The ongoing saga between two of the Bay Area’s major airports continues as Oakland International Airport (OAK) filed an appeal on December 12, 2024, on the order for preliminary injunction granted to San Francisco International Airport (SFO) by a federal district judge ordering it to desist from using “San Francisco Bay Oakland International Airport,” which was issued on November 12, 2024.
As a preliminary note, SAN FRANCISCO INTERNATIONAL AIRPORT has been a federally registered trademark since 2012, but has been in use in commerce since 1954. OAKLAND INTERNATIONAL AIRPORT has been federally registered since 2020, and in use in commerce since 1963. SFO’s mark has been incontestable since 2017. Both are merely descriptive in distinctiveness.
SFO and OAK in San Francisco Bay Area
Judge Hixson noted, rather pointedly, that SFO is one of the “top 12 busiest airports in the United States,” with 50 million travelers in 2023. On the other hand, he noted that OAK is much smaller than SFO, with limited infrastructure, far fewer flights, with 11 million travelers in 2023. Further, he noted a study showing SFO ranking “near the top of the ‘mega’ airports in overall customer satisfaction, whereas OAK ranked near the bottom of its category of ‘large’ airports.”
Judge Hixson in determining irreparable harm, went through the Sleekcraft factors used in likelihood of confusion cases.1
As for similarity of the marks, Judge Hixson noted OAK’s use of SFO’s mark is “wholly contained within the former [OAK’s new name]. Notably, the Port’s [OAK’s] allegedly infringing mark begins with the first two words of San Francisco’s mark, so the first words the reader encounters heighten the confusion.” This is fairly consistent with element positions of a mark in adjudging similarity of marks in a likelihood of confusion analysis. The judge also deemed goods and services as “identical,” that is, “airport services.”
OAK argued that many cities use the same name on multiple airports. Examples given were Chicago O’Hare (ORD) and Chicago Midway (MDW) airports, and Dallas-Fort Worth International (DFW) and Dallas Love Field (DAL) airports. However, Judge Hixson found this argument unpersuasive, as these two cities actually own and operate both airports within their jurisdiction. Further, OAK argued the proximity on San Francisco Bay as a reason for its name change. However, Judge Hixson disagreed:
[This] argument is not persuasive. Airline customers care whether an airport is close to San Francisco or in the San Francisco Bay Area, but they do not likely care whether an airport is close the waterfront of the bay . . . Accordingly, the words “San Francisco” in OAK’s new name are prominent and meaningful for airline customers, but the word “bay” is likely either to be ignored because it has no importance to them, or to be read as a stand-in for the Bay Area. Either option increases the association with the San Francisco International Airport.
Perhaps the most problematic issue for OAK is the issue of actual confusion. SFO introduced evidence of airline flyers with flights departing from OAK arriving at SFO instead. This goes to SFO’s argument that airline customers are confused as to OAK’s affiliation, connection, or association with SFO given OAK’s new name. OAK did not present evidence against this argument.
Judge Hixson partially granted the preliminary injunction against OAK from using its new name, citing that SFO would suffer irreparable harm by OAK’s continued use of “San Francisco Bay Oakland International Airport.”
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The Sleekcraft factors include 1) strength of mark, 2) proximity of goods/services, 3) similarity of the marks, 4) evidence of actual confusion, 5) marketing channels, 6) type of goods and degree of care exercised by purchaser, 7) defendant’s intent in selecting mark, and 8) likelihood of expansion of product lines. ↩︎