A Legion Trademark Dispute. Why the 60 Year Wait?

Boston can be a sleepy little legal community at times.  And a good trademark case isn’t likely to wake-up too many lawyers, but I took notice when I saw this story about an interesting trademark case (well, interesting to me at least) taking shape in Washington, D.C. involving a 60 year old Massachusetts non-profit corporation.

Apparently, The American Legion (“TAL”), which owns a trademark in the term “The American Legion,” has decided to sue The Greek-American Legion of Massachusetts, Inc. (“TGALM”) in the D.C. federal district court (where TAL is based) alleging infringement over TGALM’s use of the mark.  According to the complaint, TAL contacted TGALM several times in 2010 about its use of the mark, but the parties were unable to reach a resolution.  So naturally TAL eventually filed suit in D.C. (thereby robbing TGALM of the opportunity it had to at least file suit in its home turf of Massachusetts).  Such is often the danger of a tit-for-tat exchange when the opposing party is located in a different state.

Anyway, what makes the case interesting is that TAL has an exclusive statutory right under  36 U.S.C. 21705 to use The American Legion name, which it has been using since 1919—a long time, to be sure.  However, TGALM has, according to records at the Secretary of the Commonwealth’s office, been in existence in Massachusetts since 1946 and has (presumably) been using its name continuously during that time.  Interestingly, that little tidbit didn’t make into TAL’s complaint.  The omission wasn’t accidental.

Obviously, given that this is a blog post only, I haven’t researched the specifics of the case and the statute upon which TAL relies (and when it passed), but it sure seems to me that TAL is awfully late to the party to now contest TGALM’s use of The American Legion mark.  I can easily see how it could take a few years in some circumstances for a trademark holder to become aware of another user of its mark, but over 60 years?  Someone at TAL wasn’t doing their job—to put it mildly—to police the mark’s use.  And even though one of TAL’s main registrations didn’t issue from the USPTO until 2000, it has used the mark since 1919.  (And why the long delay in registering it anyway?)

Even a basic trademark search report, which typically culls over the names of companies registered in all 50 states, should have picked-up on the mark a long time ago.  Did TAL ever do one?  Even a free search in various online search engines might have picked-up on the mark.  Has anyone at TAL ever used—what’s that little search engine called again—oh yeah … Google?  Somebody at TAL was asleep for a long time.

The point is this:  Notwithstanding TAL’s claim to exclusive statutory use, no right is absolute and there may be strong defenses available to TGALM such as waiver, estoppel, and laches.  Laches in particular may be a strong argument.  Laches is a defense that amounts to unreasonable delay by a plaintiff in bringing suit and pursuing a claim such that it significantly prejudices the other party.  In trademark law, if the other party has built a substantial amount of goodwill in its mark, then the plaintiff may be out of luck because it sat on its hands for too long.

And after 60 years of TGALM using its own name, I think it’s reasonable to conclude that it built a great deal of goodwill in the name of its organization.  Even if TAL only recently became aware of TGALM, the question is whether it should have known about the organization much sooner.  Besides, TAL would still have to show “likelihood of confusion” and it would be interesting to see if there was any evidence of actual confusion given the long co-existence of the two organizations—some courts do look at that factor.  It will be interesting to see if TGALM will be forced to change its name by the district court.  Unless of course there’s some type of confidential settlement.  That would just be a bummer to trademark geeks like me.

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