IP Law Daily, TRADEMARK NEWS: San Francisco sues Oakland over its new airport name, (Apr 22, 2024)

By Linda Panszczyk, J.D.

San Francisco's complaint claims that Oakland's proposal to include “San Francisco” at the front of its new airport name will cause confusion.

The city and county of San Francisco has filed suit against the city of Oakland, accusing it of trademark infringement, false designation of origin, and unfair competition. According to the lawsuit, the Metropolitan Oakland International Airport (“Oakland Airport”) seeks to increase passengers and profits by rushing to unlawfully incorporate San Francisco International Airport’s (“SFO”) trademarked name into its own. The complaint indicates that Oakland Airport’s actions ignore SFO’s longstanding protected mark, brand, and identity, violate federal and state intellectual property law, and disregard the legal infringement and consumer confusion its actions create (City and County of San Francisco v. City of Oakland, filed April 18, 2024).

Through the Port of Oakland, the city of Oakland owns and operates an airport that for years has used the name the “Metropolitan Oakland International Airport.” On March 29, 2024, Oakland issued a press release abruptly announcing its proposal to change the name to “San Francisco Bay Oakland International Airport” (the “Infringing Mark”) and published an agenda for the Oakland Board of Port Commissioners to vote on the proposal at its regular meeting roughly two weeks later, on April 11, 2024. Defendant notified San Francisco of the intended name change by contacting the SFO's Airport Director only 30 minutes before Oakland issued the press release. At the Board of Port Commissioners meeting on April 11, 2024, the Commission unanimously approved the ordinance to rename the airport on first read.

According to the complaint, Oakland has publicly stated that it is merely making a geographic reference and that its main purpose for the name change is to increase passenger traffic at its airport, create jobs, and boost economic activity in Oakland. While San Francisco supports these goals and wants Oakland and its airport to thrive for the benefit of the region, San Francisco opposes Oakland's proposed name change that infringes on San Francisco's long-standing and incontestable registered trademark name for SFO. According to the complaint, in particular, Oakland's proposal to include “San Francisco” at the front of its new name, closely followed by the words “International Airport” is problematic, as it will almost certainly cause confusion among consumers and the public generally. The potential for confusion will be particularly acute for international travelers who may not speak or read English and comprise an essential part of SFO’s consumer base.

According to the complaint, travelers will very likely be confused and book tickets to the unintended airport, thinking that the “San Francisco Bay Oakland International Airport” is SFO and arrive in the wrong place, a mistake leading to missed flights and connections, among other problems. Other travelers may think there is a business relationship between SFO and Defendant’s airport, when there is not. Use of the Infringing Mark, and the potential for confusion and mistakes, has already started with at least one airline, the complaint says.

The complaint includes claims for federal trademark infringement, false designation of origin, and unfair competition violating the Lanham Act as well as common law trademark infringement. San Francisco is seeking injunctive relief to prevent Oakland‘s intended use of the Infringing Mark, which violates the San Francisco‘s recognized rights in its federally registered service mark SAN FRANCISCO INTERNATIONAL AIRPORT. Further, because at least one airline has already started using the Infringing Mark, San Francisco also requests an order prohibiting any continued use of the Infringing Mark and requiring the payment of compensatory damages to San Francisco. In connection with the requested relief, San Francisco further seeks to recover attorney fees and costs.

The Case is No. 3:24-cv-02311.

Attorneys: Michael E. Dergosits (Dergosits & Noah LLP) for City and County of San Francisco.

News: Trademark CaliforniaNews