IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 17-30859

ALLIANCE FOR GOOD GOVERNMENT, 

 Plaintiff - Appellee

v.

COALITION FOR BETTER GOVERNMENT, 

 Defendant - Appellant

Appeal from the United States District Court

for the Eastern District of Louisiana

Before DAVIS, HAYNES, and DUNCAN, Circuit Judges.

STUART KYLE DUNCAN, Circuit Judge:

This federal trademark infringement action involves a dispute between 

two civic organizations over their logos:

The older organization, Alliance for Good Government, developed its logo in 

the late 1960s and has used it for fifty years in advertisements and sample 

United States Court of Appeals

Fifth Circuit

FILED

August 22, 2018

Lyle W. Cayce

Clerk

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2

ballots to promote political candidates in New Orleans and throughout 

Louisiana. The younger organization, Coalition for Better Government, 

developed its logo more recently (in the early 1980s or 1990s) and has also used 

it in sample ballots to promote political candidates in New Orleans. While the 

groups have locked talons before, the present appeal arises out of Alliance’s 

2017 lawsuit seeking to enjoin Coalition’s use of its logo for federal trademark 

infringement under the Lanham Act. The district court granted Alliance 

summary judgment, finding that Coalition’s logo infringed Alliance’s marks as 

a matter of law, and enjoined Coalition from using both its name and logo in 

political advertisements. Coalition appeals that ruling.

On appeal, Coalition raises broad threshold questions concerning the 

applicability of the Lanham Act to what it characterizes as its political, noncommercial speech. We decline to address those questions, because Coalition 

failed to properly raise them below and the district court never reached them.

Coalition also attacks the summary judgment, claiming that fact issues remain 

as to whether Alliance’s marks are valid and whether Coalition’s logo would 

likely create confusion with Alliance’s. On the latter point, Coalition’s most 

curious argument—urged below and renewed on appeal—is that the logos are 

different because its logo features a hawk while Alliance’s features an eagle. 

We conclude the district court did not err in deciding the birds are identical.

Reviewing the summary judgment ruling de novo, we conclude that the 

evidence establishes without dispute that Alliance’s logo is a valid composite

mark and that the use of Coalition’s logo infringes Alliance’s composite mark

as a matter of law. We modify the district court’s injunction in one respect, 

however. By its terms, the injunction restrains Coalition from using its name

as well as its logo. We find that aspect of the injunction overbroad and therefore 

modify it to restrain Coalition’s use of its logo only.

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Accordingly, we AFFIRM the district court’s summary judgment ruling, 

but MODIFY the injunction to restrain only the use of Coalition’s logo.

I.

A.

Alliance for Good Government (“Alliance”) is a non-profit civic 

organization formed in 1967 to promote “honest and open government.” 

Alliance’s founding chapter is in Orleans Parish, but it operates both in New 

Orleans and throughout Louisiana. The organization hosts political forums, 

endorses candidates, and participates in campaigns through advertising. It

also distributes and publishes sample ballots featuring endorsed candidates.

Alliance ballots dating back to 1969 feature the same logo it continues to 

use today—a design with the organization’s name in blue type on a rectangular 

white background arranged around a stylized bird. Alliance considers its bird 

to be an eagle. In 2013, Alliance registered its service marks1 with the United 

States Patent and Trademark Office (“PTO”): the word mark “Alliance for Good 

Government,” and the composite mark consisting of the entire logo.2

 

1 A “service mark” means “any word, name, symbol, or device, or any combination 

thereof used by a person ... to identify and distinguish the services of one person ... from the 

services of others and to indicate the source of the services, even if that source is unknown.” 

15 U.S.C. § 1127. A “word mark” refers to mark comprised only of words, while a “design 

mark” refers to a mark comprised of symbols. See, e.g., Nola Spice Designs, LLC v. Haydel 

Enters., Inc., 783 F.3d 527, 537, 540 (5th Cir. 2015). A “composite mark” refers to a mark 

“containing both words and symbols in a distinct manner.” Igloo Prods. Corp. v. Brantex, Inc., 

202 F.3d 814, 815 (5th Cir. 2000); see also 4 MCCARTHY ON TRADEMARKS AND UNFAIR 

COMPETITION § 23:47 (5th ed. 2018) (“McCarthy”) (discussing comparison of “composite 

marks involving both designs and words”).

2 Specifically, Alliance registered its word mark as No. 4,330,957 on May 7, 2013. This 

mark is for the name “Alliance for Good Government” in “standard characters without claim 

to any particular font, style, size, or color.” Alliance registered its composite mark as No. 

