skirmishing over venue, Alliance moved to dismiss

its suit when it believed Coalition had stopped activity and ceased use of the

Coalition logo. But in 2016 Coalition resumed using its logo to endorse political

candidates. Indeed, in the primary elections for Louisiana district judges on

March 25, 2017, Alliance and Coalition endorsed opposing candidates. That

3 The record reflects that Coalition has used at least two slightly different bird designs

in its logos. The bird on Coalition’s 1992 ballot looks modestly different from the bird on its

post-2008 ballots. But because Alliance challenges the use of Coalition’s logo only from 2008

forward, we need not address whether Coalition’s 1992 logo infringed Alliance’s mark.

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same month Coalition filed two applications with the PTO to register its name

and logo, which Alliance opposed. 4

In April 2017, Alliance sued Coalition in federal court claiming federal

trademark infringement under 15 U.S.C. § 1114, as well as various other

federal and state trademark and unfair trade practice claims. Coalition

counterclaimed for, inter alia, fraudulent trademark procurement under 15

U.S.C. § 1120. In August 2017 Coalition moved for summary judgment arguing

Alliance’s suit was barred by laches, and that same month Alliance moved for

partial summary judgment solely on federal trademark infringement. The

district court held a hearing on the cross-motions. Ruling from the bench, the

court denied Coalition’s motion for summary judgment on laches and granted

Alliance’s motion for partial summary judgment on federal trademark

infringement. Alliance voluntarily dismissed its remaining claims.

Subsequently, the district court issued an order permanently enjoining

Coalition from using both its name and logo. Coalition timely appealed the

district court’s trademark infringement ruling and injunction. 5

II.

We review a grant of summary judgment de novo, applying the same

standard as the district court. Smith v. Reg’l Transit Auth., 827 F.3d 412, 417

(5th Cir. 2016). Summary judgment is proper where the pleadings and record

materials show no genuine dispute as to any material fact, entitling the

4 Coalition’s word mark application, dated March 17, 2017, seeks to register the name

“Coalition for Better Government” in “standard characters, without claim to any particular

font style, size, or color.” Coalition’s composite mark application, also dated March 17, 2017,

seeks to register its logo, described as “white letters spelling the words ‘Coalition For Better

Government’ with a drawing of a hawk.” Attached to the application are Coalition’s present

logo (the subject of this suit) and the 1992 version. The parties inform us that the PTO has

stayed Alliance’s opposition proceeding pending the outcome of this suit.

5Coalition raises no argument on appeal concerning the district court’s laches ruling,

and consequently the issue is not before us.

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movant to judgment as a matter of law. FED. R. CIV. P. 56(a). If the moving

party initially shows the non-movant’s case lacks support, “the non-movant

must come forward with ‘specific facts’ showing a genuine factual issue for

trial.” TIG Ins. Co. v. Sedgwick James, 276 F.3d 754, 759 (5th Cir. 2002). We

must view the evidence in the light most favorable to the non-moving party,

drawing all justifiable inferences in the non-movant’s favor. Envtl.

Conservation Org. v. City of Dallas, 529 F.3d 519, 524 (5th Cir. 2008).

III.

To prevail on a claim of federal trademark infringement under the

Lanham Act, 15 U.S.C. § 1051 et seq., a plaintiff must show (1) ownership of a

legally protectable mark and (2) a likelihood of confusion created by an

infringing mark. Nola Spice Designs, LLC v. Haydel Enters., Inc., 783 F.3d 527,

536 (5th Cir. 2015); Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321,

329 (5th Cir. 2008). 6 On appeal, Coalition first argues that the Lanham Act

cannot apply to its marks because Coalition engages only in “political speech”

and does not engage in “commerce or the sale of goods.” Coalition failed to raise

these arguments below, however, and we decline to address them. Second,

Coalition attacks the district court’s summary judgment grant, arguing that

the court erred in ruling that Alliance had a valid mark and that Alliance

proved Coalition’s marks created a likelihood of confusion. We affirm the

district court’s ruling and injunction as to Coalition’s logo but modify the

injunction as to Coalition’s name.

6 The Lanham Act provides in relevant part that a person “shall be liable in a civil

action” by the registrant of a mark if the person, without the registrant’s consent, “use[s] in

commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale, distribution, or advertising of any goods or services

on or in connection with which such use is likely to cause confusion, or to cause mistake, or

to deceive[.]” 15 U.S.C. § 1114(1)(a).

