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A.I.G. Agency, Inc. v. American International Group

United States District Court, E.D. Missouri, Eastern Division

March 30, 2018

A.I.G. AGENCY, INC., Plaintiff,
v.
AMERICAN INTERNATIONAL GROUP d/b/a AIG, Defendant.

          OPINION, MEMORANDUM AND ORDER

          HENRY EDWARD AUTREY UNITED STATES DISTRICT JUDGE

         Introduction

         This matter is before the Court on Defendant's Motion to Dismiss, [Doc. No. 15]. Plaintiffs oppose the Motion. Defendants have filed a Reply to the Opposition, and Plaintiff has, with leave of Court, filed a Sur-Reply. For the reasons set forth below, the Motion is denied in part and granted in part.

         Facts and Background

         Plaintiff's Complaint alleges the following:

         A.I.G. was founded in 1958 in Saint Louis, Missouri. A.I.G. owns trademark rights in the “AIG” Mark. A.I.G. has used the AIG Mark in connection with its insurance business since at least as early as 1962. Defendant AIG does business as AIG and is the junior user of the AIG Mark. Defendant AIG is a multi-billion dollar insurance company known for its involvement in the well-documented 2007-2008 American Financial Crisis. Defendant AIG has admitted that use of the AIG Mark creates customer confusion. Instances of actual consumer confusion have occurred because of Defendant AIG's use of the AIG Mark. Acknowledging consumer confusion is likely, Defendant AIG has tried on more than one occasion, through webhost GoDaddy and directly through correspondence with A.I.G., to stop A.I.G. from using the AIG Mark, despite the undisputed fact that A.I.G. is the senior user of the AIG Mark.

         A.I.G. first began using the AIG Mark in interstate commerce at least as early as 1962. A.I.G. has continuously used the AIG Mark in connection with its insurance business since at least 1962. A.I.G.'s actual use of its AIG Mark predates the date of Defendant AIG's first use or any date of first use that Defendant AIG may properly allege. At least as early as 1962, A.I.G. provided customers and potential customers with advertising and promotional materials, including pencils, which used the AIG Mark.

         Defendant AIG's current website, in the “History Timeline” section at www.aig.com/about-us/history/timeline, states that “a companywide contest to design the first logo for American International Group, Inc.” was held in 1973.

         Defendant AIG informed the United States Patent and Trademark Office that its “first use in commerce” of “A.I.G.” was 1968. Thus, A.I.G. is the senior user of the AIG Mark.

         Defendant AIG has made numerous attempts to prohibit and/or interfere with A.I.G.'s use of the AIG Mark. On May 8, 1995, Defendant AIG's counsel contacted A.I.G. and informed A.I.G.'s counsel that Defendant AIG objected to A.I.G.'s use of the AIG Mark and stated that use of the AIG Mark “creates seriously [sic] likelihood of confusion.” On May 15, 1995, A.I.G.'s counsel responded to Defendant AIG's counsel. A.I.G.'s counsel stated that the earliest date found in Defendant AIG's trademark registrations was 1968, that A.I.G.'s use predates 1968 by a number of years, and welcomed Defendant AIG to prove up a date of first use prior to 1968. Although communication on this issue extended into 1996, Defendant AIG did not respond with any proof of first use prior to 1968.

         On April 16, 2008, new counsel for Defendant AIG contacted A.I.G with a cease and desist letter. Counsel for Defendant AIG was unaware of the prior communications in 1995 and 1996. Counsel for Defendant AIG stated that “[c]onfusion is likely because your company's use of ‘A.I.G.' in your company name and on any promotional materials … potentially gives consumers the impression that your services are somehow related to the services of American International Group.” A.I.G. responded and again informed Defendant AIG that A.I.G. was the senior user of the AIG Mark. On July 8, 2008, counsel for Defendant AIG responded to A.I.G. and stated that Defendant AIG's right to use the AIG Mark is senior to A.I.G.'s rights outside of A.I.G.'s “limited geographic area.”

         In 2014, Defendant AIG initiated a claim with A.I.G.'s webhost, GoDaddy, alleging that A.I.G.'s use of the AIG Mark including in its domain name, www.aigagency.com, “infringes the rights of American International Group, with the use of our registered mark ‘A.I.G.' and it's [sic] use in the content of the website claimed to be infringing at issue is not defensible.” Defendant AIG further stated to GoDaddy that “use of trademark(s) could create a likelihood of confusion with AIG's trademark as to the source, sponsorship, affiliation, or endorsement of your web site(s), online locations(s), products or services.” By this process, Defendant AIG attempted to have GoDaddy shut down A.I.G.'s website, www.aigagency.com. A.I.G. retained counsel and filed a counter-notice with GoDaddy, again informing Defendant AIG that A.I.G. is the senior user of the AIG Mark. Defendant AIG then requested that GoDaddy close the claim it initiated about A.I.G.

         After closing the GoDaddy claim, Defendant AIG's assistant general counsel called A.I.G.'s counsel and apologized for filing the GoDaddy claim, said it was an internal mistake, and said that Defendant AIG recognizes A.I.G.'s rights.

         On February 11, 2015, counsel for Defendant AIG again wrote to counsel for A.I.G., threatening litigation if A.I.G. continued to do business in Florida. Counsel for A.I.G. responded by reminding Defendant AIG that A.I.G. was the senior user of the AIG Mark, A.I.G. did business throughout the United States, and A.I.G.'s counsel complied with Defendant AIG's request to provide examples of A.I.G.'s work performed in Florida. A.I.G. has done business in Florida since the 1960s.

         Defendant AIG had traditionally been an insurance company that specialized in business-to-business sales of insurance products and services and utilized agencies to sell its products and services. However, Defendant AIG recently moved into the business-to-consumer or direct-to-consumer insurance market. As part of this change in Defendant AIG's business, Defendant AIG directly solicits residents of Missouri and every other state for sales of individual and family insurance, including life, home, and auto insurance. Defendant AIG has directly solicited and continues to solicit A.I.G.'s customers and potential customers in Missouri and elsewhere using the AIG Mark. Defendant AIG is directly ...


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