Please note:
A. The Facts in this Opinion are fictional. The names of the parties, their businesses, and their
trademarks and registrations are not intended, and should not be understood, to refer to or
reference any individual living or dead or any institution, extant or defunct. Any resemblance to
any real person, organization, product or situation is purely coincidental.
The 12th Circuit authority is imaginary. The Conclusions of Law do not represent the opinion of
the International Trademark Association (“INTA”) or any of its members. No inference should
be drawn about any actual person, organization, product or situation on the basis of the Facts or
Conclusions of Law in this Opinion. The Opinion was drafted without knowledge of any
person’s claims with respect to any trademarks or other claims of rights that are the same as or
similar to those mentioned in the Opinion, and INTA takes no position with respect to any
person’s ownership of, or rights to, such trademarks or other claims of rights.
B. Frequently, issues in a case that conceivably could be appealed are not. This Circuit, like
most, will not entertain arguments that are not fairly comprehended within the formal
“Issues on Appeal,” which in this case are:
Issue No. 1: Did the district court err in concluding that Defendant/Cross-Appellant’s ALLAMERICAN FOUNDERS’ ADVOCATES mark, its logo, its slogan and its acronym for a
political advocacy group were likely to be confused with Plaintiff/Appellant’s AMERICAN
FOREFATHERS FOUNDATION mark, its logo, its slogan and its acronym for a political
advocacy group?
Issue No. 2: Did the district court correctly find the First Amendment a defense to
Plaintiff/Appellant’s trademark infringement claims?
INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF UTOPIA
-----------------------------------------------------------------x
:
AMERICAN FOREFATHERS FOUNDATION :
:
Plaintiff, :
:
v.
:
:
ALL-AMERICAN FOUNDERS’ ADVOCATES :
:
Defendant. :
:
-----------------------------------------------------------------x
11-Civ. 12,351 (LAW)
Before: Hon. Lara Addams Whelan, U.S.D.J.
This is an action under Sections 32(1) and 43(a) of the Trademark Act, 15 U.S.C. §§
1114(1), 1125(a) for service mark infringement. Plaintiff American Forefathers Foundation
(“AFF”) seeks preliminary injunctive relief against Defendant’s continued use of its name “AllAmerican Founders’ Advocates” (“AAFA”), its logo and its campaign admonition “Vote AllAmerican!”
Background of Proceedings
On May 23, 2011, a letter from counsel for AFF was delivered to the executive offices of
AAFA. It has become known as “the cease and desist letter.” It reads as follows:
Colt, Cody, James & Masterson
10 Paradise Boulevard, Suite 1001
Eden, Utopia 11191A
May 23, 2011
BY HAND DELIVERY
All-American Founders’ Advocates
2419 Paradise Sound Boulevard
Paradise City, Utopia
Dear Sirs or Madames, as the case may be:
We represent AMERICAN FOREFATHERS FOUNDATION®. You no doubt
are familiar with the organization, inasmuch as you have copied its name and
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
modus operandi. That name is now a federally registered service mark, Reg. No.
4,137,624, for “educational and advocacy services and programs in the fields of
political science, governmental economics, and social theory.” More registrations
are being pursued.
Earlier this month, you formed a political advocacy group, “All-American
Founders’ Advocates,” which is strikingly similar in sound, appearance and
meaning to the AMERICAN FOREFATHERS FOUNDATION mark. Your party
has promised to produce an “All-American Agenda” to counter our client’s
“American Agenda,” and is reliably reported to be designing campaign logos
around the slogan “Vote All-American,” which is an obvious copy of our client’s
rallying cry “Vote American.”
Our respective clients are political action groups with diametrically opposing
points of view on almost every issue. Indeed, the respective entities’ positions are
more adverse than those of the two mainstream Federalist and Populist parties.
Yet your organization has chosen names, logos and slogans that so closely
resemble those of our client that confusion of entities is not only likely, but
virtually certain. Accordingly, we formally demand that your client cease all use
of ALL-AMERICAN FOUNDERS’ ADVOCATES, the phrase “All-American,”
and the slogan “Vote All-American!”
Please respond to the undersigned within two weeks of receipt.
Very truly yours,
Colt, Cody, James & Masterson
By:
/s/ FamIII
Frank Albert Masterson III
On June 8, 2011, AFF’s counsel received the following letter:
Sharps & Remington
11 Court Street
Eden, Utopia 19111F
6 June 2011
Via First Class Mail
Colt, Cody, James & Masterson
10 Paradise Boulevard, Suite 1001
Eden, Utopia 11191A
ATTN.: Frank A. Masterson III, Esq.
