Trademark Turbulence – Oakland vs SFO in Trademark Showdown

Oakland’s attempt to rename its airport didn’t take off. On this episode of The Briefing, Scott Hervey and Jamie Lincenberg discuss the trademark dispute between San Francisco and Oakland over airport naming rights. Watch this episode on the Weintraub YouTube channel.   Show Notes: Scott: When Tony Bennett sang about leaving his heart in San Francisco, he wasn't singing about Oakland. There are no little cable cars climbing halfway to the stars in Jack London Square, as charming as it is. Essentially, that's why the City and County of San Francisco sued the city of Oakland and the operator of the Oakland International Airport, the Port of Oakland, to stop Oakland from renaming its airport to San Francisco Bay Oakland International Airport. I'm Scott Hervey, a partner at the law firm of Weintraub Tobin, and I'm joined today by my colleague Jamie Lincenberg. Fasten your seat belts and put your seats in the upright and locked position. It's SFO versus OAK in today's installment of The Briefing. Jamie welcome back. Thank you for joining me today. Jamie: Thanks, thanks. Thanks for having me, Scott. Scott: Let's let's see how many airline airport puns and bits of humor we can spontaneously include in this story here. Jamie: Sounds good. Scott: Okay, so, are you ready for takeoff? Jamie: I'm ready. Scott: Okay, so this case is about the Port of Oakland's attempt to rename its airport and include San Francisco in its name. And this is also about the city of San Francisco's claim that such use would create consumer confusion and constitute trademark infringement. But the reason Oakland wanted to include San Francisco, at least it claims, isn't just about the desire to trade off of San Francisco's goodwill. Jamie: Okay, so please tell us, why did Oakland want to include San Francisco in the new name of its airport? Scott: Well, as you know, whether we have to travel into our office in San Francisco, which is right in the heart of the financial district or otherwise fly into downtown San Francisco. We don't always fly into SFO. Those who have to fly into San Francisco know that flying into Oakland is most often the better bet. It's fairly common to have weather delays in San Francisco, but that's not the case in Oakland. And also, you can catch the Bart right into San Francisco, right from the Oakland airport. And if you need a car. Oakland Airport is just right across the Bay bridge from downtown San Francisco. And apparently this was not well known to people outside of the Bay area or travelers who travel regularly in the San Francisco. Jamie: That's true. Scott: So, you know, apparently the Port of Oakland conducted some studies that concluded that Oakland's Oakland's proximity to San Francisco isn't really well known outside of the Bay area and completely unknown outside of California. And the port believed that this lack of awareness, this lack of awareness of the, you know, geographical proximity created challenges from the port in serving travelers. Jamie: Yeah. And I can understand why Oakland would want to do this, but I'm sure that San Francisco was not on board, so. Scott: True. Very true. San Francisco claimed that this would cause consumer confusion, and a few airlines also objected to the purported name change, saying that it would cause confusion for their travelers. The port went through with its internal requirements to implement the name change, and then the city of San Francisco sued, claiming trademark infringement. San Francisco claimed that consumers would believe that there ...