4,349,156 on June 11, 2013. This mark is described as follows: “[A] bold line drawing of an 

eagle with outstretched wings with head facing left. Above the image is the word ‘Alliance’ 

and below the eagle are the words ‘good government’ and on the next line is ‘since 1967.’” 

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Coalition for Better Government (“Coalition”) is a non-profit civic 

organization formed in New Orleans in 1982 to endorse political candidates.

Coalition operates mainly in New Orleans and promotes preferred candidates 

by advertising sample ballots in New Orleans newspapers. Coalition and 

Alliance sometimes endorse the same, or opposing, candidates: candidates 

endorsed by each have run in the same election at least twice.

Coalition also has a logo, which it uses in sample ballots dating back to 

at least 1992 (possibly the early 1980s). Coalition’s logo features its name in 

white type on a rectangular blue background arranged around a stylized bird. 

Coalition’s bird appears identical to Alliance’s, but Coalition believes the birds 

are different types: Coalition considers its bird to be a hawk, not an eagle.3

Because pictures are worth a thousand words, here are the logos again:

B.

Alliance first sued Coalition for trademark infringement in 2008 in 

Louisiana state court. After skirmishing over venue, Alliance moved to dismiss 

its suit when it believed Coalition had stopped activity and ceased use of the 

Coalition logo. But in 2016 Coalition resumed using its logo to endorse political 

candidates. Indeed, in the primary elections for Louisiana district judges on 

March 25, 2017, Alliance and Coalition endorsed opposing candidates. That 

 

3 The record reflects that Coalition has used at least two slightly different bird designs 

in its logos. The bird on Coalition’s 1992 ballot looks modestly different from the bird on its 

post-2008 ballots. But because Alliance challenges the use of Coalition’s logo only from 2008 

forward, we need not address whether Coalition’s 1992 logo infringed Alliance’s mark.

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same month Coalition filed two applications with the PTO to register its name 

and logo, which Alliance opposed.4

In April 2017, Alliance sued Coalition in federal court claiming federal 

trademark infringement under 15 U.S.C. § 1114, as well as various other 

federal and state trademark and unfair trade practice claims. Coalition 

counterclaimed for, inter alia, fraudulent trademark procurement under 15 

U.S.C. § 1120. In August 2017 Coalition moved for summary judgment arguing 

Alliance’s suit was barred by laches, and that same month Alliance moved for 

partial summary judgment solely on federal trademark infringement. The 

district court held a hearing on the cross-motions. Ruling from the bench, the 

court denied Coalition’s motion for summary judgment on laches and granted 

Alliance’s motion for partial summary judgment on federal trademark 

infringement. Alliance voluntarily dismissed its remaining claims.

Subsequently, the district court issued an order permanently enjoining 

Coalition from using both its name and logo. Coalition timely appealed the 

district court’s trademark infringement ruling and injunction.5

II.

We review a grant of summary judgment de novo, applying the same 

standard as the district court. Smith v. Reg’l Transit Auth., 827 F.3d 412, 417 

(5th Cir. 2016). Summary judgment is proper where the pleadings and record 

materials show no genuine dispute as to any material fact, entitling the 

 

4 Coalition’s word mark application, dated March 17, 2017, seeks to register the name 

“Coalition for Better Government” in “standard characters, without claim to any particular 

font style, size, or color.” Coalition’s composite mark application, also dated March 17, 2017, 

seeks to register its logo, described as “white letters spelling the words ‘Coalition For Better 

Government’ with a drawing of a hawk.” Attached to the application are Coalition’s present 

logo (the subject of this suit) and the 1992 version. The parties inform us that the PTO has 

stayed Alliance’s opposition proceeding pending the outcome of this suit.

5 Coalition raises no argument on appeal concerning the district court’s laches ruling, 

and consequently the issue is not before us.

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movant to judgment as a matter of law. FED. R. CIV. P. 56(a). If the moving 

party initially shows the non-movant’s case lacks support, “the non-movant 

must come forward with ‘specific facts’ showing a genuine factual issue for 

trial.” TIG Ins. Co. v. Sedgwick James, 276 F.3d 754, 759 (5th Cir. 2002). We 

must view the evidence in the light most favorable to the non-moving party, 

drawing all justifiable inferences in the non-movant’s favor. Envtl. 

Conservation Org. v. City of Dallas, 529 F.3d 519, 524 (5th Cir. 2008).