Dear Fam:
We have been requested by All-American Founders’ Advocates to respond to
your letter of May 23, 2011.
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
My client and I believe that anyone who cannot distinguish between “Forefathers”
and “Founders” and/or “American” and “All-American” must be the sort of
cretin to which your client appeals so strongly.
In the first place, if we believed there would be confusion, it would not be among
our members, virtually all of whom are distinguished by an average or greater
degree of intelligence.
In the second place, to the extremely limited extent such confusion might, even by
mistake, introduce a glimmer of intelligent thought to your client’s supporters, our
client’s name will have performed a useful public service. It seems to us that your
client is blissfully unaware of, among many things, the First Amendment and the
right of political free speech. We believe the Courts are deaf to neither, so that is
where we will see you if your client chooses to pursue its ridiculous accusations.
Very truly yours,
/s/ RiSh
Rife Sharps
The Court immediately referred this correspondence to the Utopia Bar Association’s Standing
Committee on Litigation Conduct for consideration of a possible violation of Local Rule 3.2 that
attorneys of this Court shall conduct their business with civility and decorum. Mr. Sharps has
not appeared in this proceeding as an attorney for Defendant.
On July 5, 2011, AFF filed and served a complaint (dated July 4), along with a motion for
a temporary restraining order pending hearing of its motion for preliminary injunction brought
on by its accompanying motion for an order to show cause why the motion for preliminary
injunction should not be heard July 12. The requested TRO and P.I. were supported by
voluminous declarations and a 53 page memorandum of law.
On July 7, at a conference in chambers, the Court, with the reluctant agreement of
counsel for AAFA, set July 14 as the response date, July 18 as the reply date and July 20 as the
date for commencement of evidentiary hearings, which would conclude with oral argument July
22. Counsel for AAFA advised the Court on July 14 that it required discovery to respond
adequately, and requested postponement of all dates.
After another conference that day, the Court ordered that the matter would be disposed of
by a trial to the Court the week of September 12, 2011. All testimony by both sides would be by
affidavit or declaration, provided the declarant could be cross-examined either by deposition or
live at trial (but not both). An expedited discovery period was provided, with appropriate
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
cutoffs. All documentary discovery and production would have to be completed by August 8,
and all submission of testimonial declarations, cross examination (if not reserved), and briefing
would be filed, with proof of either electronic or hand service by August 26. A Master was
appointed to dispose of all interim motions and disputes, and she has been kept very busy doing
so. Hearing and argument were had the week of September 12.
In accord with Fed. R. Civ. P. 52(a)(1), the Court sets forth its findings of fact and
conclusions of law. Any findings of fact mischaracterized as conclusions of law should be
considered findings of fact for purposes of review (which seems inevitable), and vice-versa.
Findings of Fact
1.
Plaintiff characterizes itself as a public interest research and education group.
Defendant characterizes it as a “reactionary, right-wing, Pavlovian, think tank.” Plaintiff was
organized in November of 2008 under the Utopia Not-for-Profit Organizations Law, under the
name of “Revere’s Riders.” Its purpose at the time was to educate the public and to influence
lawmakers to conform to its economic and political principles, purportedly based on the
fundamental values of “our American forefathers, as applied to present day society and
economics.” Revere’s Riders formulated an “American Agenda,” and endorsed Congressional
candidates from both parties who subscribed to that agenda. In fact, it endorsed 87 candidates
for the House of Representatives and 19 for the Senate during the campaigns leading up to the
mid-[Presidential] term elections of 2010. Of the 106 endorsed candidates, 99 were running
under the Federalist Party banner, while seven ran on the Populist side of the ballot. None
explicitly ran as “Revere’s Riders,” but with 92 of those endorsed by “the Riders” being elected,
the Revere’s Riders’ “American Agenda” became a political doctrine with which most elected
officials reckon. Of the 92 Revere’s Riders-endorsed who were elected, 88 were Federalist
candidates, while four were Populist candidates. The influence of Revere’s Riders’ American
Agenda upon the legislation of the 211th and 212th Congresses has been apparent -- and both
acclaimed and decried.
2.
In early March 2011, at a Revere’s Riders leadership conclave at the Heaven
Resort and Conference Center in Utopia City, the organization announced three new initiatives
under which it would operate. First, the organization name would be changed to “American
Forefathers Foundation” (“AFF”). AFF would continue its research, reporting and “white paper”
activities, and would endorse candidates running on Federalist, Populist, and appropriate third-
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
party slates for the House, the Senate, Vice-President and President in the 2012 election.
