United States District Court, E.D. Missouri, Eastern Division
A.I.G. AGENCY, INC., Plaintiff,
AMERICAN INTERNATIONAL GROUP d/b/a AIG, Defendant.
OPINION, MEMORANDUM AND ORDER
EDWARD AUTREY UNITED STATES DISTRICT JUDGE
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.
Complaint alleges the following:
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.
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.
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.
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.
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.
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.”
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.
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
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.
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