Can an unincorporated association own a trade mark and enforce trademark rights under the Lanham Act? The Ninth Circuit says that it can. (Southern California Darts Association v. Zaffina, No. 13-55780, 2014 U.S. App. Lexis 15391 (9th Cir. Aug. 11, 2014).) The plaintiff, an entity promoting competitive dart games, originally was a corporation operating under the name Southern California Darts Association, Inc. Upon its suspension for non payment of the corporate franchise tax, the plaintiff continued to operate effectively as an unincorporated association using the name Southern California Darts Association. However, the plaintiff did not register any trademark as to its name or logo. The defendant was a former member of plaintiff. In 2011, he created and registered an entity named Southern California Darts Association, Inc. He also registered the internet name www.southerncaliforniadartsassociation and used it to promote the entity. This new entity sued various locales hosting dart tournaments using the name of the plaintiff and other marks. Thereafter, the plaintiff sued the former member and the new entity, inter alia, for violation of the Lanham Act. The district court issued a preliminary injunction in favor of the plaintiff, and, eventually, granted the plaintiff summary judgment and a permanent injunction. The specifics of the ruling, among others, are as follows:
1. The district court possessed jurisdiction of the complaint under the Lanham Act. The plaintiff’s claim arose under 15 U.S.C. Sec. 1125(a) even though the plaintiff had not registered any mark. (15 U.S.C. Sec. 1125(a) [proscribing use of word, term, name, symbol, or device which is likely to cause confusion].) This section protects against infringement of unregistered marks and as well as registered marks.
2. The plaintiff has the capacity to sue as an unincorporated association. Whether the plaintiff had the capacity to sue under California law because of the corporate suspension was not relevant. Capacity to sue is governed by FRCP, rule 17(b), not state law. Even if an unincorporated association lacks capacity to sue under state law, it “may sue or be sued . . . to enforce a substantive right existing under the United States Constitution or laws.” (FRCP, rule 17(b)(3)(A).)
3. In addition to the capacity to sue, unincorporated associations have the capacity to own trademarks.
4. The plaintiff’s marks were protectable as descriptive marks that had acquired secondary meaning.
5. The defendant’s use the marks was likely to confuse consumers.
Lessons learned: Unincorporated associations can own trademarks. The Lanham Act can protect those marks even if they are not registered.