IP Law Daily, TRADEMARK—E.D. Va.: Summary judgment granted in part in American Airlines trademark dispute, (Jun 16, 2023)

By Kevin M. Finson, J.D.

American Airlines failed to show that the operator of several travel agencies has actually used the airlines’ marks.

Summary judgment was largely granted against American Airlines on trademark infringement, counterfeiting, dilution, false association and related claims it brought against the operator of travel agency businesses because after the close of discovery, the federal district court in Alexandria determined that America failed to provide evidence to support its allegations that the relevant defendants had actually used its marks or confusingly similar marks in merely booking customer tickets. American’s theory required too many inferences and no factual support to show use of its marks (American Airlines, Inc. v. Shahi World & Travels, LLC, June 12, 2023, Alston, R.).

American Airlines, Inc. (American) is a well-known airline that owns trademark rights in its name and an associated logo. Sanjay Shastri owned several related entities, including Dream Fly, Inc. (Dream Fly), which together operated as travel agents that, although based in the United States, primarily sold to travelers from India by using numerous websites.

American alleged that Dream Fly had used American’s marks in operating its travel agent business in such a way as to confuse consumers and exorbitantly overcharge them, while holding itself out as representing American or at least allowing consumers to become confused about the relationship. American brought suit for trademark infringement, counterfeiting, dilution, and related claims. After the close of discovery, both parties moved for summary judgment and Dream Fly additionally moved for judgment on the pleadings.

American Airlines’ motion. American sought summary judgment on three of its claims: trademark infringement, trademark counterfeiting, and conspiracy. Reviewing the facts, the court found that it was undisputed that LockMyFare, Inc. had agreed not to use American’s marks in any way that would harm American, that American had received complaints from customers who had assumed that various defendant and non-party entities worked for American, that Dream Fly, Inc. booked tickets for those customers, that the various defendants charged miscellaneous charge orders, and that Google Ads had suspended defendant Sanjay’s account for violating their terms and conditions. However, these facts did not entitle American to judgment as a matter of law because it was disputed whether any of the defendants had actually used American’s marks at all, let alone in a way that would cause confusion. The court denied American’s motion for summary judgment.

Dream Fly’s motion. Dream Fly sought summary judgment on American’s fraud claims, arguing that they were not pleaded with the required specificity. The court held that this argument was waived because it was not brought before or alongside a responsive pleading, but rather had been delayed until after the close of discovery.

Dream Fly also sought summary judgment on the ground that American lacked standing to bring claims based on allegations that its customers were deceived. As to claims for false advertising, fraud and misrepresentation, and under RICO, the court agreed that the parties harmed were the customers, not American, but American had alleged sufficient harm to itself arising from conspiracy claims, so the motion was granted in part and denied in part.

The court further found that while American had stated claims for trademark infringement, cybersquatting, and copyright infringement, after discovery American had failed to identify evidence in the record to support these claims. Summary judgment in favor of the defendants was therefore granted.

The Case is No. 1:20-cv-00017-RDA-WEF.

Attorneys: David Glenn Barger (Greenberg Traurig LLP) for American Airlines Inc. Andrea Clair Harris (McClanahan Powers PLLC) for Shahi World & Travels LLC and Big Travel Help LLC. Lance G. Johnson (Johnson Legal PLLC) for Sam Travels Inc.

Companies: American Airlines Inc.; Shahi World & Travels LLC; Big Travel Help LLC; Sam Travels Inc.

Cases: Trademark TechnologyInternet VirginiaNews