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A.

As a threshold matter, Coalition argues that the Lanham Act cannot

apply to its marks because Coalition engages only in “political speech” and is a

non-profit entity not “engaged in commerce or the sale of goods.” Coalition

failed to properly raise these arguments in the district court. To preserve either

issue for appeal, Coalition had to “‘press and not merely intimate the argument

during the proceedings before the district court … to such a degree that the

district court ha[d] an opportunity to rule on it.’” Keelan v. Majesco Software,

Inc., 407 F.3d 332, 340 (5th Cir. 2005) (quoting N.Y. Life Ins. Co. v. Brown, 84

F.3d 137, 141 n.4 (5th Cir. 1996)) (brackets added). Coalition did not do so and

we therefore decline to reach the arguments. See, e.g., Reyes v. Manor Indep.

Sch. Dist., 850 F.3d 251 (5th Cir. 2017) (“We do not consider issues brought for

the first time on appeal.”).

During summary judgment proceedings, Coalition (1) raised the defense

of laches, (2) urged the invalidity of Alliance’s marks due to fraud and lack of

distinctiveness, and (3) argued that fact issues precluded summary judgment

on likelihood of confusion. Nowhere in those proceedings did Coalition brief or

articulate—much less “press”—the argument that its political or non-profit

nature insulates it from Alliance’s trademark infringement claims. Because

Coalition said nothing about those issues, the district court’s ruling

understandably did not address them. “‘If a party fails to assert a legal reason

why summary judgment should not be granted, that ground is waived and

cannot be considered or raised on appeal.’” Keelan, 407 F.3d at 339-40 (quoting

Keenan v. Tejeda, 290 F.3d 252, 262 (5th Cir. 2002)).

To be sure, Coalition’s answer to Alliance’s complaint raised—among

thirteen affirmative defenses—the defense that “its actions constitute purely

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non-commercial and political free speech.” 7 But Coalition never developed the

argument beyond that cursory statement and, by the time of the summary

judgment proceedings, the issue had vanished. The argument is thus waived.

See, e.g., Keenan, 290 F.3d at 262 (explaining that “‘[e]ven an issue raised in

the complaint but ignored at summary judgment may be deemed waived’”)

(quoting Grenier v. Cyanamid Plastics, Inc., 70 F.3d 667, 678 (1st Cir. 1995));

see also Frank C. Bailey Enters., Inc. v. Cargill, Inc., 582 F.2d 333, 334 (5th

Cir. 1978) (holding that “an appellate court, in reviewing a summary judgment

order, can only consider those matters presented to the district court”). 8

B.

We proceed to Alliance’s federal trademark infringement claim. The

district court granted Alliance summary judgment, finding the evidence

undisputed that Alliance’s marks are legally protectable and that Coalition’s

use of its marks creates a likelihood of confusion with Alliance’s. Unless

Coalition’s motion to dismiss also stated it engages in “political free speech,” without

7

ever making, briefing, or otherwise developing a distinct First Amendment claim.

8 The interplay between the Lanham Act and the First Amendment’s political and

commercial speech doctrines raises a thicket of issues we decline to enter when the issues

were not preserved or ruled on below. See, e.g., Radiance Found., Inc. v. NAACP, 786 F.3d

316 (4th Cir. 2015) (observing “[a]t least five of our sister circuits”—the D.C., 10th, 9th, 6th,

and 8th—“have interpreted [‘in connection with the sale … or advertising of any goods or

services’ in 15 U.S.C. § 1114(1)(a) of the Lanham Act] as protecting from liability all

noncommercial uses of marks”); id. at 323-24 (adopting commercial speech doctrine as

“guidance” in applying Lanham Act’s “in connection” requirement); but see United We Stand

Am., Inc. v. United We Stand Am. N.Y., Inc., 128 F.3d 86, 90 (2nd Cir. 1997) (observing “[t]he

Lanham Act has … been applied to defendants furnishing a wide variety of non-commercial

public and civic benefits” and concluding that “[a] political organization that … endorses

candidates under a trade name” satisfies the “in connection” requirement). This Court does

not appear to have spoken directly on this debate but has held that a different section of the

Lanham Act, 15 U.S.C. § 1125(a), encompasses only “commercial advertising or promotion.”

Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1382-83 (5th Cir. 1996); see also TMI Inc. v.

