Motion for preliminary injunction seeks to protect SFO’s registered trademark and stop Oakland from causing further traveler confusion
SAN FRANCISCO (September 17, 2024) — City Attorney David Chiu filed a motion today for a preliminary injunction in San Francisco’s federal trademark infringement lawsuit against the City of Oakland and Port of Oakland over the renaming of Oakland International Airport (OAK) to “San Francisco Bay Oakland International Airport,” which infringes on San Francisco International Airport’s (SFO) trademark. The motion seeks to prevent further traveler confusion and mishaps that have occurred since the Oakland Board of Port Commissioners approved the infringing name on May 9, despite the objections of San Francisco officials, airlines, regional stakeholders, and Bay Area residents.
“We are already seeing traveler confusion around the use of Oakland’s new name,” said City Attorney Chiu. “This was entirely predictable and preventable. We tried to reason with Oakland officials to avoid litigation and come up with alternative names that would work for all of us. Unfortunately, those efforts were not productive, and we have no choice but to ask the court to step in and protect our trademark. San Francisco has invested millions in making San Francisco International Airport the world class airport it is today. We have built an incredible brand that we must protect. Oakland has a trademark for Oakland International Airport. It should use that and stay away from San Francisco’s brand.”
“We have observed multiple incidents of customer confusion resulting from Oakland Airport’s rebranding,” said SFO Airport Director Ivar C. Satero. “We thank the City Attorney’s Office for taking this action to prevent further customer disservice at both airports.”
Background
SFO began operating in 1927, and the City has owned the U.S. federal trademark registration for San Francisco International Airport® with the first date of commercial use in 1954. The registration has achieved incontestable status under federal law giving the City the exclusive use of the trademark. After decades of investment, SFO has won numerous awards and typically ranks high in customer satisfaction. San Francisco invests millions of dollars annually to promote its airport under the trademarked name, with over $34 million spent in the last ten years alone. The San Francisco International Airport® trademark is tremendously valuable and represents goodwill belonging to San Francisco.
Oakland’s airport was also established in 1927 and has been known by the name and registered federal trademark Oakland International Airport® since at least as early as 1963.
Earlier this year, Oakland officials announced plans to rename Oakland International Airport to “San Francisco Bay Oakland International Airport,” which is too similar to the City’s registered trademark. The renaming appeared to be intentionally designed to capitalize on SFO’s trademark and divert travelers who may be unfamiliar with Bay Area geography and lead them to believe OAK has a business relationship or affiliation with SFO, which it does not.
Just 30 minutes before Oakland announced the renaming, Oakland informed San Francisco officials of its plans. San Francisco objected, repeatedly, warning that travelers would be confused and the name change would result in all manner of travel mishaps to the overall detriment of the public and both airports. Multiple airlines wrote to Oakland voicing their concerns with and objections to the name change. Oakland residents voiced concerns, but on April 11, the Port of Oakland Board of Commissioners first voted to approve the new infringing name. Multiple attempts to engage with Oakland on alternative names and avoid litigation went unanswered, leaving San Francisco no choice but to file its lawsuit to protect its trademark on April 18.
On May 9, the Port of Oakland Board of Commissioners finally approved the infringing name, making it effective that day. After, the Port of Oakland finally engaged with San Francisco, and insisted on a formal mediation. Giving Oakland the benefit of the doubt, San Francisco agreed, and the mediation occurred on August 27. That mediation was not fruitful. Now, the City seeks a preliminary injunction to put a stop to Oakland’s ongoing and expanding infringement that has caused confusion in the marketplace.
Traveler Confusion
As San Francisco warned, Oakland’s new brand has already caused traveler confusion in a variety of contexts. Individuals have booked flights to SFO intending to travel to Oakland. Undoubtedly, Oakland airport is experiencing similar confusion, too. Other travelers have been directed to the wrong airport by digital assistants, and rideshare services. In June, SFO asked information booth staff to document instances of confusion, and they already logged multiple incidents between June 18 and August 23.
A number of travelers have questioned the relationship between the different airports and several have geotagged the wrong airport in social media posts. In July, a Reddit user posted about having “picked the wrong airport” due to Oakland’s name change, and asked rhetorically, “Why would they do this[?]”
The actual confusion currently occurring is only the beginning. While Oakland and several third party sites have started to use the infringing name, others are still using Oakland International Airport. As the infringing name continues to be rolled out, confusion is very likely to increase.
Trademark Infringement
The City’s motion explains that to establish trademark infringement, San Francisco must show that it has a valid, protectable interest in a trademark and Oakland is using a mark similar to the City’s trademark in a manner likely to cause confusion. San Francisco can comfortably prove both. Backed by decades of exclusive use, the San Francisco trademark is famous, unquestionably strong, and incredibly valuable to San Francisco.
As argued in the City’s motion, the presence of actual confusion in the marketplace, the survey evidence demonstrating levels of confusion over 20 percent, the strong and incontestable nature of San Francisco’s trademark, the clear similarity of the new infringing name, the similarity between the type of services provided, and the similar marketing channels and consumer base, gives San Francisco strong federal trademark infringement and related common law and state claims against Oakland.
The Motion for Preliminary Injunction asks the Court to order Oakland to immediately stop usage of the infringing new name. The City’s lawsuit is also seeking an order declaring Oakland has infringed on SFO’s trademark, an order requiring Oakland to destroy or transfer all physical and digital materials containing the new name, and damages and fees.
The Motion for Preliminary Injunction can be found here. The case is City and County of San Francisco v. City of Oakland and Port of Oakland, U.S. District Court for the Northern District of California, Case No. 3:24-cv-02311.
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