Endorsement would be offered only to candidates whose platforms reflect at least 70%
adherence to the principles of the American Agenda. This, admittedly, was an effort to
institutionalize what had been a phenomenon of the 2010 mid-[presidential] term election.
Second, endorsement would carry with it certain stipends to the endorsed candidates’ campaign
funds, as well as significant AFF advertising and publicity activities for all endorsed candidates.
Third, AFF would engage aggressively and extensively in fund-raising to carry out its activities.
3.
On May 1, 2011, an “invitation-only” gathering of very wealthy Populist Party
supporters from industry, labor, and the entertainment field convened at the exclusive Angel
Island Club near the mouth of Paradise Sound. Three days later, the All-American Founders’
Advocates (“AAFA”) was born amid a flurry of press-releases and seemingly breathless media
announcements. AAFA, like AFF, is organized under the Utopia Not-for-Profit Organizations
Law. If anything can be considered a “me too” initiative, the AAFA is it, except it bespeaks the
other end of the political spectrum – what AFF characterizes as the “extreme socialist left.” Its
“Agenda” is called the “Founders’ Credo,” and its rallying cry is “Vote All-American.” The
ideological schism is well illustrated by the platforms (“American Agenda” and “Founders’
Credo”) of the respective parties, now that they have been formulated.
a.
On the subject of taxation, AFF proposes: a flat rate, 15% personal income tax on
all income above periodically defined poverty levels, with deductions for state and local
income and property taxes; VAT taxes on business. AAFA espouses: graduated taxes up
to 77% of income in excess of a defined floor, sales taxes, business income taxes, estate,
inheritance, and gift taxes.
b.
On the subject of entitlements, AFF stands for tax sheltered (actually, deferred)
income for money put into pensions and retirement funds and for mandatory health
insurance; AAFA stands for enhanced social security and universal free medical care.
c.
On national defense, AFF advocates universal government service for a two-year
term, such service to be military, civil, or charitable; AAFA prefers a United World
Peacekeeping force under the command of the United World Nations, and compulsory
UWN mediation of disputes between nations.
d.
With respect to immigration, AFF supports either (i) confinement with mandatory
labor programs, or (ii) deportation of non-legal immigrants; AAFA would limit
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
deportation of non-legal immigrants to those with criminal records, and full medical,
unemployment, and support benefits to non-criminal, non-legal immigrants.
These are typical exemplars of each party’s thirteen plank platform. Other than free elections,
the two entities stand for very little in common.
4.
On January 6, 2009, Revere’s Riders filed in the United States Patent and
Trademark Office an intent-to-use application to register the mark AMERICAN
FOREFATHERS FOUNDATION for “educational services and advocacy programs in the fields
of political science, governmental economics, and social theory” in International Class 41. On
May 17, 2011, Trademark Registration No. 4,137,624 issued to AFF for AMERICAN
FOREFATHERS FOUNDATION for the services for which it had sought registration in the
class it had designated. AFF has also adopted a “logo” [Exhibit 1 Annexed] which it uses for
numerous purposes, and has applied to register for the same educational services and advocacy
programs. The application has been published, and AAFA has extended time to oppose.
5.
The AFF charter states the purpose of the organization to be “to promulgate the
principles that compelled our forefathers to establish the ordered society which has led to the
United States’ stature as a bastion of freedom, independence and moral strength.” The AAFA
platform states that it “embraces the principle of the Declaration of Independence that all people
are created equal, and strives for equal treatment of and rights for all American native and
naturalized residents, from the richest to the poorest.” AAFA also has adopted a “logo”
[Attached Exhibit 2], which it is in the process of “rolling out” in its literature, merchandise and
endorsement materials.
6.
Thus far, 147 Federalist nominees and 16 Populist nominees for the House and
Senate have accepted AFF endorsement (and stipends), and 100 Populist nominees and 3
Federalist nominees for the House or Senate have accepted the AAFA endorsement and stipends.
A few more endorsement announcements are expected. No Presidential candidate has yet agreed
to such endorsement or accepted a stipend from either organization. Typically, posters for the
endorsed legislative candidates read:
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
American Forefathers
Foundation [logo] endorses
Federalist Party Candidate
All-American Founders’
Advocates [logo] endorse
Populist Party Candidate
for SENATOR
for CONGRESS
HILLARY EDISON
ALEX NOVAK
[Photo]
[Photo]
Vote American!
