addition of qualifying words “National Mexican American” to plaintiffs “ANTI-DEFAMATION COMMITTEE” trademark did not make confusion between marks unlikely
How later courts described this case
- addition of qualifying words “National Mexican American” to plaintiffs “ANTI-DEFAMATION COMMITTEE” trademark did not make confusion between marks unlikely
- suit for injunction against use of words “anti-defamation” in committee name
Written by the judges who cited it.
The opinion
MacKINNON, Circuit Judge
(dissenting):
I would affirm on the ground that on its face the name “National Mexican-American Anti-Defamation Committee” had sufficient distinguishing characteristics that confusion with “Anti-Defamation League of B’nai B’rith” was not likely to result where “ordinary [people used] ordinary caution,” McLean v. Fleming, 96 U.S. 245, 251 , 24 L.Ed. 828 (1877). I do not disagree with the conclusion that the term “Anti-Defamation League” has acquired a secondary meaning referring to appellant, but the issue before us is whether the names of appellant and appellee are sufficiently alike that there is a likelihood of confusion on the part of the general public or some relevant portion thereof. The names speak for themselves in refutation of appellant’s position on this issue. Of the eleven instances of “actual confusion” cited by the majority, the six news accounts show the consistent use of the identifying term “Mexican-American” when appellee is mentioned, and the remaining instances are more likely isolated examples of individual carelessness than evidence that confusion is probable.
The two New York trial court decisions cited by the majority are of questionable value as precedents. Anti-Defamation League of B’nai B’rith v. American Italian Anti-Defamation League, 54 Misc.2d 830 , 283 N.Y.S.2d 828 (Sup.Ct. 1967), involved the granting of a motion for temporary injunction in a case which was apparently settled before the court could hear the merits of the allegations of confusion. Anti-Defamation League of B’nai B’rith v. Arab Anti-Defamation League, 72 Misc.2d 847 , 340 N.Y.S.2d 532 (Sup.Ct.1972), was a default judgment entered against an association which had failed to appear to defend on the merits. In each case the enjoined names had more elements in common with appellant’s name than does the name sought to be enjoined in the instant case. Furthermore, the Arab group had adopted the symbol “AADL” which was nearly identical to appellant’s symbol.
The majority opinion states that the “nature of the organization is indicated by its use of ‘Anti-Defamation’ in its name” and asserts that the public will therefore tend to consider appellee to be a branch of appellant. However, the mere fact that an organization is the first to engage in a particular field of activity should not enable it to prevent any other organization from indicating to the public that it has similar interests by using a term which is descriptive of that activity. The important consideration is whether when the names of the organizations are considered in their entirety, confusion is probable. Since I do not believe that the names of appellant and appellee are likely to cause confusion, I would affirm the order of the District Court.