American Airlines Sues Expedia Over ADD ON ADVANTAGE Mark

"Expedia sued by American Airlines over ADD ON ADVANTAGE mark"

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.

Parody of Music Names in Branding

"picture of a music concert representing trademark parody"

Parody is something that seeps into the branding process from time to time. Depending on the good or service, parody of a recognizable music name could be appropriate. Esquire magazine highlighted the ten most memorable music parody brands. Our favorite was DON A HENLEY AND TAKE IT EASY for clothing.

In trademark law, there is nothing illegal about drawing inspiration from something for a name. Where the line is crossed is when the manifestation of that inspiration is likely to cause confusion with another party’s trademark. The Trademark Trial and Appeal Board has found on multiple occasions that the right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use is likely to cause confusion.

What this presumes is that the music name functions as a trademark in the first place, and trademarks cannot exist in a vacuum. Trademarks must attach to a good or service. In the case of music names that most likely means that the band or musician name attaches to primarily entertaining services. This is significant because trademark rights are limited to the goods or services they are used in connection with plus what would be considered a natural zone of expansion.

Unfortunately for DJ Khaled, that means his trademark infringement complaint filed against Curtis Bordenave and Business Moves Consulting Inc. d/b/a Business Consulting over trademark applications filed for DJ Khaled’s 18-month old son’s name ASAHD, ASAHD COUTURE, and A.S.A.H.D. A SON AND HIS DAD for clothing and magazine publishing services will likely fail. DJ Khaled named his son an acronym A.S.A.H.D., which means A SON AND HIS DAD.

This acronym has not been used with any goods or services, so there are no trademark rights associated with the acronym. Moreover, whatever notoriety DJ Khaled has in his name, that does not transfer to his son’s name. What his case demonstrates is that you need to know thy enemy when you select a name, which we have to assume the defendants fully anticipated in this case.