Maxwell, 368 F.3d 433, 436 n.2 (5th Cir. 2004) (stating that “[t]his Court has previously

determined that §43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1), which addresses false and

misleading descriptions, only applies to commercial speech”) (citing Procter & Gamble Co. v.

Amway Corp., 242 F.3d 539, 547 (5th Cir. 2001), abrogated on other grounds by Lexmark Int’l,

Inc. v. Static Control Components, Inc., 572 U.S. 118, 134-37 (2014)).

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otherwise indicated, the following discussion in parts B.1 and B.2 focuses on

Alliance and Coalition’s logos. We separately address the district court’s

injunction as to Coalition’s name in part C, infra.

1.

On appeal, Coalition disputes the district court’s conclusion that

Alliance’s composite mark is legally protectable. “To be protectable, a mark

must be distinctive, either inherently or by achieving secondary meaning in

the mind of the public.” Am. Rice, 518 F.3d at 329 (citations omitted). We reject

Coalition’s arguments.

First, Coalition claims summary judgment was improper on this point

because fact issues exist as to whether Alliance obtained its mark “by a false

or fraudulent declaration” under 15 U.S.C. § 1120. Even assuming this

argument is pertinent here, 9 it fails. Coalition’s only evidence is Alliance’s 2012

PTO declaration stating that, to the best of Alliance’s knowledge, “no other

person has the right to use such mark in commerce either in the identical form

thereof or in such near resemblance thereto as to be likely … to cause

confusion[.]” See 15 U.S.C. § 1051(b)(3)(D) (requiring this verification with

trademark application). Coalition suggests this declaration was fraudulent

because, in 2012, Alliance was “fully aware” Coalition was using its own mark.

But Coalition misreads the declaration, which states only that Alliance

9 Coalition points to no authority suggesting that whether a mark was fraudulently

obtained under 15 U.S.C. § 1120 is relevant to whether a mark is “distinctive,” the touchstone

for validity in a section 1114 infringement claim. See Nola Spice, 783 F.3d at 537 (citing Wal-

Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210-11 (2000)). Even if it were, however, we

note that Coalition raised fraudulent procurement under § 1120 in a separate counterclaim

that was dismissed by the district court. Coalition’s appellate briefing neither mentions this

ruling nor explains why it was incorrect, thus abandoning the issue. Yohey v. Collins, 985

F.2d 222, 224-25 (5th Cir. 1993); FED. R. APP. P. 28(a)(4). Consequently, we doubt that

Coalition’s fraud claim is pertinent to the distinctiveness of Alliance’s mark, and we also

doubt the issue is properly before us. Nonetheless, we reach the issue because Coalition

raised it in opposing summary judgment and because it is easily resolved.

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believed in 2012 that no one else had the “right” to use its mark or any

confusingly-similar mark. The record is undisputed that Alliance believed it

had the exclusive right to use its marks in 2012—otherwise, why would

Alliance have sued in 2008 to stop Coalition from using its marks? The 2012

declaration does not remotely create a fact issue as to whether Alliance

obtained its mark by fraud. See, e.g., Meineke Disc. Muffler v. Jaynes, 999 F.2d

120, 126 (5th Cir. 1993) (explaining that a fraudulent registration claim

requires proof “by clear and convincing evidence that the applicant made false

statements with the intent to deceive the licensing authorities”).

Second, Coalition argues that Alliance offered no evidence that its mark

was distinctive, and therefore legally protectable, and that fact issues persist

on that issue. We disagree. Among other evidence, Alliance offered undisputed

evidence that it registered both of its marks with the PTO in 2013—its word

mark on May 7, 2013, and its composite mark on June 11, 2013. The

registration of Alliance’s composite mark with the PTO “is prima facie evidence

that the mark[ ] [is] inherently distinctive.” Nola Spice, 783 F.3d at 537 (citing

Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th Cir. 2010);

15 U.S.C. § 1057(b)). 10 To be sure, Coalition could have offered evidence “to

10 Unlike its composite mark, Alliance’s word mark was registered under section 2(f)

of the Lanham Act, which allows registration based on evidence that the mark has “become

distinctive” based on “proof of substantially exclusive and continuous use thereof as a mark

by the applicant in commerce for five years before the date on which the claim of

distinctiveness is made.” 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin, Inc. v. Ishtar Skin

Care Prods., Inc., 745 F.3d 877, 882 (8th Cir. 2014). “[T]he presumption of validity that

attaches to a § 2(f) registration includes a presumption that the registered mark has acquired

distinctiveness, or secondary meaning, at the time of its registration.” Id. at 882-83 (citations

omitted). While this presumption differs from the presumption of inherent distinctiveness

enjoyed by Alliance’s composite mark, see, e.g., Nola Spice, 783 F.3d at 537 n.1, here we

consider only Alliance’s composite mark. See, e.g., Igloo Prods. Corp., 202 F.3d at 817

(explaining that the prima facie presumption arising from a composite mark’s registration

“pertains to the whole mark … rather than to any individual portion of the mark”) (citing In

re Nat’l Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985); In re Bose Corp., 772 F.2d 866, 873

(Fed. Cir. 1985)) (emphasis in original).