Vote All-American!
[annexed Exhibit 3]
[annexed Exhibit 4]
The respective logos of the parties are illustrated in annexed Exhibits 1 (AFF) and 2 (AAFA).
7.
It has struck the Court, as apparently it has AFF, that one can detect a certain
appearance of derivation in virtually all the “party-identity” work AAFA has done. This has not
passed unnoticed by counsel for AFF, as is illustrated by the following cross-examination of
AAFA Executive Director Kenneth Moorehead during the hearing:
Q.
Mr. Moorehead, when you first organized the All-American Founders’
Advocates, did you pattern it after any other organization? A. Define “pattern,” please.
Q.
Was there at that time another organization carrying out activities similar to those
you foresaw for the All-American Founders’ Advocates Party? A. Absolutely not.
Q.
Were you at the time familiar with the American Forefathers Foundation? A.
Certainly. Our organization is designed to be the antidote for the poison they spew.
Q.
And were you not intending to go about your task in the same way the Forefathers
Foundation went about its? A. Absolutely not, unless you consider light and darkness
the same.
Q.
Are you the light or the dark? A. Why the light, of course.
Q.
And you went about spreading this light using the same media and tactics the
Forefathers were using, did you not? A. To eradicate poison, one must go where the
poison is. That is what we did.
Q.
I take it your answer is “yes”? A. My answer speaks for itself.
Q.
Were you involved in selecting the name All-American Founders’ Advocates?
A. Intimately.
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
Q.
Is there some reason you chose the word “American”? A. We are an American
organization, in the sense that the word American usually is understood, at least in this
country. It is a word that resonates quite well with most American voters, or so we
believe.
Q.
Is that the reason The American Forefathers Foundation chose “American”? A. I
had always believed that it was to attempt to legitimatize their poison by presenting it as
traditional national values.
Q.
And is that why your group included the word American? A. No. We used in
the context of “All-American” to indicate the inclusiveness of our organization. You see,
American, the way your client uses it means the rich, powerful and privileged, whereas
we want to stress that we include the workers, the poor, the hungry, the downtrodden –
“All” of our people. Your client is the voice of the overclass, continuing to oppress the
rest of us. We are the voice of those of the overclass who have a conscience, and of
everyone else.
Q.
You also chose to use “Founders,” where my client chose “Forefathers.” Is there
a reason you did not copy “Forefathers” too? A. We didn’t “copy” American. It was
and is a generic word just as apt for our organization as for your client. We chose
“Founders” because we wished to stress that we embody the principles upon which this
nation was built, not just ancestry. “Founders,” like “forefathers,” resonates traditional
American values, and “All-American” and “American” in our respective names
emphasize this resonance. What we are trying to do with our name as a whole is appeal
to the same sensibility, but with a distinctly different, but equally “American,” message.
We believe it is important to appeal initially to much the same public as Forefathers
Foundation because it is the public drawn to this imagery to which we are addressing our
counter-message, at least in part.
Q.
Are you familiar with Lincoln’s Gettysburg Address? A. Pretty much; I can’t
recite it, but I think I can recognize it.
Q.
Do you know the first sentence? A. Oh, now I see. Very clever. “Four score
and seven years ago, our forefathers brought forth upon this continent a new nation:
conceived in liberty, and dedicated to the proposition that all men are created equal.”
And I suppose if the masses were as familiar with it as are we, “forefathers” would
signify “a nation conceived in liberty and dedicated to the proposition that all men are
created equal.” Those are the bedrock principles upon which our party is built, but most
Americans do not remember the Gettysburg Address. We believe that our basic
Constitutional rights and, especially, the Bill of Rights, are better summoned up to the
average citizen and voter by the word “founder” than by “forefather.”
Q.
If you had concluded that “forefather” better summed up your basic
Constitutional rights and, especially, the Bill of Rights than does the word, “founder,”
would you have adopted that as the name of your party? A. Why not? Both words are
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
historically descriptive of much the same thing, and which one chooses is a question of
nuance.
Q.
Even though there already was an American Forefathers Foundation? A. Of
course; nobody can appropriate a word like “forefathers” and prevent others from using it
to say the same thing. And, certainly we want to be heard by those who are attracted
initially to the Foundation.
Q.
Have you any authority for your view that nobody can prohibit others from using
“forefathers” to indicate their identity? A. You may not have read that far in the Bill of
Rights, but it is the First Amendment.