III.

To prevail on a claim of federal trademark infringement under the 

Lanham Act, 15 U.S.C. § 1051 et seq., a plaintiff must show (1) ownership of a 

legally protectable mark and (2) a likelihood of confusion created by an 

infringing mark. Nola Spice Designs, LLC v. Haydel Enters., Inc., 783 F.3d 527, 

536 (5th Cir. 2015); Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 

329 (5th Cir. 2008).6 On appeal, Coalition first argues that the Lanham Act

cannot apply to its marks because Coalition engages only in “political speech” 

and does not engage in “commerce or the sale of goods.” Coalition failed to raise 

these arguments below, however, and we decline to address them. Second, 

Coalition attacks the district court’s summary judgment grant, arguing that 

the court erred in ruling that Alliance had a valid mark and that Alliance 

proved Coalition’s marks created a likelihood of confusion. We affirm the 

district court’s ruling and injunction as to Coalition’s logo but modify the 

injunction as to Coalition’s name. 

 

6 The Lanham Act provides in relevant part that a person “shall be liable in a civil 

action” by the registrant of a mark if the person, without the registrant’s consent, “use[s] in 

commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in 

connection with the sale, offering for sale, distribution, or advertising of any goods or services 

on or in connection with which such use is likely to cause confusion, or to cause mistake, or 

to deceive[.]” 15 U.S.C. § 1114(1)(a). 

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A.

As a threshold matter, Coalition argues that the Lanham Act cannot 

apply to its marks because Coalition engages only in “political speech” and is a 

non-profit entity not “engaged in commerce or the sale of goods.” Coalition 

failed to properly raise these arguments in the district court. To preserve either

issue for appeal, Coalition had to “‘press and not merely intimate the argument 

during the proceedings before the district court ... to such a degree that the 

district court ha[d] an opportunity to rule on it.’” Keelan v. Majesco Software, 

Inc., 407 F.3d 332, 340 (5th Cir. 2005) (quoting N.Y. Life Ins. Co. v. Brown, 84 

F.3d 137, 141 n.4 (5th Cir. 1996)) (brackets added). Coalition did not do so and 

we therefore decline to reach the arguments. See, e.g., Reyes v. Manor Indep. 

Sch. Dist., 850 F.3d 251 (5th Cir. 2017) (“We do not consider issues brought for 

the first time on appeal.”).

During summary judgment proceedings, Coalition (1) raised the defense 

of laches, (2) urged the invalidity of Alliance’s marks due to fraud and lack of 

distinctiveness, and (3) argued that fact issues precluded summary judgment 

on likelihood of confusion. Nowhere in those proceedings did Coalition brief or 

articulate—much less “press”—the argument that its political or non-profit

nature insulates it from Alliance’s trademark infringement claims. Because

Coalition said nothing about those issues, the district court’s ruling 

understandably did not address them. “‘If a party fails to assert a legal reason 

why summary judgment should not be granted, that ground is waived and 

cannot be considered or raised on appeal.’” Keelan, 407 F.3d at 339-40 (quoting 

Keenan v. Tejeda, 290 F.3d 252, 262 (5th Cir. 2002)).

To be sure, Coalition’s answer to Alliance’s complaint raised—among 

thirteen affirmative defenses—the defense that “its actions constitute purely 

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non-commercial and political free speech.”7 But Coalition never developed the

argument beyond that cursory statement and, by the time of the summary 

judgment proceedings, the issue had vanished. The argument is thus waived. 

See, e.g., Keenan, 290 F.3d at 262 (explaining that “‘[e]ven an issue raised in 

the complaint but ignored at summary judgment may be deemed waived’”) 

(quoting Grenier v. Cyanamid Plastics, Inc., 70 F.3d 667, 678 (1st Cir. 1995)); 

see also Frank C. Bailey Enters., Inc. v. Cargill, Inc., 582 F.2d 333, 334 (5th 

Cir. 1978) (holding that “an appellate court, in reviewing a summary judgment 

order, can only consider those matters presented to the district court”).8 

B.

We proceed to Alliance’s federal trademark infringement claim. The 

district court granted Alliance summary judgment, finding the evidence 

undisputed that Alliance’s marks are legally protectable and that Coalition’s 

use of its marks creates a likelihood of confusion with Alliance’s. Unless 

 

7 Coalition’s motion to dismiss also stated it engages in “political free speech,” without 

ever making, briefing, or otherwise developing a distinct First Amendment claim. 