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overcome the presumption of inherent distinctiveness that accompanies

[Alliance’s] registration[.]” Nola Spice, 783 F.3d at 542 (citing Amazing Spaces,

608 F.3d at 234). But Coalition offered no evidence concerning the inherent

distinctiveness of Alliance’s composite mark; rather, it offered evidence

concerning Alliance’s word mark only (specifically, evidence of similarly-

named organizations outside Louisiana). Such evidence has nothing to do with

the central inquiry governing the inherent distinctiveness of Alliance’s

composite mark—namely, whether the mark’s “design, shape or combination

of elements is so unique, unusual or unexpected in this market that one can

assume without proof that it will automatically be perceived by customers as

an indicator of [the] origin” of Alliance’s services, and whether Alliance’s logo

“was capable of creating a commercial impression distinct from the

accompanying words.” Nola Spice, 783 F.3d at 541 (quoting Amazing Spaces,

608 F.3d at 232, 243-44) (internal quotation marks omitted); see also Seabrook

Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)

(setting forth analysis governing inherent distinctiveness of design marks). 11

Consequently, Coalition failed to rebut the presumption that Alliance’s

11 Alliance also argues on appeal that the unrebutted evidence showed its marks have

achieved secondary meaning—such as evidence that Alliance has continuously used its

marks for nearly fifty years in connection with hundreds of Louisiana elections in a variety

of advertising media. See also, e.g., Alliance for Good Gov’t, Inc. v. St. Bernard Alliance for

Good Gov’t, Inc., No. 96-CA-0635, at *6 (La. App. 4th Cir. 12/18/96); 686 So.2d 83, 86 (holding

that, for purposes of Louisiana trademark law, the name “Alliance for Good Government” has

acquired secondary meeting “[g]iven the length of time that [Alliance] has been in existence”

and given that “there is obviously a great amount of name recognition and/or goodwill

associated with the name ‘Alliance for Good Government’”). We need not reach the issue of

secondary meaning, however, given the unrebutted presumption of distinctiveness attaching

to Alliance’s mark by virtue of its PTO registration.

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composite mark was inherently distinctive and therefore legally protectable.

The district court properly granted summary judgment on this point.

2.

Coalition also contests the summary judgment ruling that Coalition’s use

of its logo created a likelihood of confusion with Alliance’s composite mark.

To prove infringement, a plaintiff “must show that the defendant’s use

of the mark ‘creates a likelihood of confusion in the minds of potential

customers as to the ‘source, affiliation, or sponsorship’” of the product or service

at issue. Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack

Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008) (quoting Westchester Media v.

PRL USA Holdings, Inc., 214 F.3d 658, 663 (5th Cir. 2000)). The required

showing is a “probability” of confusion, not merely a “possibility.” Xtreme

Lashes v. Xtended Beauty, 576 F.3d 221, 226 (5th Cir. 2009) (citing Smack

Apparel, 550 F.3d at 478). This Circuit considers the following eight

nonexhaustive “digits” to assess likelihood of confusion:

(1) strength of the mark; (2) mark similarity; (3) product or service

similarity; (4) outlet and purchaser identity; (5) advertising media

identity; (6) defendant’s intent; (7) actual confusion; and (8) care

exercised by potential purchasers.

