The stereotypical trademark bullying case is the big company picking on the small company. But as we saw yesterday, a big company suing a smaller company for trademark infringement does not necessarily mean the big company is a bully. And what we will talk about today demonstrates that trademark bullying can occur between equally sized companies.
American Airlines sued Expedia for trademark infringement because of its ADD ON ADVANTAGE program. Expedia’s program allows users to add on a discounted hotel booking after using the site to book airfare or a rental car. It is descriptive of a feature of its program. American Airlines alleged that this mark is likely to cause confusion with its AADVANTAGE mark for its customer loyalty program.
ADVANTAGE is a highly diluted mark when used in connection with a customer loyalty program. Click HERE to see BOB search for the ADVANTAGE mark “customer loyalty programs” and HERE for “frequent flyer services.“ The TROP ADVANTAGE mark is in the same travel industry as the AADVANTAGE mark and so are several other ADVANTAGE marks. Yet, American Airlines is willing to co-exist with these other marks.
Trademark bullying occurs when one party attempts to assert rights in a trademark beyond what it is reasonably entitled to assert. When a trademark owner, regardless of its size, attempts to assert broader rights, the trademark bully label is appropriate. Unfortunately, the label is in name only given there is no legal consequence to being a trademark bully.
American Airlines attempts to justify its trademark infringement claim by characterizing Expedia’s service as a bundling program similar to what American Airline’s offers under its AADVANTAGE program. Although the law is unsettled, some Courts have held that harm is to be presumed when a likelihood of confusion finding is made. American Airlines should hope that Texas is one of those courts because it is highly unlikely that it will suffer any actual harm from Expedia’s use of the AD ON ADVANTAGE mark.