8 The interplay between the Lanham Act and the First Amendment’s political and 

commercial speech doctrines raises a thicket of issues we decline to enter when the issues 

were not preserved or ruled on below. See, e.g., Radiance Found., Inc. v. NAACP, 786 F.3d 

316 (4th Cir. 2015) (observing “[a]t least five of our sister circuits”—the D.C., 10th, 9th, 6th, 

and 8th—“have interpreted [‘in connection with the sale ... or advertising of any goods or 

services’ in 15 U.S.C. § 1114(1)(a) of the Lanham Act] as protecting from liability all 

noncommercial uses of marks”); id. at 323-24 (adopting commercial speech doctrine as 

“guidance” in applying Lanham Act’s “in connection” requirement); but see United We Stand 

Am., Inc. v. United We Stand Am. N.Y., Inc., 128 F.3d 86, 90 (2nd Cir. 1997) (observing “[t]he 

Lanham Act has ... been applied to defendants furnishing a wide variety of non-commercial 

public and civic benefits” and concluding that “[a] political organization that ... endorses 

candidates under a trade name” satisfies the “in connection” requirement). This Court does 

not appear to have spoken directly on this debate but has held that a different section of the 

Lanham Act, 15 U.S.C. § 1125(a), encompasses only “commercial advertising or promotion.” 

Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1382-83 (5th Cir. 1996); see also TMI Inc. v. 

Maxwell, 368 F.3d 433, 436 n.2 (5th Cir. 2004) (stating that “[t]his Court has previously 

determined that §43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1), which addresses false and 

misleading descriptions, only applies to commercial speech”) (citing Procter & Gamble Co. v. 

Amway Corp., 242 F.3d 539, 547 (5th Cir. 2001), abrogated on other grounds by Lexmark Int’l, 

Inc. v. Static Control Components, Inc., 572 U.S. 118, 134-37 (2014)).

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otherwise indicated, the following discussion in parts B.1 and B.2 focuses on 

Alliance and Coalition’s logos. We separately address the district court’s 

injunction as to Coalition’s name in part C, infra.

1.

On appeal, Coalition disputes the district court’s conclusion that

Alliance’s composite mark is legally protectable. “To be protectable, a mark 

must be distinctive, either inherently or by achieving secondary meaning in 

the mind of the public.” Am. Rice, 518 F.3d at 329 (citations omitted). We reject 

Coalition’s arguments.

First, Coalition claims summary judgment was improper on this point 

because fact issues exist as to whether Alliance obtained its mark “by a false 

or fraudulent declaration” under 15 U.S.C. § 1120. Even assuming this 

argument is pertinent here,9 it fails. Coalition’s only evidence is Alliance’s 2012 

PTO declaration stating that, to the best of Alliance’s knowledge, “no other 

person has the right to use such mark in commerce either in the identical form

thereof or in such near resemblance thereto as to be likely ... to cause 

confusion[.]” See 15 U.S.C. § 1051(b)(3)(D) (requiring this verification with

trademark application). Coalition suggests this declaration was fraudulent

because, in 2012, Alliance was “fully aware” Coalition was using its own mark. 

But Coalition misreads the declaration, which states only that Alliance 

 

9 Coalition points to no authority suggesting that whether a mark was fraudulently 

obtained under 15 U.S.C. § 1120 is relevant to whether a mark is “distinctive,” the touchstone 

for validity in a section 1114 infringement claim. See Nola Spice, 783 F.3d at 537 (citing WalMart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210-11 (2000)). Even if it were, however, we 

note that Coalition raised fraudulent procurement under § 1120 in a separate counterclaim 

that was dismissed by the district court. Coalition’s appellate briefing neither mentions this 

ruling nor explains why it was incorrect, thus abandoning the issue. Yohey v. Collins, 985 

F.2d 222, 224-25 (5th Cir. 1993); FED. R. APP. P. 28(a)(4). Consequently, we doubt that 

Coalition’s fraud claim is pertinent to the distinctiveness of Alliance’s mark, and we also 

doubt the issue is properly before us. Nonetheless, we reach the issue because Coalition 

raised it in opposing summary judgment and because it is easily resolved. 

