AIG in line for jury trial over trademark lawsuit

AIG in line for jury trial over trademark lawsuit | Insurance Business New Zealand

Legal Insights

AIG in line for jury trial over trademark lawsuit

Agency’s long-running dispute with insurance giant set to continue

Legal Insights

By
Jen Frost

A long-running trademark lawsuit brought by an insurance agency against AIG is set to continue with a jury trial on the horizon, a US District Court in Missouri has ruled.

Both plaintiff A.I.G Agency and defendant AIG, the global insurance company, had filed motions for summary judgment, with AIG’s granted in part.

The trial is now slated to proceed in front of a jury in January, according to the order.

“Our small family business looks forward to a jury trial as soon as possible,” A.I.G Agency president Gregory Wherry told Insurance Business.

AIG trademark dispute – a long-running case

The dispute hinges around the use of the AIG name, which the insurance agency plaintiff claimed to have been using since 1958. For its part, insurer AIG said in court documents it has been using the mark since 1968.

The insurer has had a federal trademark registration for AIG since 1981 and had sent letters in both 1995 and 2008 requesting that the insurance agency drop the moniker, according to earlier court documents.

In 2009, insurance company AIG started using the name Chartis for its property & casualty (P&C) subsidiary, later reverting back to AIG in 2012.

It was around this time, the plaintiff insurance agency alleged, that the insurance company began selling directly to consumers, allegedly becoming a “direct competitor” to A.I.G Agency and leading to consumers “confusing” the two businesses.

A.I.G Agency brought the lawsuit in 2017, with AIG having brought counterclaims on trademark infringement, unfair competition, and trademark dilution.

The case initially went in favour of insurance company AIG, but this was reversed by the Eighth Circuit court, which found that genuine disputes of material fact precluded summary judgment on its laches defense, according to the latest court documents, dated August 16.

According to the latest ruling, AIG had sought to contend that the insurance agency’s claim was barred under equitable estoppel, and that A.I.G Agency had effectively concealed its claims by failing to put forward infringement arguments “when it knew of them”.

However, United States District Judge Sarah Pitlyk found that while cited facts could show the insurance agency was aware of AIG’s use of the mark, they did not necessarily demonstrate that the plaintiff knew it had a viable case in the 22 years prior to the lawsuit.

AIG also sought to argue that the insurance agency could not make the “requisite showing” that it had common-law rights to the AIG mark.

The plaintiff pointed to a 1972 newspaper article that referred to the agency as AIG repeatedly, in addition to brochures and sponsorship materials dating back to the 1950s, according to the court document.

“Because there is genuine dispute about whether the AIG Mark is associated with plaintiff in the minds of consumers in Missouri and Illinois and whether it was so associated prior to defendant’s federal registration, defendant is not entitled to judgment as a matter of law that plaintiff has no valid and protectible common-law trademark in Missouri or Illinois,” it was said in the ruling.

A.I.G v AIG – customer confusion argument yet to be decided

AIG further argued that the insurance agency could not show that the mark might cause confusion for customers, with A.I.G Agency having argued that the former’s 2012 post-rebrand advertising splurge had caused confusion.

“Upon review of the factors, the court finds that there are genuine disputes of material fact that prevent summary judgment on likelihood of confusion,” the court found.

A.I.G Agency had argued that the court should grant it summary judgment on the confusion point, with the insurance company having allegedly acknowledged a level of confusion itself in since-withdrawn counterclaims.

While the court found that phone calls from “confused customers”, for example, provided some evidence that consumers may have been confused, this was not “beyond dispute” as required for a summary judgment. It further found that former arguments set out by the defendant insurance company did not amount to binding judicial admissions.

“There is much more to the question of whether plaintiff has met the standard for showing likelihood of confusion as an element of its trademark claims than the bare fact that plaintiff’s use of the AIG Mark has created some consumer confusion…,” the court found.

“Thus, even if the court were to hold defendant to that concession, multiple genuine disputes of material fact would still prevent summary judgment in plaintiff’s favour on the element of likelihood of confusion.”

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