After being sued for trademark infringement, Oakland has hit back at San Francisco with a countersuit for declaratory relief. The declaratory relief decision will similarly answer the question of whether Oakland's use of the term SAN FRANCISCO in its airport name infringes San Francisco's trademark. So why countersue at all? A few reasons come to mind.

For one thing, the declaratory relief request asks for something broader than a declaration of non-infringement. Specifically, it asks the court to declare “that the City does not have trademark rights to SAN FRANCISCO BAY when used in connection with airport services or otherwise.” While an adverse decision in the main suit would weaken San Francisco's claim of rights, such a declaration would be much stronger. As such, the counterclaim strategically represents a higher risk to San Francisco and creates leverage for settlement negotiations.

The countersuit also frames the questions presented to the court differently and presents a number of options that would enable Oakland to move forward. It has asked the court to consider three different versions of Oakland's proposed mark, asking the court to declare: “(a) OAK’s new full name - SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT - does not infringe on the City’s purported trademark for SFO: SAN FRANCISCO INTERNATIONAL AIRPORT (the “SFO Mark”); (b) the name SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT as part of the Airport’s I Fly OAK logo does not infringe on the SFO Mark; (c) the name SAN FRANCISCO BAY OAKLAND INTERNATIONAL AIRPORT when used with the Airport’s IATA code (OAK) does not infringe on the SFO Mark;" and thereby gives the court the opportunity to find non-infringement in different uses of the term SAN FRANCISCO by Oakland. Moreover, presenting these questions (along with the question of San Francisco's rights in the term SAN FRANCISCO BAY discussed above) now could prevent further litigation over different uses in the future.

In addition to those legal tactics, Oakland's countersuit gives it the opportunity to lay out the narrative for its defense for the public to see well before any substantive action in the case. The countersuit lays out Oakland's claimed facts in painstaking detail, including a deep recitation of the history of its airport and its connection with the term SAN FRANCISCO BAY. An answer without a counterclaim would include little more than admissions and denials. Beyond educating the judge, the long-form recitation offers the public (often through the press) information that wouldn't be presented publicly until much later, if at all.

It would be great to see the court's reasoning in deciding the questions at issue in this case—likelihood of confusion, geographic descriptiveness, acquired distinctiveness, and more. But chances are the case will settle, perhaps with Oakland using a form of the name where OAKLAND comes first (as in OAKLAND SAN FRANCISCO BAY INTERNATIONAL). There is precedent for such a format as Baltimore Washington International (though there was no dispute with Washington Dulles) and Melbourne Orlando International (changed from Orlando Melbourne after a dispute with Orlando International) both coexist with neighboring counterparts while sharing geographic terms.

While waiting at the gate for their next flight from SFO or OAK, will consumers be thinking about the trademark issues at play in this dispute? Some (including myself) just might be. It is baseball season, after all.

“The Port is asking for a declaratory judgment, which is a ruling by the court that the new name does not infringe upon SFO’s trademark … and that SFO’s trademark does not extend to use of ‘San Francisco Bay’,” the Port of Oakland stated in a prepared release.

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