Friday, November 30, 2007

The American Trial Lawyers Association faces trademark infringement lawsuit from Association of Trial Lawyers of America

When one group of trial lawyers files a lawsuit against another group of trial lawyers, who wins? This sounds like a lawyer joke where the punchline is “Who cares.”

The Washington Post today ran a story about a trademark infringement lawsuit filed by the American Association for Justice, the group formerly known as the Association of Trial Lawyers of America. See Jeffrey H. Birnbaum, “A Case of Trial Lawyers v. Trial Lawyers,” The Washington Post, November 30, 2007, at D01 (link here).

For many years, the Association of Trial Lawyers of America (ATLA) was one of the largest and most politically powerful trial lawyer organizations in the U.S. representing the political interests of its roughly 56,000 members. After years of being the brunt of attacks from politicians and big corporations as an organization of greedy “trial lawyers,” the ATLA decided to change its name to the American Association for Justice (AAJ) (because while politicians and big business can attack an organization representing greedy trial lawyers, they cannot possibly attack an organization dedicated to justice).

Around the same time as the name change, however, a man named J. Keith Givens apparently formed a new competing “trial lawyer” organization named The American Trial Lawyers Association (“TheATLA”) and began soliciting AAJ members to join.

The lawsuit was filed by the AAJ against TheATLA and J. Keith Givens on November 15, 2007 in the U.S. District Court for the District of Minnesota. See American Association for Justice v. American Trial Lawyers Association et al, Case No. 0:2007cv04626 (D. Minn.). The lawsuit seeks injunctive relief to prevent TheATLA from using the name and confusingly similar acronym. The suit also seeks profits from using the name, treble damages, and attorney’s fees (in “typical trial lawyer fashion” as the WaPo article eloquently notes).

AAJ currently holds two registered trademarks for the mark ATLA, both of which issued in 1976: 1) a service mark directed to providing seminars and meetings for attorneys and 2) a collective membership mark indicating membership in the organization. It should be noted that AAJ continues to use the domain name as its home page.

It is interesting that the AAJ fought its own legal battle over its former name many years back. The AAJ adopted its former name only after the American College of Trial Lawyers (“ACTA”) successfully blocked the organization from calling itself the American Trial Lawyers Association – instead settling for the Association of Trial Lawyers of America.

TheATLA may have anticipated its own potential battle with the ACTA regarding its name. The WaPo article states that the ACTA filed its own lawsuit to prevent TheATLA from using the name American Trial Lawyers Association. However, federal court records seem to indicate that it was TheATLA that actually filed suit against the ACTA – possibly a declaratory judgment action that its name does not infringe upon ACTA’s name. On November 20, 2007, TheATLA filed a lawsuit in the U.S. District Court for the Middle District of Alabama against the ACTA. See The American Trial Lawyers Association, Inc. v. American College of Trial Lawyers, Case No. 1:2007cv01024 (M.D. Ala.). Perhaps Givens feels that this time around TheATLA will be more successful than the original ATLA was against the ACTA.

TheATLA’s battle over its name is also playing out at the USPTO. On March 20, 2007, TheATLA filed two Section 1(b) intent-to-use applications for two different versions of the above name and logo of its organization (here and here). Each application covers association services promoting the interests of lawyers and arranging and conducting educational conferences. The USPTO issued non-final office actions on June 28, 2007, refusing to register the marks under Section 2(d) because of a likelihood of confusion with AAJ’s aforementioned ATLA registrations.

Given the obvious likelihood of confusion between ATLA and TheATLA, the only chance of success on the part of TheATLA against AAJ’s registered marks (both in the USPTO and in the federal action) is to argue that that AAJ’s registered ATLA marks should be cancelled under 15 U.S.C. §1064 on the grounds that the marks were abandoned by AAJ when it changed its name.

Indeed, TheATLA may have grounds for arguing that the AAJ’s registrations should be cancelled. Under §45 (15 U.S.C. §1127), a mark is deemed to be “abandoned” if its use has been discontinued with intent not to resume such use. The intent not to resume may be inferred from the circumstances and nonuse for 3 consecutive years shall be prima facie evidence of abandonment. The “use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. AAJ made it clear that it will no longer call its organization by its old name – and thus have no need for the acronym ATLA. AAJ will counter by arguing that its website ( and some other remaining uses of the acronym constitute use of the mark.

However, even if TheATLA were successful in cancelling AAJ’s registrations, this does not necessarily translate into TheATLA continuing to use its name, because the organization must still contend with AAJ’s §43(a) grounds for relief. Although AAJ may no longer go by the name Association of Trial Lawyers of America or the acronym ATLA, there is still a long-standing association between the two names and the well-known trial lawyers group. As such, the use of a confusingly similar name and acronym by TheATLA is very much likely to cause confusion or cause mistake, or to deceive the public as to the affiliation, connection, or association of TheATLA with the organization formerly known as ATLA or confusion or mistake as to the origin, sponsorship, or approval of TheATLA by the organization formerly known as ATLA.

One thing is for certain – with trial lawyers on both sides, it is sure to be an interesting and contentious case.

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