The US District Court for the Northern District of California granted the city and county of San Francisco a preliminary injunction enjoining the Port of Oakland from using the name or trademark “San Francisco Bay Oakland Airport” based on the strength of San Francisco’s mark and the proximity of goods and services. City and County of San Francisco v. City of Oakland, Case No. 3:24-cv-02311-TSH (N.D. Cal. Nov. 12, 2024) (Hixson, J.)
The city and county of San Francisco own a registered trademark for the SAN FRANCISCO INTERNATIONAL AIRPORT covering airport services. The Port of Oakland owns the OAKLAND INTERNATIONAL AIRPORT mark, also covering airport services. Based on a research study, the Port of Oakland contended that there was a lack of awareness among tourists visiting the San Francisco Bay Area, commonly known as the Bay Area, that Oakland is located in the Bay Area. The Port of Oakland notified San Francisco of its intent to rename its airport the San Francisco Bay Oakland International Airport. San Francisco objected to the name change as confusingly similar to its trademark. San Francisco sued Oakland and the Port of Oakland for trademark infringement, unfair competition/false designation of origin, and common law trademark infringement. San Francisco also filed a motion for a preliminary injunction (PI) to prevent the Port of Oakland from using the name.
Ruling on the PI motion, the district court started with whether the Port’s use of “San Francisco Bay Oakland International Airport” was likely to cause confusion. Courts in the Ninth Circuit evaluate likelihood of confusion using the nonexhaustive Sleekcraft factors (9th Cir. 1979), which include the following:
- Strength of the mark.
- Proximity of the goods.
- Similarity of the marks.
- Evidence of actual confusion.
- Marketing channels used.
- Type of goods and the degree of care likely to be exercised by the purchaser.
- Defendant’s intent in selecting the mark.
- Likelihood of expansion of the product lines.
San Francisco offered several theories supporting likelihood of confusion. San Francisco argued that the new name implied an affiliation, connection, or association between the Oakland airport (OAK) and the San Francisco airport (SFO). San Francisco also argued that the new name would cause customers to confuse OAK with SFO and cause customers to buy tickets to the wrong airport, which constituted point-of-sale and initial interest confusion.
Addressing the strength of the mark, the district court determined that although San Francisco’s trademark was descriptive, it was commercially strong. The SAN FRANCISCO INTERNATIONAL AIRPORT is widely known among travelers and appears on signs in and around the airport. San Francisco has used its trademark for decades and invests millions of dollars annually to promote the SAN FRANCISCO INTERNATIONAL AIRPORT trademark. The court found that San Francisco’s brand was routinely ranked among the top 25 airport brands.
In terms of the proximity of the goods, the district court found that the services were identical, as both names were used in connection with an airport and related services.
Turning to the similarity of the marks, the district court found that San Francisco’s trademark was “entirely subsumed” in the Port of Oakland’s new name, meaning it was impossible to say, write, or read the new Oakland airport name without also saying, writing, or reading San Francisco’s trademark. The district court noted that the new name began with the first two words of San Francisco’s trademark, which heightened the confusion. The district court explained that the inclusion of the entirety of San Francisco’s mark in the name of a second nearby airport was highly likely to imply affiliation, connection, or association to the typical airline customer. The district court concluded that including “San Francisco” in the name of the Oakland airport when there was in fact no affiliation, connection, or association between the Oakland and San Francisco airports was contrary to how airports in the United States are normally named and was highly likely to be confusing.
The district court found San Francisco’s evidentiary showing of initial interest confusion unpersuasive, however, and found that San Francisco was unlikely to succeed on that theory because it offered no evidence that the Port of Oakland did anything with San Francisco’s trademark to affect prospective travelers’ internet searching other than including the trademark in the new name.
Analyzing point of sale confusion in the context of online purchases, the district court found an additional factor outside of the Sleekcraft test to be particularly important. The district court looked at the labeling and appearance of advertisements and their surrounding context on the screen displaying the results page from online searches. Searches on flight booking websites showed that SFO and OAK were clearly different airports, in different places. Based on this evidence, the district court found that point of sale confusion seemed implausible.
The district court then determined that San Francisco would suffer irreparable harm to its trademark if the Port of Oakland was allowed to continue using its new name based on the fact that San Francisco had spent millions to develop a brand for its airport, made substantial investments in airport infrastructure and facilities to provide a first-class experience, and won many awards and recognitions. OAK, on the other hand, was much smaller than SFO, with more limited infrastructure, and was rated worse in terms of customer satisfaction.
The district court ultimately concluded that San Francisco was likely to prevail on its claim based on affiliation, connection, or association confusion, and therefore prohibited the Port of Oakland from using, displaying, or registering SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT in connection with any product or services.
