June 05, 2020
On June 4, 2020, Weil secured a total victory for American International Group, Inc. (AIG) when a federal judge in the Eastern District of Missouri granted Weil’s motion for summary judgment, defeating plaintiff A.I.G. Agency’s trademark infringement lawsuit asserting damages worth in excess of $1 billion.
In 2017, A.I.G. Agency filed suit against AIG, claiming ownership over common law trademark rights to the use of the mark “AIG” in the insurance business, purportedly throughout the nation, based on its use beginning in the 1960s. It asserted that AIG was infringing its trademark under the Lanham Act and Missouri state law. AIG asserted counterclaims for trademark infringement and trademark dilution. In 2018, the court granted AIG’s motion to dismiss in part, considerably narrowing the case and leaving only plaintiff’s trademark and unfair competition claims. Following discovery, during which time plaintiff’s damages expert calculated A.I.G. Agency’s damages as $1.15B, the parties each filed summary judgment motions.
In its decision granting AIG’s summary judgment motion, the court heavily relied on the doctrine of laches, in agreement with Weil’s arguments that A.I.G. Agency unreasonably delayed bringing its claims. Notably, the court held that AIG met its “‘heavy burden’ for invoking the doctrine,” because, among other things, A.I.G. Agency had constructive and actual notice of AIG’s use of the mark for more than 30 years before bringing the suit – “well more than enough to trigger laches in a trademark suit” – and AIG actively used, marketed, and renewed registrations for the mark for many years leading up to the filing of the lawsuit, and even sent A.I.G. Agency a cease and desist letter in 1995 regarding its use of the mark. The court also considered, but disregarded, plaintiff’s arguments that the progressive encroachment doctrine and AIG’s purported abandonment of the mark during the 2008 financial crisis weighed against laches.
Putting an exclamation point on its findings, the court noted that, “in addition to decades of widespread use of the Mark and multiple federal registrations—which Defendant might have invoked to defend its rights to the Mark in 1995—Defendant can now also point to 22 additional years of acquiescence on the part of Plaintiff as further evidence of its right to use the Mark.”
The cross-disciplinary Weil team was led by Complex Commercial Litigation partner Jessica Falk, and included Patent Litigation associate Steve Bosco, Technology & IP Transactions/Privacy associate Olivia Greer, and Complex Commercial Litigation associate Steven Evans.