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believed in 2012 that no one else had the “right” to use its mark or any 

confusingly-similar mark. The record is undisputed that Alliance believed it 

had the exclusive right to use its marks in 2012—otherwise, why would 

Alliance have sued in 2008 to stop Coalition from using its marks? The 2012 

declaration does not remotely create a fact issue as to whether Alliance 

obtained its mark by fraud. See, e.g., Meineke Disc. Muffler v. Jaynes, 999 F.2d 

120, 126 (5th Cir. 1993) (explaining that a fraudulent registration claim 

requires proof “by clear and convincing evidence that the applicant made false 

statements with the intent to deceive the licensing authorities”). 

Second, Coalition argues that Alliance offered no evidence that its mark 

was distinctive, and therefore legally protectable, and that fact issues persist 

on that issue. We disagree. Among other evidence, Alliance offered undisputed 

evidence that it registered both of its marks with the PTO in 2013—its word 

mark on May 7, 2013, and its composite mark on June 11, 2013. The 

registration of Alliance’s composite mark with the PTO “is prima facie evidence 

that the mark[ ] [is] inherently distinctive.” Nola Spice, 783 F.3d at 537 (citing

Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237 (5th Cir. 2010); 

15 U.S.C. § 1057(b)).10 To be sure, Coalition could have offered evidence “to 

 

10 Unlike its composite mark, Alliance’s word mark was registered under section 2(f) 

of the Lanham Act, which allows registration based on evidence that the mark has “become 

distinctive” based on “proof of substantially exclusive and continuous use thereof as a mark 

by the applicant in commerce for five years before the date on which the claim of 

distinctiveness is made.” 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin, Inc. v. Ishtar Skin 

Care Prods., Inc., 745 F.3d 877, 882 (8th Cir. 2014). “[T]he presumption of validity that 

attaches to a § 2(f) registration includes a presumption that the registered mark has acquired 

distinctiveness, or secondary meaning, at the time of its registration.” Id. at 882-83 (citations 

omitted). While this presumption differs from the presumption of inherent distinctiveness 

enjoyed by Alliance’s composite mark, see, e.g., Nola Spice, 783 F.3d at 537 n.1, here we 

consider only Alliance’s composite mark. See, e.g., Igloo Prods. Corp., 202 F.3d at 817 

(explaining that the prima facie presumption arising from a composite mark’s registration 

“pertains to the whole mark ... rather than to any individual portion of the mark”) (citing In 

re Nat’l Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985); In re Bose Corp., 772 F.2d 866, 873 

(Fed. Cir. 1985)) (emphasis in original).

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overcome the presumption of inherent distinctiveness that accompanies 

[Alliance’s] registration[.]” Nola Spice, 783 F.3d at 542 (citing Amazing Spaces, 

608 F.3d at 234). But Coalition offered no evidence concerning the inherent 

distinctiveness of Alliance’s composite mark; rather, it offered evidence 

concerning Alliance’s word mark only (specifically, evidence of similarlynamed organizations outside Louisiana). Such evidence has nothing to do with 

the central inquiry governing the inherent distinctiveness of Alliance’s 

composite mark—namely, whether the mark’s “design, shape or combination 

of elements is so unique, unusual or unexpected in this market that one can 

assume without proof that it will automatically be perceived by customers as 

an indicator of [the] origin” of Alliance’s services, and whether Alliance’s logo 

“was capable of creating a commercial impression distinct from the 

accompanying words.” Nola Spice, 783 F.3d at 541 (quoting Amazing Spaces, 

608 F.3d at 232, 243-44) (internal quotation marks omitted); see also Seabrook 

Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977) 

(setting forth analysis governing inherent distinctiveness of design marks).11

Consequently, Coalition failed to rebut the presumption that Alliance’s 

 

11 Alliance also argues on appeal that the unrebutted evidence showed its marks have 

achieved secondary meaning—such as evidence that Alliance has continuously used its 

marks for nearly fifty years in connection with hundreds of Louisiana elections in a variety 

of advertising media. See also, e.g., Alliance for Good Gov’t, Inc. v. St. Bernard Alliance for 

Good Gov’t, Inc., No. 96-CA-0635, at *6 (La. App. 4th Cir. 12/18/96); 686 So.2d 83, 86 (holding 

that, for purposes of Louisiana trademark law, the name “Alliance for Good Government” has 

acquired secondary meeting “[g]iven the length of time that [Alliance] has been in existence” 

and given that “there is obviously a great amount of name recognition and/or goodwill 

associated with the name ‘Alliance for Good Government’”). We need not reach the issue of 

secondary meaning, however, given the unrebutted presumption of distinctiveness attaching 

to Alliance’s mark by virtue of its PTO registration. 

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composite mark was inherently distinctive and therefore legally protectable. 

