Court issues order prohibiting the use of Oakland Airport’s new infringing name and finds it is likely to imply an affiliation with San Francisco International Airport®
SAN FRANCISCO (November 12, 2024) — City Attorney David Chiu issued a statement today after a federal judge issued a preliminary injunction order in San Francisco’s favor. The Court’s order enjoins the Port of Oakland (Port) from using “San Francisco Bay Oakland International Airport” to refer to Oakland International Airport (OAK). The Court found that the new name likely infringes on San Francisco International Airport’s (SFO) trademark and that the infringing name is likely to imply an affiliation or business relationship between the two airports, in violation of the City’s rights.
The Oakland Board of Port Commissioners approved renaming Oakland International Airport (OAK) to “San Francisco Bay Oakland International Airport” on May 9. They did so over the objections of San Francisco officials, airlines, regional stakeholders, and Bay Area residents. City Attorney Chiu previously warned Oakland Port Commissioners that the new name infringed on San Francisco International Airport’s trademark. Today the Court agreed that San Francisco is likely to prevail on its claim of trademark infringement.
“For months, we have tried reasoning with Oakland officials to avoid litigation and come up with alternative names that would work for all of us,” said City Attorney Chiu. “Unfortunately, those efforts were not productive, and we had 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, and we are happy the Court agreed that brand should be legally protected from trademark infringement.”
“We are very grateful for this decision,” said SFO Airport Director Ivar C. Satero. “This ruling is ultimately a win for Bay Area travelers. My thanks go out to the City Attorney for their commitment to this issue.”
Background
SFO began operating in 1927, and the City has owned the U.S. federal trademark registration for San Francisco International Airport® for years. 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 Metropolitan Oakland International Airport® since at least as early as 1963.
Earlier this year, Port officials announced plans to rename Oakland International Airport to “San Francisco Bay Oakland International Airport,” which is confusingly 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 the Port announced the renaming, the Port informed San Francisco officials of its plans. San Francisco objected repeatedly and warned 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 the Port 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 the Port 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. Only after approval did the Port of Oakland finally engage with San Francisco, and insisted on a formal mediation. Giving the Port the benefit of the doubt, San Francisco agreed, and the mediation occurred on August 27. That mediation was not fruitful, and San Francisco filed a Motion for Preliminary Injunction on September 17.
In today’s order, the Court found that San Francisco’s trademark is strong, the trademarks are similar, and the services (airports) are identical. The Court concluded that the Port’s new name is likely to imply a business relationship between the two airports where there is none, writing: “The Port has taken San Francisco’s valuable Mark and applied it to a smaller, less successful, and lower rated airport. San Francisco’s Mark is now literally in the name of the Oakland airport. Because in the United States the name of a city is normally in the name of an airport only if the city owns or partially owns that airport, the new name for the Oakland airport strongly implies affiliation with San Francisco and the San Francisco International Airport. This damages the goodwill and value of San Francisco’s Mark and deprives San Francisco of control over its Mark.”
The Court concluded it must issue a preliminary injunction preventing any future use of the name, writing: “The Court concludes that a preliminary injunction should issue. San Francisco is likely to prevail on the merits on one of its core theories of liability, it will suffer irreparable harm if there is no injunction, and the public interest and the balance of hardships also favor an injunction.”
The Preliminary Injunction order prohibits the Port of Oakland, its officers, directors, agents, and employees –, along with all other persons who are in active concert or participation with them who receive action notice of the order — from using and displaying the name “San Francisco Bay Oakland International Airport” in connection with any products or services including any advertising.
San Francisco Deputy City Attorneys Yvonne Meré, Jesse Smith, Christopher Stuart, and Julie Veit worked together with Bobby Ghajar, John Hemann, Judd D. Lautner, and Ryan Stevens of Cooley LLP to protect San Francisco International Airport’s trademark in court.
The Preliminary Injunction order 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-TSH.
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