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A Minnesota federal judge recently ruled that the American Association for Justice‘s trademark infringement lawsuit against an organization and individual using the name American Trial Lawyers Association and the acronym ATLA will go to trial. On March 18, Judge Joan Ericksen of the District of Minnesota denied two summary judgment motions from defendants American Trial Lawyers Association Inc. and J. Keith Givens. Ericksen also granted a motion by the AAJ in ruling that it had not abandoned its trademark for its former name. The American Association for Justice (AAJ), a plaintiffs’ counsel advocacy group, was known as the Association of Trial Lawyers of America until July 2006, when the members voted to change its name. According to court papers, AAJ has changed its name several times since it was founded in 1946, and it registered the trademark “ATLA” with the U.S. Patent and Trademark Office in 1976. AAJ member Givens reserved the corporate name the American Trial Lawyers Association Inc. with the Alabama secretary of state in March 2007 and filed for incorporation, along with his brother, Chase Givens, the same month. Ericksen’s ruling noted that the group’s purpose on its articles of incorporate was to provide a magazine and educational news “relevant to civil plaintiff and criminal defense trial lawyers.” Givens’ association sent letters to prospective members in June and November 2007, and the AAJ filed its lawsuit in November 2007. The AAJ is opposing the American Trial Lawyers Association’s PTO application for a trademark that includes its name and a drawing of Lady Justice. The PTO has suspended Givens’ group’s second trademark application, which features its name and the acronym ATLA, partly because of the pending lawsuit. The AAJ’s amended complaint accuses Givens and his association of infringing its Association of Trial Lawyers of America and ATLA marks. According to AAJ’s lawsuit, Givens’ group used the terms “The ATLA” and “THEATLA” in advertising and promotion materials. The lawsuit also accuses the other trial group of violating the Anticybersquatting Consumer Protection Act through Internet domain names that are confusingly similar to AAJ’s trademarks. In her ruling, Ericksen noted that the AAJ’s continued use of its former Association of Trial Lawyers of America name and ATLA mark after the official name change means the AAJ did not abandon the marks. She also noted that there is evidence of confusion between the two organizations’ trademarks. AAJ’s Web site, advertisements and seminar solicitations, for example, continued to state that AAJ was “Formerly the Association of Trial Lawyers of America” after the name change. Also, some AAJ staffers used the former language in their e-mail signature blocks as recently as March 2007. AAJ also sold books with ATLA in the title throughout 2007. “The patent similarity of the Association of Trial Lawyers of America and the American Trial Lawyers Association as well as the earlier discussed evidence of actual confusion, copying and the strength of the mark obviate the need for a detailed analysis of the likelihood that the consuming public would confuse the two marks,” Ericksen wrote. “Suffice it to say, a fact issue remains regarding likelihood of confusion.” The decision is very important to the AAJ “because it reaffirms my client’s ownership of these two trademarks that reflect its substantial investment and goodwill built up over many years,” said Christopher Larus, a partner at Minneapolis-based Robins, Kaplan, Miller & Ciresi who is representing AAJ. Larus also noted that the AAJ’s use of one of the trademarks with phrasing that the association was formerly known by that name is the type of brand transition situation that frequently arises in trademark disputes between businesses. “It’s an interesting decision for any brand holder who is considering a dual branding strategy because it clarifies what needs to be done in order to avoid abandoning trademark ownership rights,” Larus said. “It’s a not a topic that has generally found its way into published case law.” Marshall Tanick, a partner at Minneapolis-based Mansfield Tanick & Cohen and local counsel for the American Trial Lawyers Association, said his clients are “disappointed that the abandonment defense has been dismissed,” but believe they have other valid defenses. “We feel we have a number of other defenses that will be valuable at the time of trial,” Tanick said. The new organization came about after the AAJ decided it didn’t want trial lawyers in its name, said the new organization’s president, Michael Burg, who is also a founder of Denver-based Burg Simpson Eldredge Hersh & Jardine. Burg said the new trial lawyer group has about 3,500 members and limits membership to the top 100 trial lawyers in each state. “We believe there’s a place for AAJ and our organization to co-exist and work together in the future,” Burg said. “It’s unfortunate they brought an action. It certainly isn’t going to have an effect on the mission and goals of our organization or the mission of AAJ.”

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