The district court properly granted summary judgment on this point.

2.

Coalition also contests the summary judgment ruling that Coalition’s use 

of its logo created a likelihood of confusion with Alliance’s composite mark.

To prove infringement, a plaintiff “must show that the defendant’s use 

of the mark ‘creates a likelihood of confusion in the minds of potential 

customers as to the ‘source, affiliation, or sponsorship’” of the product or service 

at issue. Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack 

Apparel Co., 550 F.3d 465, 478 (5th Cir. 2008) (quoting Westchester Media v. 

PRL USA Holdings, Inc., 214 F.3d 658, 663 (5th Cir. 2000)). The required 

showing is a “probability” of confusion, not merely a “possibility.” Xtreme 

Lashes v. Xtended Beauty, 576 F.3d 221, 226 (5th Cir. 2009) (citing Smack 

Apparel, 550 F.3d at 478). This Circuit considers the following eight 

nonexhaustive “digits” to assess likelihood of confusion:

(1) strength of the mark; (2) mark similarity; (3) product or service

similarity; (4) outlet and purchaser identity; (5) advertising media 

identity; (6) defendant’s intent; (7) actual confusion; and (8) care 

exercised by potential purchasers.

See generally, e.g., Am. Rice, 518 F.3d at 329 (citing Oreck Corp. v. U.S. Floor 

Sys., Inc., 803 F.2d 166, 170 (5th Cir. 1986)); Xtreme Lashes, 576 F.3d at 227

(citing Smack Apparel, 550 F.3d at 478). “‘The absence or presence of any one 

factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion 

need not be supported even by a majority of the ... factors.’” Am. Rice, 518 F.3d 

at 329 & n.19 (quoting Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 

145, 150 (5th Cir. 1985)). While likelihood of confusion typically presents a 

contested fact issue, “summary judgment may be upheld if the ... record 

compels the conclusion that the movant is entitled to judgment as a matter of 

law.” Smack Apparel, 550 F.3d at 474 (citing Beef/Eater Rests., Inc. v. James 

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Burrough, Ltd., 398 F.2d 637, 639 (5th Cir. 1968)). In its ruling, the district 

court found that the first six digits pointed strongly towards a likelihood of 

confusion; that there was no evidence as to the seventh digit (actual confusion); 

and that the eighth digit (care exercised by potential purchasers) did not seem 

applicable. We agree with the district court’s ruling as to the parties’ logos.

Strength of Mark. The district court found that “Alliance has a very 

strong mark[.]” We agree. In assessing the strength of Alliance’s composite 

mark, we look to two factors. First, we consider where the mark falls on a

spectrum of distinctiveness ranging from “generic, descriptive, [or] suggestive” 

to “arbitrary and fanciful”—with the strength of the mark increasing as “‘one 

moves away from generic and descriptive marks toward arbitrary marks.’” Am. 

Rice, 518 F.3d at 330 (quoting Falcon Rice Mill, Inc. v. Cmty. Rice Mill, Inc., 

725 F.2d 336, 346 (5th Cir. 1984)); see also, e.g., Xtreme Lashes, 576 F.3d at 

227 (discussing spectrum) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 

763, 768 (1992)).12 Second, we consider “the standing of the mark in the 

marketplace.” Am. Rice, 518 F.3d at 330 (citing Sun Banks of Fla., Inc. v. Sun 

Fed. Sav. & Loan Ass’n, 651 F.2d 311, 315 (5th Cir. 1981)).

Both factors support the strength of Alliance’s composite mark. On the 

distinctiveness spectrum, the dominant feature of the logo—the stylized bird—

is suggestive. See, e.g., Xtreme Lashes, 576 F.3d at 227 (explaining that “[i]t is 

 

12 A generic term “refers to the class of which a good is a member” and receives no 

trademark protection. Xtreme Lashes, 576 F.3d at 227 (citing Two Pesos, 505 U.S. at 768). A 

descriptive term “provides an attribute or quality of a good,” and may be protected only if it 

has acquired secondary meaning. Id. A suggestive term “suggests, but does not describe an 

attribute of the good; it requires the consumer to exercise his imagination to apply the 

trademark to the good.” Id. (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 

786, 791 (5th Cir. 1983)). Arbitrary or fanciful terms “bear no relationship to the products or 

services to which they are applied.” Amazing Spaces, 608 F.3d at 241 (quoting Zatarains, 698 

F.2d at 790-91). Suggestive, arbitrary, and fanciful terms, “because their intrinsic nature 

serves to identify a particular source of a product, are deemed inherently distinctive and are 

entitled to protection.” Xtreme Lashes, 576 F.3d at 227 (quoting Two Pesos, 505 U.S. at 763). 