See generally, e.g., Am. Rice, 518 F.3d at 329 (citing Oreck Corp. v. U.S. Floor

Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)); Xtreme Lashes, 576 F.3d at 227

(citing Smack Apparel, 550 F.3d at 478). “‘The absence or presence of any one

factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion

need not be supported even by a majority of the … factors.’” Am. Rice, 518 F.3d

at 329 & n.19 (quoting Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d

145, 150 (5th Cir. 1985)). While likelihood of confusion typically presents a

contested fact issue, “summary judgment may be upheld if the … record

compels the conclusion that the movant is entitled to judgment as a matter of

law.” Smack Apparel, 550 F.3d at 474 (citing Beef/Eater Rests., Inc. v. James

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Burrough, Ltd., 398 F.2d 637, 639 (5th Cir. 1968)). In its ruling, the district

court found that the first six digits pointed strongly towards a likelihood of

confusion; that there was no evidence as to the seventh digit (actual confusion);

and that the eighth digit (care exercised by potential purchasers) did not seem

applicable. We agree with the district court’s ruling as to the parties’ logos.

Strength of Mark. The district court found that “Alliance has a very

strong mark[.]” We agree. In assessing the strength of Alliance’s composite

mark, we look to two factors. First, we consider where the mark falls on a

spectrum of distinctiveness ranging from “generic, descriptive, [or] suggestive”

to “arbitrary and fanciful”—with the strength of the mark increasing as “‘one

moves away from generic and descriptive marks toward arbitrary marks.’” Am.

Rice, 518 F.3d at 330 (quoting Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc.,

725 F.2d 336, 346 (5th Cir. 1984)); see also, e.g., Xtreme Lashes, 576 F.3d at

227 (discussing spectrum) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763, 768 (1992)). 12 Second, we consider “the standing of the mark in the

marketplace.” Am. Rice, 518 F.3d at 330 (citing Sun Banks of Fla., Inc. v. Sun

Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th Cir. 1981)).

Both factors support the strength of Alliance’s composite mark. On the

distinctiveness spectrum, the dominant feature of the logo—the stylized bird—

is suggestive. See, e.g., Xtreme Lashes, 576 F.3d at 227 (explaining that “[i]t is

12 A generic term “refers to the class of which a good is a member” and receives no

trademark protection. Xtreme Lashes, 576 F.3d at 227 (citing Two Pesos, 505 U.S. at 768). A

descriptive term “provides an attribute or quality of a good,” and may be protected only if it

has acquired secondary meaning. Id. A suggestive term “suggests, but does not describe an

attribute of the good; it requires the consumer to exercise his imagination to apply the

trademark to the good.” Id. (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d

786, 791 (5th Cir. 1983)). Arbitrary or fanciful terms “bear no relationship to the products or

services to which they are applied.” Amazing Spaces, 608 F.3d at 241 (quoting Zatarains, 698

F.2d at 790-91). Suggestive, arbitrary, and fanciful terms, “because their intrinsic nature

serves to identify a particular source of a product, are deemed inherently distinctive and are

entitled to protection.” Xtreme Lashes, 576 F.3d at 227 (quoting Two Pesos, 505 U.S. at 763).

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proper to give more weight to the distinctive portions of a mark and less weight

to unremarkable or generic portions”) (citing In re Dixie Rests., Inc., 105 F.3d

1405, 1407 (Fed. Cir. 1997)). The image of the bird—which Alliance considers

to be an eagle—is not “intrinsic” to the services of a good-government

organization promoting preferred candidates, which would be characteristic of

a merely generic or descriptive feature. See, e.g., Am. Rice, 518 F.3d at 330

(explaining that “the image of a girl icon being used to sell rice is not intrinsic

to rice as a product”). Instead, the audience for Alliance’s endorsements must

“exercise some imagination” to associate the logo’s bird symbolism with

Alliance’s services. See, e.g., Xtreme Lashes, 576 F.3d at 227 (explaining that

“a suggestive term … requires the consumer to exercise his imagination to

apply the trademark to the good”). Moreover, as explained, Alliance’s

composite mark enjoys an unrebutted presumption of distinctiveness 13 due to

its PTO registration, see Nola Spice, 783 F.3d at 537, further enhancing the

strength of the mark. See, e.g., Amazing Spaces, 608 F.3d at 237 (explaining

that PTO registration constitutes prima facie evidence “that the registrant has

the exclusive right to use the registered mark in commerce with respect to the

specified goods or services”); 15 U.S.C. §§ 1057(b) & 1115(a); see also, e.g., Am.

Rice, 518 F.3d at 330 (relying on presumption of validity from PTO registration

as a factor in mark strength). 14 Finally, as to the standing of Alliance’s mark

13 We again note that Alliance’s word mark enjoys an unrebutted presumption that it

had secondary meaning when registered. See 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin,

745 F.3d at 882-83. Thus, to the extent that Alliance’s name is separately relevant to the

strength of Alliance’s composite mark, the name’s presumed secondary meaning under

section 1052(f) also supports the strength of the mark. See, e.g., Viacom Int’l v. IJR Capital

Investments, LLC, 891 F.3d 178, 193 (5th Cir. 2018) (finding mark at issue strong “because

it has acquired distinctiveness through secondary meaning”).

