S. Cal. Darts Ass'n v. Zaffina

Under the Lantham Act, an unincorporated association may bring suit in federal court to protect its trademarks from infringement.

Southern California Darts Association (“SoCal”), a promoter and organizer of competitive darts in California, brought suit against Dino M. Zaffina, a former member of SoCal. The suit alleged that Zaffina had violated the federal Lantham Act and other California state trademark and competition laws for using the SoCal name and logo. After leaving SoCal in 2010, Zaffina registered a corporation in January 2011, named SoCal Inc., and registered a website with the same name. The Ninth Circuit affirmed a lower court’s decision granting summary judgment for SoCal and the district court’s granting of a permanent injunction against Zaffina for using the SoCal marks and URLs. Under the Lantham Act, the federal court had jurisdiction to hear the case by SoCal, even though SoCal had its corporate power suspended in 1977 by the State of California. SoCal was suing to enforce a substantive right under federal law, and therefore under Federal Rule of Civil Procedure 17(b)(3), SoCal had the capacity to sue, despite not being recognized by California as a corporation. As to the merits of the claim, the panel affirmed the lower court’s grant of summary judgment based on a three-factor test. First, if the undisputed facts show that the marks of the organization are protectable. Marks are protectable if they are distinguishable. The court found, through admission by Zaffina, that the marks were distinguishable. Second, if the undisputed facts show that SoCal owns the marks. The court cited previous case law to show that unincorporated associations are able to own trademarks. Third, the undisputed facts show that Zaffina using the marks will cause confusion. The court used a seven-factor balancing test to determine if Zaffina’s marks would create a likelihood of confusion. AFFIRMED.