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proper to give more weight to the distinctive portions of a mark and less weight 

to unremarkable or generic portions”) (citing In re Dixie Rests., Inc., 105 F.3d 

1405, 1407 (Fed. Cir. 1997)). The image of the bird—which Alliance considers 

to be an eagle—is not “intrinsic” to the services of a good-government 

organization promoting preferred candidates, which would be characteristic of 

a merely generic or descriptive feature. See, e.g., Am. Rice, 518 F.3d at 330 

(explaining that “the image of a girl icon being used to sell rice is not intrinsic 

to rice as a product”). Instead, the audience for Alliance’s endorsements must 

“exercise some imagination” to associate the logo’s bird symbolism with 

Alliance’s services. See, e.g., Xtreme Lashes, 576 F.3d at 227 (explaining that 

“a suggestive term ... requires the consumer to exercise his imagination to 

apply the trademark to the good”). Moreover, as explained, Alliance’s 

composite mark enjoys an unrebutted presumption of distinctiveness13 due to

its PTO registration, see Nola Spice, 783 F.3d at 537, further enhancing the 

strength of the mark. See, e.g., Amazing Spaces, 608 F.3d at 237 (explaining 

that PTO registration constitutes prima facie evidence “that the registrant has 

the exclusive right to use the registered mark in commerce with respect to the 

specified goods or services”); 15 U.S.C. §§ 1057(b) & 1115(a); see also, e.g., Am. 

Rice, 518 F.3d at 330 (relying on presumption of validity from PTO registration 

as a factor in mark strength).14 Finally, as to the standing of Alliance’s mark 

 

13 We again note that Alliance’s word mark enjoys an unrebutted presumption that it 

had secondary meaning when registered. See 15 U.S.C. § 1052(f); see also, e.g., Lovely Skin, 

745 F.3d at 882-83. Thus, to the extent that Alliance’s name is separately relevant to the 

strength of Alliance’s composite mark, the name’s presumed secondary meaning under 

section 1052(f) also supports the strength of the mark. See, e.g., Viacom Int’l v. IJR Capital 

Investments, LLC, 891 F.3d 178, 193 (5th Cir. 2018) (finding mark at issue strong “because 

it has acquired distinctiveness through secondary meaning”).

14 While Alliance does not argue the point, it appears from the record that Alliance’s 

marks are eligible for incontestability status. See 15 U.S.C. § 1065 (providing an owner’s right 

to use a mark “shall be incontestable,” if the mark “has been in continuous use for five 

consecutive years subsequent to the date of ... registration”). Incontestability furnishes 

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in the marketplace, it is undisputed that Alliance has used its mark for some 

fifty years to promote candidates in yearly elections in a variety of Louisiana 

advertising media. See, e.g., Sun-Fun Prods. v. Suntan Research & Devel. Inc., 

656 F.2d 186, 190-91 (5th Cir. Unit B Sept. 1981) (considering duration of use 

and promotion of the mark in assessing standing of the mark in the 

marketplace). Coalition offers no argument on appeal to counter these indicia 

of strength. We agree with the district court that the evidence points to the 

strength of Alliance’s mark.

Mark Similiarity. The district court found that the two composite marks 

“looked exactly alike,” strongly supporting likelihood of confusion. We agree.

In assessing mark similarity, we “compar[e] the marks’ appearance, 

sound, and meaning.” Elvis Presley Enters. Inc. v. Capece, 141 F.3d 188, 201

(5th Cir. 1998). “Similarity of appearance is determined on the basis of the 

total effect of the designation, rather than on a comparison of individual 

features,” but “courts should give more attention to the dominant features of a 

mark.” Xtreme Lashes, 576 F.3d at 228 (internal quotation marks and citations 

omitted); see also, e.g., Sun-Fun Prods., 656 F.2d at 189 (noting the “wellestablished proposition that similarity of design stems from the overall 

impression conveyed by the mark and not a dissection of individual features”) 

(citations omitted). The inquiry focuses, not on whether two marks are 

 

“conclusive evidence” of the registrant’s exclusive right to use the mark, id. § 1115(b), but 

does not relieve a plaintiff from his burden of proving infringement. KPO Permanent MakeUp, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004). Incontestability does, 

however, preclude an infringement action from being “defended on the grounds that the mark 

is merely descriptive.” Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 205 (1985). 