14While Alliance does not argue the point, it appears from the record that Alliance’s

marks are eligible for incontestability status. See 15 U.S.C. § 1065 (providing an owner’s right

to use a mark “shall be incontestable,” if the mark “has been in continuous use for five

consecutive years subsequent to the date of … registration”). Incontestability furnishes

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in the marketplace, it is undisputed that Alliance has used its mark for some

fifty years to promote candidates in yearly elections in a variety of Louisiana

advertising media. See, e.g., Sun-Fun Prods. v. Suntan Research & Devel. Inc.,

656 F.2d 186, 190-91 (5th Cir. Unit B Sept. 1981) (considering duration of use

and promotion of the mark in assessing standing of the mark in the

marketplace). Coalition offers no argument on appeal to counter these indicia

of strength. We agree with the district court that the evidence points to the

strength of Alliance’s mark.

Mark Similiarity. The district court found that the two composite marks

“looked exactly alike,” strongly supporting likelihood of confusion. We agree.

In assessing mark similarity, we “compar[e] the marks’ appearance,

sound, and meaning.” Elvis Presley Enters. Inc. v. Capece, 141 F.3d 188, 201

(5th Cir. 1998). “Similarity of appearance is determined on the basis of the

total effect of the designation, rather than on a comparison of individual

features,” but “courts should give more attention to the dominant features of a

mark.” Xtreme Lashes, 576 F.3d at 228 (internal quotation marks and citations

omitted); see also, e.g., Sun-Fun Prods., 656 F.2d at 189 (noting the “well-

established proposition that similarity of design stems from the overall

impression conveyed by the mark and not a dissection of individual features”)

(citations omitted). The inquiry focuses, not on whether two marks are

“conclusive evidence” of the registrant’s exclusive right to use the mark, id. § 1115(b), but

does not relieve a plaintiff from his burden of proving infringement. KPO Permanent Make-

Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004). Incontestability does,

however, preclude an infringement action from being “defended on the grounds that the mark

is merely descriptive.” Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985).

It also shows strength of the mark. See, e.g., Am. Rice, 518 F.3d at 330 (noting in the strength-

of-mark analysis that mark at issue was “incontestable”). The record reflects that Alliance’s

two marks were registered in May and June of 2013. We express no opinion on whether

Alliance’s marks satisfy the additional requirements of section 1065. See, e.g., 15 U.S.C.

§ 1065(3) (requiring, inter alia, filing an affidavit with the Director within one year of

expiration of the five-year period).

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identical in every respect, but on “whether, under the circumstances of the use,

the marks are sufficiently similar that prospective purchasers are likely to

believe that the two users are somehow associated.” Capece, 141 F.3d at 201

(citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. c (1995)); see

also, e.g., Xtreme Lashes, 576 F.3d at 229 (“Confusion of origin, not the identity

of marks, is the gravamen of trademark infringement”) (citing KPO Permanent

Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004)).

To cut to the chase: Alliance and Coalition have the same logo. Same

shape (rectangular). Same lines in the same place (two parallel, horizontal

lines over and under the bird). Same arrangement of words (one big word above

the top line; three smaller words below the bottom line). Same colors (one, blue

on a white background; the other, white on a blue background). And, of course,

the same birds. Not similar birds; the same birds—with the same down-pointed

beak, gazing over the same wing (the right), sporting the same number of

identically-stylized feathers (forty-three). As Alliance’s brief succinctly puts it,

“Coalition … uses a virtual copy of Alliance’s trademarked logo[.]” It is no

answer that Coalition’s name is slightly different from Alliance’s

(“COALITION” instead of “ALLIANCE”; “BETTER” government instead of

“good” government), or that the two logos use obverse color schemes. Rather

than focusing on “a comparison of individual features,” the district court

correctly focused on the “total effect” of the logos and on their “dominant

features.” Xtreme Lashes, 576 F.3d at 228. The district court could not have

said it better: “It looks like if [you] place one over the other[,] it would be

virtually identical. Maybe exactly identical.”