There are scores more pages of such testimony, but the Court believes this is sufficient to
illustrate why this Court finds AAFA’s principal spokesperson to have been argumentative,
unresponsive, arrogant, condescending, and not very candid in his testimony. He also does not
know his history as well as he pretends. Lincoln said “fathers,” not “forefathers.”
8.
To support its activities, AFF has solicited contributions from its 3.5 million
members, held fund-raising concerts and casino nights, and embarked on an ambitious licensing
program of its logo (Exhibit 1); AFF already has received more than $74.2 million from these
activities, and contemplates making each stipend to endorsed candidates at least $1 million. The
licensed products include caps, T-shirts, sweat shirts, polo shirts, blazers, outer jackets, rain
jackets, dress shirts, blouses, luggage tags, suitcases, travel bags, book bags, canvas shopping
bags, computer bags, leather handbags, notebook covers, and a broad line of glassware and
paperware. AAFA has embarked upon a similar program by licensing its AAFA logo (Exhibit
2).
9.
AFF commissioned Professor Johann Baum of the Utopia State University School
of Political Science to study electronic messages received by each party for possible evidence of
confusion between the two parties. At the suggestion of the Court, AAFA agreed to open certain
of its files to the survey team for its study. Professor Baum and a cadre of his students examined
one thousand randomly selected e-mails received by each of the parties. His findings have been
tabulated as follows.
AFF
AAFA
1,000
1,000
Number commenting on recipient’s views
643
589
Number misattributing views of the other to recipient
189
307
Electronic mail received messages examined
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
Professor Baum also testified that in any survey, up to approximately 10% will give unreliable
answers.
10.
AAFA has introduced a research project undertaken by Dr. Nanette Lutz, PhD of
political marketing at Utopia State University based on the 2008 Election. Basically, she and her
team of business research majors analyzed more than 4,000 political advertisements and pieces
of campaign literature by both Populist and Federalist party candidates. They first analyzed each
ad and campaign piece, and concluded that of the 4,000, 3,758 contained 11,659 statements of
fact the truth of which could be verified. Then they sought to verify them. Their conclusions, in
tabular form as follows:
POPULIST
VERIFIABLE STATEMENTS OF FACT
FEDERALIST
7,320
4,339
% VERIFIED AS TRUE
63%
77 %
% VERIFIED FALSE
31%
19%
6%
4%
% UNVERIFIED or UNVERIFIABLE
At the beginning of the survey, until September 20, Dr. Lutz or her staff informed each campaign
organization of each verified untruth found in its materials. Among the Populists, 23.4% of
those untruths were corrected by or before October 10; among the Federalists, 77.1 % were
corrected.
Conclusions of Law
A.
Because both parties are entities organized under the Utopia Not-for-Profit
Organizations Law, each is expressly capable of suing and being sued.
B.
Because this action is one arising under the trademark laws of the United States,
subject matter jurisdiction arises under 28 U.S.C. § 1338(a).
C.
Because both parties maintain headquarters in Eden within this District, venue lies
in this District pursuant to 28 U.S.C. § 1351(b).
Infringement
D.
Plaintiff’s claim is that Defendant’s ALL-AMERICAN FOUNDERS’
ADVOCATES so resembles Plaintiff’s registered mark AMERICAN FOREFATHERS
FOUNDATION as to be likely to cause confusion, mistake or to deceive in violation of 15
U.S.C. § 1114(1)(a), and that Defendant’s use of its logo [Exhibit 2] and the phrase “VOTE
ALL-AMERICAN!” so resembles Plaintiff’s logo [Exhibit 1] and “VOTE AMERICAN!” as to
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
be likely to cause confusion, or to cause mistake, or to deceive as to the affiliation of AAFA with
AFF, or as to the origin, sponsorship or approval of AAFA’s services by AFF, in violation of 15
U.S.C. § 1125(a)(1)(A).
E.
Each judicial district in Utopia has adopted the following yardstick for measuring
entitlement to preliminary injunctive relief: Movant must demonstrate that it is significantly
more likely than not that it will establish: (i) probability of success on the merits (namely
ownership of the trademark or other protected property (or properties) in question, and likelihood
of confusion); (ii) that Defendant’s continuation of the conduct sought be enjoined will inflict
irreparable injury on Plaintiff; (iii) that the balance of hardships tips in favor of the Plaintiff, and
(iv) that the public interest will be best served by such an injunction. Marshmallow Enterprises
v. Carmichael International, 375 F.3d 1642, 1751 (Par. Cir. 2004).
F.
AFF’s Ownership of its Name, Logo and Slogan.
