A Rose By Any Other Name Would Smell As Sweet - or- How To Change Your Company Name Without Abandoning Your Rights To The Old Name

In a recent case, American Association for Justice v. The American Trial Lawyers Association, a federal district court held that an organization that changed its name took sufficient steps to avoid abandoning rights in its old name. Shakespeare long ago stated, “What’s in a name? That which we call a rose by any other name would smell as sweet…” This holds true just as much now as it did in Shakespearian times: Even though your organization has changed its name, you would want to protect the old name because the public may still associate it with your organization. This recent case provides guidelines on how a company can preserve rights in its old name when it adopts a new company name.

The Association of Trial Lawyers of America began in 1946 and claims to be “the world’s largest trial bar with members throughout the United States.” In 1976, the association registered the trademark “ATLA” in the United States Patent and Trademark Office (“USPTO”). In 2006, the Association of Trial Lawyers of America voted to change its name to “American Association for Justice” (“AAJ”).

The AAJ decided to gradually transition to its new name. Despite its official name change on December 11, 2006, the AAJ continued to use the “Association of Trial Lawyers of America” and “ATLA” marks as follows:

• The AAJ’s new website continuously displayed the language “Formerly the Association of Trial Lawyers of America.”
• Beginning as early as January 2007, AAJ identified itself in advertisements and seminar solicitations as “American Association for Justice Formerly the Association of Trial Lawyers of America.”
• Some AAJ staff members were using the “formerly” language in their signature blocks in e-mails.
• In June 2007, AAJ sent solicitation letters to lapsed members which identified AAJ as “formerly the Association of Trial Lawyers of America (ATLA®)” and envelopes for the mailing displayed a seal which included the “ATLA” and “Association of Trial Lawyers of America” marks.
• The AAJ continued to license its ATLA mark to at least one third-party licensee.
• The AAJ’s websites, www.atla.org and www.atlanet.org, were maintained and they directed users to the new website, www.justice.org.
• The AAJ continued to sell books that displayed the “ATLA” mark.
• A video for recruiting new members that was produced prior to the name change was re-produced after the name change, and the video displayed both the “ATLA” and the “American Association for Justice” marks.

In January 2007, soon after the AAJ’s name change, Keith Givens, a longtime AAJ member, reserved the domain name theatla.com and several other domain names consisting of combinations of the terms “American Trial Lawyers Association.” Givens also incorporated under the name “The American Trial Lawyers Association, Inc.” and filed applications in the USPTO to register the trademarks “The American Trial Lawyers Association” and “THEATLA.” In June 2007, Givens sent membership solicitation letters which referred to the association as “TheATLA.”

The AAJ filed suit against Givens in the U.S. District Court in California claiming that Givens’ use of the mark “ATLA” constituted trademark infringement and “cybersquatting.” Givens asserted as a defense that the AAJ abandoned its rights in the “ATLA” name when it changed its name to “American Association for Justice.”

The court stated that abandonment requires “a complete cessation or discontinuance of” the trademark; and, a “single bona fide use of a mark” is sufficient against a claim of abandonment. The court further noted that because abandonment constitutes a forfeiture of a property right, it must be “strictly proved” by the party alleging abandonment.

The court held that the statements that the AAJ was “formerly the Association of Trial Lawyers of America” capitalized on the goodwill and source identification of the AAJ’s old marks and constituted bona fide use.

The court further held that the use of the “ATLA” mark by at least one licensee, sales of publications bearing the “ATLA” mark, the continued use of the www.atla.org and www.atlanet.org websites and, the display of the ATLA mark in the recruiting video, all constituted continued bona fide use of the AAJ’s prior marks.

Therefore, the court held that the AAJ did not abandon its old trademarks and it granted summary judgment in favor of the AAJ and against Givens. The case will now proceed to trial on the claims of trademark infringement and “cybersquatting.”

This case is helpful for any organization that is considering, or has just completed, a name change. The ATLA decision provides guidelines on how an organization that adopts a new name can continue to maintain rights in its old name(s). Steps such as using “formerly known as” language on a website and in correspondence and maintaining websites with domain names that include the old names can help preserve rights in the former names in the event that a competitor later tries to use them.