We must focus, of course, not merely on whether the marks are identical,

but on whether the virtually-identical marks are used in a manner that

prospective “purchasers” of the two organizations’ services (i.e., voters who rely

on Alliance and Coalition endorsements) are “likely to believe that the two

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users are somehow associated.” Capece, 141 F.3d at 201. Here we also find the

evidence uncontested and overwhelming. It is undisputed that Alliance and

Coalition work in the same field (elections), operate in the same market (New

Orleans), use the same advertising channels (newspapers, sample ballots,

flyers), and sometimes endorse the same or opposing candidates.

Consequently, there is no question that the overall similarity of the marks, in

the context of their use, creates a likelihood in the minds of voters that the two

organizations are “somehow associated.” Capece, 141 F.3d at 201.

Finally, we observe that Coalition attempted to distinguish the two

logos—not by appearance, design, color, or font—but by the birds’ species:

DISTRICT COURT: They look exactly alike to me, the two birds.

COUNSEL: […] [N]o, they really aren’t, your Honor, if you look at

the wing span. The wing span of the eagle is different from the

hawk. It’s much larger and it fans out, and that’s just the way the

hawk looks.

COURT: I’ll tell you, unless my eyes are deceiving me, … those

two look exactly alike. They even look like the same feathers, same

number of feathers, same arrangement, head is facing the same

way, the same beak. I don’t know if you call them – I don’t know

technically what kind of bird it is, but whatever they are, they look

exactly alike to me.

COUNSEL: Well, they’re both birds of prey; one is an eagle and

one is a hawk.

COURT: Okay.

COUNSEL: And when we filed with the Secretary of State to get

our font, we said it was a hawk. We were represented by a hawk,

not an eagle.

We agree with the district court: the birds are identical. Whether that bird is

a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk),

or some other bird, we need not determine.

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Product or service similarity. “‘The greater the similarity between the

products and services, the greater the likelihood of confusion.’” Xtreme Lashes,

576 F.3d at 229 (quoting Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628

F.2d 500, 505 (5th Cir. 1980)). The district court found the services provided

by the two organizations—endorsement of candidates—are “exactly the same.”

On appeal Coalition offers no response. The district court was correct.

Outlet and purchaser identity. The district court found that the outlet

and purchaser identity for the two organizations was the same, and again

Coalition offers no argument to the contrary. We agree with the district court.

The undisputed evidence shows that Alliance and Coalition both target New

Orleans voters, often through the same local channels. The greater the overlap

between the outlets for, and consumers of, the services, the greater the

potential for confusion. See, e.g., Exxon, 628 F.2d at 505 (finding similarity of

products where both plaintiff and defendant were involved in “car care”); cf.

Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 262 (5th Cir. 1980)

(explaining that “[d]issimilarities between the retail outlets for and the

predominant consumers of plaintiff’s and [defendant’s] goods lessen the

possibility of confusion, mistake, or deception”).

Advertising media identity. The district court found that the two

organizations advertised on behalf of candidates “in the same or similar

media.” Coalition again fails to dispute this finding. We agree with the district

court. The undisputed evidence shows both organizations advertised in New

Orleans newspapers using the same means, such as sample ballots in the

newspaper and flyers distributed by mail or by hand. “[A]dvertising in similar

media [i]s an indication that consumers might be confused as to the source of

similar products.” Am. Rice, 518 F.3d 332 (brackets added); see also, e.g.,

Xtreme Lashes, 576 F.3d at 229 (inferring similar advertising and marketing

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channels where both parties targeted the same class of buyers using “print

advertisements, direct mailings, and Internet promotion”).

Defendant’s intent to infringe. “‘[I]f the [challenged] mark was adopted

with the intent of deriving benefit from the reputation of (the plaintiff,) that

fact alone may be sufficient to justify the inference that there is confusing

similarity.’” Chevron Chem. Co. v. Voluntary Purchasing Grps., Inc., 659 F.2d

695, 703-04 (5th Cir. Unit A Oct. 1981) (quoting Amstar Corp., 615 F.2d at 263)

(brackets added). The district court found that, while there was no evidence of

“actual intent to infringe,” Coalition’s logo “was certainly intended to mimic,

and largely mimic[s] … Alliance’s logo.” In response, Coalition argues this issue

should not have been resolved on summary judgment because Alliance did not

introduce evidence of intent to infringe.

