IP Law Daily, TRADEMARK—M.D. Fla.: Florida locksmith barred from using ‘AAA’ name, (Apr 15, 2016)

By Cheryl Beise, J.D.

The American Automobile Association, Inc. (AAA) established that it was entitled to default judgment on its Lanham Act claims for trademark infringement, dilution, unfair competition, and cyberpiracy against an individual and a locksmith business for unauthorized use of the mark “AAA,” the federal district court in Fort Myers, Florida, has ruled (The American Automobile Ass’n v. AAA Locksmith, Inc., April 14 2016, Steele, J.).

AAA is an auto club organization with over 50 million members in the U.S. and Canada. AAA provides auto repair and maintenance, emergency roadside assistance (including locksmith services), and other automotive-related services and products. It has used its “AAA” trademarks in commerce since 1916 and owns over 100 registered trademarks.

In September 2009, defendants Adam Cooper and Naples, Florida-based AAA Locksmith, Inc., registered the domain name aaalocksmithnaples.com. After sending three cease-and-desist letters to the defendants, AAA filed suit on July 30, 2015, asserting claims under the Lanham Act for trademark infringement, unfair competition and false designation of origin, trademark dilution, and trademark cyberpiracy. Because the defendants failed to answer or otherwise appear in the action, the court deemed as admitted all facts alleged by AAA.

Default judgment. The court determined that AAA alleged sufficient facts to show that its AAA marks were famous for roadside assistance and related services, and that the defendants’ use of the AAA signifier in its locksmith business and domain name to sell similar services created a likelihood of confusion with AAA’s services and reduced the distinctiveness of AAA’s mark, thereby diluting AAA’s trademark. AAA also adequately alleged that the defendants used the AAA marks and the AALOCKSMITHSAPLES.COM domain name in commerce with a bad faith intent to profit from AAA’s famous and distinctive AAA marks. “[C]onsumers who want online information about AAA’s locksmith services would likely assume, erroneously, that such information could be found at Defendant’s AAALOCKSMITHNAPLES.COM website,” the court said.

Injunctive relief. AAA did not seek damages, but only injunctive relief. The court found that AAA was likely to suffer irreparable injury absent a permanent injunction. Infringement by its very nature causes irreparable harm, has no adequate remedy at law, and it is in the public interest to have equitable remedy, the court said.

The court permanently enjoined the defendants from using Internet domain names that contained AAA trademarks, and from using the AAA trademarks “in connection with any signs, websites, domains, social media, advertising, marketing material, corporate logos, and all other material that is available to customers, prospective customers, or the public.” The defendants also were ordered to remove the AAA trademarks from “business name, logos, internet websites, business signage and the like, and to deliver to Plaintiff any product, label, business cards, signs, advertisements, internet domain names (including aaalocksmithnaples.com), and other items from which the AAA trademarks and all other confusingly similar marks cannot be removed.” The defendants were ordered to submit proof of compliance to the court within 30 days.

The case is No. 2:15-cv-00453-UA-CM.

Attorneys: Neil K. Roman (Covington & Burling, LLP) and Samantha Joy Kavanaugh (Akerman LLP) for The American Automobile Association, Inc.

Companies: The American Automobile Association, Inc.; AAA Locksmith Inc.

Cases: Trademark TechnologyInternet FloridaNews