AMERICAN FOREFATHERS FOUNDATION is a registered service mark of AFF,
which is prima facie proof of its ownership of, and exclusive right to use, the name, subject to
any defense AAFA may establish. 15 U.S.C. §§ 1115(a), 1057(b). In addition, AFF has used its
name continuously since March 17, 2011, and has been identified by that name in the press and
media. While AAFA urges that the mark is merely descriptive and therefore unprotectable, the
Court cannot agree. AMERICAN is descriptive, and FOUNDATION is generic, but
FOREFATHERS is not; our forefathers neither founded nor comprise the party, namely because
they all are long deceased. The Party supposedly stands for the forefathers’ virtues and political
ideas, but even if that is so, it makes the mark as a whole suggestive, since some insight or
imagination is necessary to connect FOREFATHERS in the name of the party with the political
principles of the party. The logo and slogan have been used continuously since their creation by
AFF, and, at times, by media and others nominatively to identify AFF, so even if the mark as a
whole were descriptive, the Court would be compelled to hold that it had acquired secondary
meaning. The Court finds that AFF owns its name, logo and slogan.
G.
Likelihood of Confusion.
In this Circuit, it is customary to determine likelihood of confusion by examining, in
descending order of importance, the following factors: (i) the resemblance of the two marks in
terms of sight, sound and meaning; (ii) the relationship between the goods or services of the
parties in terms of utility, use and trade channels; (iii) the strength, both inherent and acquired, of
11
INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
the mark; (iv) any evidence of actual confusion, or valid surveys indicative of such confusion;
(v) an intent by the newcomer to derive benefit from the original mark’s success; and (vi) any
other factor recognized by this, or any other United States court, as probative of likelihood of
confusion. Bender v. Pretzel Co., 373 F.3d 1384, 1388 (Par. Cir. 2004); Chase v. Eden Motors
Corp., 682 F. Supp. 2d 1946, 1948 (E.D. UA 2010); Knights Errant d/b/a UDOP~IA v. Utopia
State University, 673 F. Supp. 2d 2000, 2006 (E.D. UA 2009); Icon Hotel Organization v.
Uikkon, Ltd., 665 F. Supp. 2d 1812, 1815 (C.D. UA 2008).
(i) the resemblance of the two marks in terms of sight, sound and meaning:
AMERICAN FOREFATHERS FOUNDATION
and
ALL-AMERICAN FOUNDERS’ ADVOCACY
pretty much speak for themselves. In terms of sight, they are distinguishable except, perhaps, at
a glance. In terms of sound, one has ten, the other eleven, syllables, six of which (A-MER-ICAN . . . FOUND) are identical in sound and sequence. They are sufficiently different to be
distinguished by the attentive, but they often will be encountered by persons who are not
especially attentive at the time. In terms of meaning, there is no meaningful difference. ALL
adds little or nothing to AMERICAN outside the context of interscholastic athletics, and that
added meaning makes no sense in the political context. Plainly the resemblance is far closer than
it has any legitimate need to be, and seems sufficient to give rise to confusion among the less
than attentive.
(ii) the relationship between the goods or services of the parties in terms of utility, use
and trade channels: The services of both parties are those of political party support groups, and,
aside from their actual political philosophies, which differ drastically, the services are essentially
identical. There is little or nothing that distinguishes the rendering of one party’s services from
the rendering of the services of the other.
(iii) the strength, both inherent and acquired, of the mark: Inherently, neither
AMERICAN nor ALL-AMERICAN is very distinctive since both are intended to appeal to, and
in a sense identify, the same electorate. FOREFATHERS was, inherently, unique among
political organization names until FOUNDERS came along, and then became significantly
weakened. FOUNDATION is generic for political entities such as these, and thus is inherently
non-distinctive. While there is no statistical or scientific evidence of the acquired strength of
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
either AFF or AAFA at any particular time, the Court cannot doubt that AAFA sapped a great
deal of the inherent and previously acquired distinctiveness from AFF’s name, which had the
natural effect of enhancing likelihood of confusion.
(iv) any evidence of actual confusion or valid surveys indicative of such confusion:
Professor Baum’s project compiles a vast amount of anecdotal evidence, and the Court accepts
that, at least in the areas of capital punishment, abortion and gay marriage, there is very
significant misattribution of the positions of each party to the other party. The Court credits this
evidence as demonstrating confusion levels well above the 10% that Professor Baum testified
“always get things wrong when you do market research.” And the Court can think of no reason
for that confusion other than the similarity of names and marks between the two parties.