The district court correctly inferred from the striking similarity between

the marks that Coalition’s later mark was adopted “with the intent of deriving

benefit from [Alliance].” Chevron, 659 F.2d at 704. “‘[A]s soon as we see that a

second comer in a market has, for no reason that he can assign, plagiarized the

‘make-up’ of an earlier comer, we need no more[.]’” Id. (quoting American

Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 563 (2nd Cir. 1953)).

Coalition’s own evidence bolsters this conclusion. At oral argument, Coalition

drew our attention to a 1992 version of its logo featuring a slightly different

stylized bird. But the mark challenged here is Coalition’s 2008 mark, which

features a newer iteration of the bird exactly like Alliance’s. “[W]e can think of

no other plausible explanation for such behavior” than Coalition’s intent to

benefit from Alliance’s pre-existing reputation. Chevron, 659 F.2d at 704.

Actual confusion. Alliance admitted, and the district court

acknowledged, that there was no evidence of actual confusion. On appeal

Coalition relies heavily on this point, to no avail. “Although actual confusion is

the ‘best evidence’ of confusion, it ‘is not necessary to a finding of likelihood of

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confusion.’” Am. Rice, 518 F.3d at 333 (quoting Amstar, 615 F.2d at 263); see

also, e.g., Exxon, 628 F.2d at 506 (explaining that “evidence of actual confusion

… is not essential to a finding of likelihood of confusion”) (citation omitted).

Care exercised by potential purchasers. The district court did not analyze

this factor and Coalition does not address it on appeal. See, e.g., Smack

Apparel, 550 F.3d at 483 (explaining that, “[w]here items are relatively

inexpensive, a buyer may take less care in selecting the item, thereby

increasing the risk of confusion”). We need not consider this factor, since no

one factor is dispositive, Am. Rice, 518 F.3d at 329, and since the balance of

the factors point overwhelmingly in Alliance’s favor.

***

In sum, we agree with the district court that Alliance established

likelihood of confusion as a matter of law. See, e.g., Viacom, 891 F.3d at 192

(affirming summary judgment on likelihood of confusion even though “every

digit” of confusion did not weigh in movant’s favor) (emphasis in original). We

therefore affirm the district court’s injunction as to Alliance’s composite mark.

C.

We modify the district court’s injunction in one respect. The injunction

restrains Coalition from using “the Coalition Marks,” which are defined to

encompass not only Coalition’s logo, but also its “designation ‘Coalition for

Better Government.’” To the extent the injunction restrains Coalition from

using the name “Coalition for Better Government” in connection with

endorsing candidates or its other activities, we find the injunction overbroad.

Based on our own review of the record, we conclude that Coalition’s use of its

trade name (as distinct from its logo) does not create a likelihood of confusion

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with Alliance’s differently-worded trade name. 15 In other words, Coalition may

continue to use its name—provided it disassociates the name from its current

logo or develops a different logo that does not create confusion with Alliance’s

composite mark. We therefore modify the injunction only to the extent that it

restrains the use of Coalition’s name. We leave the injunction intact in all other

respects. See, e.g., Wynn Oil Co. v. Purolator Chem. Corp., 536 F.2d 84, 86 (5th

Cir. 1976) (modifying injunction on appeal by deleting one subsection).

IV.

For the foregoing reasons, we AFFIRM the district court’s summary

judgment ruling, but MODIFY the injunction to restrain only the use of

Coalition’s logo.

AFFIRMED AS MODIFIED

15 See, e.g., Holidays Inns, Inc. v. Holiday Out in Am., 481 F.2d 445 (5th Cir. 1973)

(affirming conclusion that “Holiday Inn” and “Holiday Out” were not confusingly similar); see

also, e.g., W.L. Gore & Assoc., Inc. v. Johnson & Johnson, 882 F. Supp. 1454 (D. Del. 1995)

(concluding “‘Easy Slide’ is dissimilar from ‘Glide’ in appearance and sound, tipping the

balance against a finding of likelihood of confusion”), aff’d, 77 F.3d 465 (3rd Cir. 1996); Coca-

Cola Co. v. Essential Prods. Co., 421 F.2d 1374, 1376 (C.C.P.A. 1970) (holding Coca-Cola and

Coco Loco not confusingly similar because, inter alia, “the articulate utterance of one mark

is far from identical with that of the other mark”); see also generally 4 McCarthy §23:30

(collecting cases holding word marks not confusingly similar). We reach this conclusion based

solely on the record before us and offer no view regarding Alliance’s pending opposition to

Coalition’s PTO application, which was stayed pending this lawsuit.

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