Founder and Managing Partner
OAKLAND, Calif. – The ink wasn’t dry Thursday on the ordinance approved by the Oakland Board of Port Commissioners that changed the name of Metropolitan Oakland International Airport to San Francisco Bay Oakland International Airport before Oakland took a shot at San Francisco.
The background is that San Francisco sued Oakland on April 18, asserting that the new name infringed on trademarks that San Francisco held on the name San Francisco International Airport.
On Thursday, the same day the port panel gave final approval of the name change, Oakland answered the complaint, denying any trademark violation and asserting a counterclaim.
The counterclaim requested a U.S. District Court judge to enter a declaratory judgment that would determine that the airport’s new name does not infringe San Francisco’s trademarks.Â
According to Mary Richardson, attorney for the Port of Oakland that oversees the airport, “The San Francisco’s City Attorney’s decision to pursue litigation is an attempt to stop consumer education, prevent expanded air travel options for Bay Area residents and visitors, and is a misguided use of San Francisco taxpayer dollars.”
In Richardson’s opinion, “SFO’s lawsuit is a disappointing and anticompetitive effort to discourage competition and choice, and we are confident the Court will agree.”
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The Counterclaim
Oakland’s counterclaim provides a history of its airport and discusses at length its geographic position on the San Francisco Bay. It says that the name change is intended to provide the accurate geographic location for the airport, not usurp San Francisco’s trademarks.Â
In the counterclaim, Oakland took square aim at San Francisco’s central argument that the name change will cause confusion among travelers.Â
Oakland denies that any confusion will occur and says that in the world of airports, it is not unusual for more than one airport to use the same geographic name. The counterclaim offered five examples.
London, England has six airports with “London” in their names.Â
Paris, France and Beijing, China each have two.Â
However, because the three examples are all outside of the U.S. and not subject to American trademark law, their applicability to the current issues may be limited.
In terms of domestic airports, Oakland offered two examples:
  -Dallas has two airports with names beginning with “Dallas”: Dallas/Fort Worth International Airport (DFW) and Dallas Love Field (DAL)
  -Chicago has three airports with names that begin with “Chicago”: Chicago Midway International Airport (MDW); Chicago O’Hare International Airport (ORD); and Chicago Rockford International Airport (RFD)
The history behind Dallas’ multiple names is complicated and involves a federal law passed to limit air service from Love Field to protect the new and larger DFW where all the carriers from Love were moving. However, the newly started Southwest located itself at Love Field and then fought legal battles for decades over the limitations on Love.Â
The Chicago situation would appear a closer analogy, but Oakland’s counterclaim does not discuss whether the Chicago airports maintain federal trademarks on their names and, if so, whether there has been controversy and/or confusion about their names.Â
In the larger context, U.S. trademark law focuses on the use of the trademarked name, the potential it causes for consumer confusion, and whether the proposed use would impair a mark owner’s investment in the goodwill associated with the trademark. Cases are decided based on the specific circumstances in a given case.
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Coming Attraction
But even if the counterclaim’s invocation of the Dallas and Chicago situations is of limited import, Oakland’s filing is still significant, though for a different reason.
By answering the complaint and filing a counterclaim, Oakland suggests that it is anxious for the court to get to the central issue in the case, and is signaling that Oakland won’t try to stretch things out through preliminary legal maneuvering.
In that respect, Oakland’s approach seems consistent with San Francisco’s.Â
Jen Kwart, a spokesperson for San Francisco City Attorney David Chiu, said Thursday that San Francisco will be filing a motion for a preliminary injunction.Â
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A preliminary injunction is a court order that directs a party not to take action that may violate the rights of the other party during the pendency of a court case. It is called preliminary because it is an interim ruling, designed to remain in place — and preserve the status quo — only until a full-scale trial can be held.
Preliminary injunction hearings frequently occur in the early days of a lawsuit and are given expedited scheduling.
San Francisco had not filed its motion for preliminary relief as of Friday morning, but assuming that it is filed in the next few days, it would not be surprising if the parties were in court within the next few weeks, depending on the schedule of the court and availability of witnesses.
The formality of trials is not fully observed at a preliminary injunction hearing, and judges often use  case management techniques to allow the matter to be presented succinctly, for example, including witness testimony by way of affidavit rather than direct examination.Â
In a preliminary injunction proceeding, the plaintiff has the burden of convincing the court that preliminary relief is necessary. Federal courts look at four main factors, including whether the plaintiffs have a significant likelihood of winning on the merits when the case is fully tried.Â
Another key factor is whether the plaintiff will suffer “irreparable” harm if no injunction is entered. Generally, if money damages can cure the problem, a court will not enter an injunction on the thought that an award of damages at the end of the litigation will make the party whole.
A third factor involves balancing the “equities” of the parties. Here a court will determine if the harm of denying the injunction to the applicant outweighs the harm the other party will suffer if it is granted.
Last, in cases of public importance, the court will consider if an injunction is in the interest of the public.
None of the four factors are dispositive and the court must weigh them together and decide on whether the party seeking the injunction has carried the “heavy burden” of showing that preliminary relief is appropriate.
Because of demands that preliminary injunction proceedings place on the parties and the court at the very beginning of a case, it is not unusual that settlement negotiations occur at this stage.
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