(v) an intent by the newcomer to derive benefit from the original mark’s success: This
was one of the principal areas of inquiry in Mr. Moorehead’s cross-examination. The Court
finds his answers to all questions in this area defensive, unresponsive, evasive and, to the very
limited extent they addressed the questions, not credible. The Court concludes on the basis of
the evidence available at this time, that AAFA adopted its name and, to a lesser extent, its logo
and slogan to take advantage of AFF’s developed name and reputation by undermining it by
causing confusion and uncertainty between the parties, and that this effort has been successful.
(vi) any other factor recognized by this, or any other United States court, as probative of
likelihood of confusion: At the hearing, AAFA raised the argument that because the candidates
would be running on the tickets of the two major parties, Populist and Federalist, “if there is any
confusion between AFF and AAFA it will be harmless because voters vote for the individual or
party name, not the endorser.” That is simply not true. Voters can vote for the name or the
party, and there is no way of knowing how many vote either way. Furthermore, if there is
confusion as to whether an individual (or party) has accepted an endorsement by AFF or AAFA,
it well could sway the voter’s decision as to which individual or party name to support with her
or his vote. If either AFF or AAFA believed that confusion would be harmless, the Court cannot
see how this action could be maintained or defended. The parties have fought tooth and nail in
this case; the Court is willing to treat that as expert evidence that endorsement by either Plaintiff
or Defendant matters.
(vii) likelihood of confusion conclusions: The Court concludes: there is a distinct
likelihood of confusion in the minds of American voters between AMERICAN FOREFATHERS
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FOUNDATION and ALL-AMERICAN FOUNDERS’ ADVOCATES; there is a strong
likelihood of widespread confusion between the parties’ two red, white and blue logos and
between their slogans “VOTE AMERICAN!” and “VOTE ALL-AMERICAN!”; and there is
significant likelihood of confusion between AFF and AAFA.
H.
Irreparable Injury. Actual confusion is often presumed to be irreparable injury
when it is among consumers; one can only surmise that it is even more so among the electorate.
Here, it is self-evident without any presumption. The natural result of confusion as to whom
AFF and AAFA endorse, and what principles those endorsed by either stand for, will be to
change votes. Changed votes necessarily will change vote counts from what the voters intended,
and will very likely change the composition of Congress and, possibly, the Presidency. These
would be history-altering events, which will destroy the democracy intended by the Constitution.
It is injury to our country of the gravest sort, and it is not even arguably correctable after the fact.
I.
Balance of Hardships. If AAFA continues on its chosen course, it will very
severely dilute and weaken the strength of AFF, which the Court believes is its goal. If AAFA
were to change its name to [ALL] AMERICAN PEOPLE’S ADVOCATES, much of the
confusion and doubts about AFF’s political stance will sort itself out. Not all, but much. The
balance of hardships tips strongly in the interest of corrective action.
J.
The Public Interest. See “Irreparable Injury,” letter H above.
K.
The Court concludes that under the Trademark Law of the United States, AFF is
entitled to an injunction pendente lite restraining AAFA from any use of any name incorporating
the word FOUNDERS’ or any synonym thereof.
The Free Speech Defense
L.
The First Amendment to the Constitution provides “Congress shall make no law
. . . abridging the freedom of speech . . . .” AAFA argues that the Constitution is especially
sensitive to political speech, and that the relief sought by AFF is pursuant to law made by
Congress. AFF argues that free speech does not embrace the right to impersonate another; if it
did, identity theft would be rampant and unchecked. Both positions rest on over-simplification
of a difficult question.
M.
Congress plainly has made the laws sought to be enforced in this action. That is
why they are to be found in the United States Code. These laws have been invoked thousands of
times without any challenge that they abridge freedom of speech. The Court has found no cases
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in which the right of free speech has blocked enforcement of the trademark law when the speech
was not political. The Court has found three cases that appear to have upheld free speech as a
defense to trademark infringement in the context of political speech. Lighthawk, the
Environmental Air Force v. Robertson, 812 F. Supp. 1095, 1099 (W.D. Wash. 1993); American
Family Life Ins. Co. v. Hagan, 266 F. Supp. 2d 682, 700-01 (N.D. Ohio 2002); and
Protectmarriage.com v. Courage Campaign, 680 F. Supp. 2d 1225, 1229 (E.D. Cal. 2010).
None is binding upon this Court, and while respectful consideration is due any judicial opinion
from any court in any other District, this Court’s respectful consideration is that whatever led
those courts to their conclusion remains, in each case, unexplained, so the respect due those
decisions is scant.
