Robert Namer, d/b/a Voice of America v. Broadcasting Board of Governors; Voice of America

Addressing the issues of laches and the reliability of a consumer survey in a defense to a trademark infringement action under the Lanham Act, the U.S. Court of Appeals for the Fifth Circuit upheld a district court’s finding of reliability of the survey and no laches based on lack of prejudice. Robert Namer, d/b/a Voice of America v. Broadcasting Board of Governors; Voice of America, Case No. 14-31353 (5th Cir., Oct. 26, 2015) (Costa, J.).

This dispute arises out of the use of the phrase “Voice of America.” Since World War II, the Voice of America (VOA) has served as the official news outlet of the United States government in foreign lands. VOA is now a multimedia organization involving shortwave and FM radio, television and two websites. It is operated by the Broadcasting Board of Governors (the Board).

Namer began using the self-identifying phrase “Voice of America” in seminars, lectures, print, radio and television in 1968. In 1977 Namer formed the corporation Voice of America, Inc. He is the president and owns 100 percent of the stock of the corporation. In 1991 Namer began airing a radio program entitled Voice of America. The radio program is exclusively aired over the internet in the continental United States. In 1998 Namer registered the domain name www.thevoiceofamerica.com.

In 2007 the Board received a trademark registration from the U.S. Patent and Trademark Office for the word mark “Voice of America.” The Board sent Namer a letter demanding he stop using VOA to identify his radio program. The Board later sent a cease-and-desist letter notifying Namer of the mark’s registration. When Namer refused to cease use of the name, the Board filed a complaint under the Uniform Domain Name Dispute Resolution Policy seeking transfer of Namer’s website domain name to the Board.

In 2012 Namer filed suit seeking declaratory judgment to prevent the transfer of the website domain and a declaration that Namer has the legal right to continue doing business using “Voice of America” to his identifier. The Board counterclaimed for infringement under the Lanham Act. After the district court granted defendant’s motion for summary judgment on infringement and granted injunctive relief preventing Namer’s further use of the mark, Namer appealed.

On appeal, Namer argued that he was entitled to a laches defense and that the Board failed to establish a likelihood of confusion. Unconvinced, the 5th Circuit affirmed the summary judgment on infringement and concluded that Namer was not entitled to claim a laches defense.

Survey Evidence

At issue in the infringement claim was whether a study presented by the Board as part of its proof to establish a likelihood of confusion was properly conducted. The Board’s survey was conducted using individuals who would likely visit Namer’s website as the universe of relevant consumers. Namer contended that the proper universe is those individuals who would visit the Board’s websites. The difference is the inclusion of an international audience in Namer’s proposed universe. The 5th Circuit concluded that the Board’s survey relied on the correct sample of potential consumers, explaining that a useful or relevant survey estimating the likelihood of confusion resulting from use of an allegedly infringing mark should sample those most likely to purchase or use the alleged infringing goods or services, not users of the trademarked goods or services.

Laches Defense

Namer’s primary defense was that even if he is infringing, he is entitled to a laches defense. To establish a laches defense, a party must show delay in asserting trademark rights by the senior user, lack of excuse for the delay and undue prejudice to the alleged infringer caused by the delay. The district court found Namer failed to establish the prejudice requirement and the 5th Circuit agreed.

Although Namer established continued routine use of the website during the time when the Board allegedly sat on its rights, the court noted prejudice will rarely be shown when the infringer merely used the infringing mark in commerce; i.e., continued infringing. Namer failed to introduce any evidence showing the amount of money spent on investment or capital that could demonstrate prejudice. In fact, Namer refused to respond to discovery requests relevant to expenses incurred in developing his rights to use the mark. On appeal, Namer contended (for the first time) that the Board’s delay in bringing an infringement claim prejudiced his litigation strategy. However, the court found this argument had been waived, as it was not asserted before the district court.

Although Namer also raised other defenses including a First Amendment issue, violation of his due process rights and “prior use,” the 5th Circuit did not consider those claims concluding they were not sufficiently asserted before the district court to be preserved for appeal.