What happens when two organizations happen to use the same acronym to identify themselves? The Third Department was confronted with such a situation on June 7th in Matter of Fireman's Assn. of State of New York v French Am. School of N. Y., 2007 NY Slip Op 04745.
The Fireman's Association of the State of New York is a not-for-profit corporation in existence since the 1870s. It has a membership of 43,000 volunteer firefighters and an annual operating budget of $11,000,000. It disseminates information regarding firefighting, fire safety and emergency services to its members and to the people of the State of New York through training and through its magazine and Internet site. It also operates a home for retired firefighters, maintains a firefighting museum, and sells related merchandise. It adopted the acronym FASNY in 1889 and uses it on its printed materials and other products, as well as on the FASNY Museum of Fire Fighting and its Web site.
The French American School of New York is a private, not-for-profit corporation founded in 1980 that operates schools at three Westchester County locations. The schools are attended by about 650 students who are predominately children of French expatriates and foreign nationals. For approximately 20 years, it had used the acronym FASNY informally and, in 1997, formally incorporated FASNY into its logo a colorized globe with FASNY written beneath it. It has also used the acronym on its school yearbook, in the faculty handbook, in its written communications and on its Web site.
I don't know if Firemen don't like the French, but they certainly didn't like the school using the FASNY acronym. The Firemen had federally registered the FASNY mark superimposed over a logo, and after learning of the school's use, registered just the FASNY letters. When the French School refused to stop using FASNY, the Firemen commenced an action alleging statutory and common-law trademark infringement (see General Business Law §§ 360-k, 360-o), deceptive trade practices (see General Business Law § 133) and dilution of its mark (see General Business Law § 360-l), and seeking injunctive relief.
The Third Department rejected the Firemen's General Business Law § 133 claim because it failed to demonstrate that the School intended "to deceive or mislead the public" in its use of the FASNY mark.
The Firemen's statutory and common-law trademark infringement claims were also dismissed since they failed to allege any facts tending to prove that the School's use of the FASNY acronym was likely to cause confusion or mistake or to deceive. The Court noted that the parties targeted and served discrete populations, that they offered widely divergent products and services, and that the School had used the FASNY mark for approximately two decades without any actual confusion. Thus, the Firemen were unable to show that confusion was likely to ensue.
The Court was somewhat more kind, however, to the Firemen's dilution mark (General Business Law § 360-l) claim. While denying a preliminary injunction, the Court nevertheless allowed this claim to survive a motion to dismiss for failure state a cause of action since the Firemen alleged sufficient facts raising the possibility that the mark would lose its ability to serve as a unique identifier of the Firemen's product.
So, the score is: the French 2, the Firemen 1.
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