N.
The closest analogous case this Court has found that is binding upon it is New
York Times Co. v. Sullivan, 376 U.S. 254 (1964), the majority holding of which is that the First
Amendment “. . . prohibits a public official from recovering damages for a defamatory falsehood
relating to his official conduct unless he proves that the statement was made with ‘actual malice’
-- that is, with knowledge that it was false or with reckless disregard of whether it was false or
not.” 376 U.S. at 279-80. However, AFF is a political organization, not a public official; AAFA
is a political organization, not an advertiser or publisher; what is sought is injunctive relief, not
damages; the goal of this case is to mitigate confusion among the electorate, not (primarily,
anyway) to protect AFF’s reputation; and the applicability of “actual malice,” or whatever the
scienter element may be (if there is one at all) is unclear in this situation.
O.
From the facts set forth in paragraphs 9 and 10, the Court concludes that truth is
not terribly prized in political rhetoric and is considerably less so valued by Populists, with
whom most AAFA-endorsed candidates are aligned, than by the Federalists, with whom most
AFF-endorsed candidates are aligned. The Court concludes that the goal of AAFA in engaging
in its challenged conduct was and is to confuse the electorate as to the identity of both it and AFF
and as to what each stands for. It also concludes that AAFA is achieving those intended goals, at
least in part. However, this is an election, and it is easily observable that current elections are
plagued, perhaps even characterized, by deliberate lying and misrepresentation. The confusion
implanted here does not impress the Court as any more remedy-worthy than much of the falsity,
half (or lesser)-truths, and misinformation routinely circulated by present-day political parties
and politicians about their adversaries (and, on rare occasions, themselves, such as, for example,
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INTA’s 2011-2012 Saul Lefkowitz Moot Court Competition
a particular candidate has been an “Oxbridge Scholar,” when, in fact, he merely studied abroad
(in Rome), at his family’s expense, his junior year in college. In short, deplorable as AAFA’s
conduct is, it seems no more so than the campaign lying which, the Court gathers, is almost
routine today. It does not appear to violate the rules of the game as it is presently played.
P.
The test in Sullivan was whether the statements in issue there were made “with
‘actual malice’ -- that is, with knowledge that it was false or with reckless disregard of whether it
was false or not.” Confusion is not a belief in a falsehood, it is merely uncertainty as to the true
identity of, in this case, AFF and AAFA. It can lead to an incorrect belief, but the confusion can
be sorted out from public materials readily available. In Sullivan, the truth was less easily
ascertainable. The consequence of AAFA’s acts, almost certainly intended, is to muddy the
waters among the presumably significant portion of the electorate too lazy, or unconcerned, to
squint to see the truth. The Court is disinclined to shackle the Constitutional right of free speech
merely to protect those sought to be exploited by AAFA’s confusing conduct from their own
inattention or laziness. It appears that Caveat Emptor is the rule of the day when it comes to
political speech, and – at least in this instance – the Court finds the remedy sought by AFF will
lead to more burdensome restraints on the free exchange of ideas in the political context than will
suppressing the obstacles to clear understanding erected by AAFA. Reluctantly, the Court
denies AFF’s motion for preliminary relief on First Amendment grounds.
The Court recognizes the potential importance of this decision to both the parties and
American Election law. It is assumed that AFF will appeal, and that AAFA may cross-appeal.
The parties are directed to appear before the Court at 9:00 a.m., October 31, 2011 to make any
and all requests they may have to expedite an interlocutory appeal pursuant to 28 U.S.C. §
1292(a)(1). The Court will hasten certification of the record and take whatever other steps will
facilitate immediate appeal that are within its power.
Eden, Utopia
October 26, 2011
/s/
Lara Addams Whelan
U.S.D.J.
Pursuant to Local Rule 99.15-A, this document has been prepared with 1.5 line spacing to save paper consumption. THIS
NOTICE MUST BE POSTED AT THE END OF ALL COURT DOCUMENTS UNLESS TO DO SO WOULD CAUSE
THE DOCUMENT TO HAVE ANOTHER PAGE.
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Exhibit 1
Exhibit 2
American Forefathers
Foundation
endorses
Federalist Party Candidate
HILLARY
EDISON
for SENATOR
Vote American!
Exhibit 3
All-American Founders’ Advocates
endorse
Populist Party Candidate
ALEX NOVAK
for CONGRESS
Vote All-American!
Exhibit 4