It also shows strength of the mark. See, e.g., Am. Rice, 518 F.3d at 330 (noting in the strengthof-mark analysis that mark at issue was “incontestable”). The record reflects that Alliance’s 

two marks were registered in May and June of 2013. We express no opinion on whether 

Alliance’s marks satisfy the additional requirements of section 1065. See, e.g., 15 U.S.C. 

§ 1065(3) (requiring, inter alia, filing an affidavit with the Director within one year of 

expiration of the five-year period).

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identical in every respect, but on “whether, under the circumstances of the use, 

the marks are sufficiently similar that prospective purchasers are likely to 

believe that the two users are somehow associated.” Capece, 141 F.3d at 201 

(citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 21 cmt. c (1995)); see 

also, e.g., Xtreme Lashes, 576 F.3d at 229 (“Confusion of origin, not the identity 

of marks, is the gravamen of trademark infringement”) (citing KPO Permanent 

Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004)). 

To cut to the chase: Alliance and Coalition have the same logo. Same 

shape (rectangular). Same lines in the same place (two parallel, horizontal 

lines over and under the bird). Same arrangement of words (one big word above 

the top line; three smaller words below the bottom line). Same colors (one, blue 

on a white background; the other, white on a blue background). And, of course, 

the same birds. Not similar birds; the same birds—with the same down-pointed 

beak, gazing over the same wing (the right), sporting the same number of 

identically-stylized feathers (forty-three). As Alliance’s brief succinctly puts it, 

“Coalition ... uses a virtual copy of Alliance’s trademarked logo[.]” It is no 

answer that Coalition’s name is slightly different from Alliance’s

(“COALITION” instead of “ALLIANCE”; “BETTER” government instead of 

“good” government), or that the two logos use obverse color schemes. Rather 

than focusing on “a comparison of individual features,” the district court 

correctly focused on the “total effect” of the logos and on their “dominant 

features.” Xtreme Lashes, 576 F.3d at 228. The district court could not have 

said it better: “It looks like if [you] place one over the other[,] it would be 

virtually identical. Maybe exactly identical.”

We must focus, of course, not merely on whether the marks are identical, 

but on whether the virtually-identical marks are used in a manner that

prospective “purchasers” of the two organizations’ services (i.e., voters who rely 

on Alliance and Coalition endorsements) are “likely to believe that the two 

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users are somehow associated.” Capece, 141 F.3d at 201. Here we also find the 

evidence uncontested and overwhelming. It is undisputed that Alliance and 

Coalition work in the same field (elections), operate in the same market (New 

Orleans), use the same advertising channels (newspapers, sample ballots, 

flyers), and sometimes endorse the same or opposing candidates. 

Consequently, there is no question that the overall similarity of the marks, in 

the context of their use, creates a likelihood in the minds of voters that the two 

organizations are “somehow associated.” Capece, 141 F.3d at 201. 

Finally, we observe that Coalition attempted to distinguish the two 

logos—not by appearance, design, color, or font—but by the birds’ species:

DISTRICT COURT: They look exactly alike to me, the two birds.

COUNSEL: [...] [N]o, they really aren’t, your Honor, if you look at 

the wing span. The wing span of the eagle is different from the 

hawk. It’s much larger and it fans out, and that’s just the way the 

hawk looks.

COURT: I’ll tell you, unless my eyes are deceiving me, ... those 

two look exactly alike. They even look like the same feathers, same 

number of feathers, same arrangement, head is facing the same 

way, the same beak. I don’t know if you call them – I don’t know 

technically what kind of bird it is, but whatever they are, they look 

exactly alike to me.

COUNSEL: Well, they’re both birds of prey; one is an eagle and 

one is a hawk.

COURT: Okay.

COUNSEL: And when we filed with the Secretary of State to get 

our font, we said it was a hawk. We were represented by a hawk, 

not an eagle.

We agree with the district court: the birds are identical. Whether that bird is 

a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk),

or some other bird, we need not determine.

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Product or service similarity. “‘The greater the similarity between the 

products and services, the greater the likelihood of confusion.’” Xtreme Lashes, 

576 F.3d at 229 (quoting Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628 

F.2d 500, 505 (5th Cir. 1980)). The district court found the services provided 

by the two organizations—endorsement of candidates—are “exactly the same.” 

On appeal Coalition offers no response. The district court was correct.

Outlet and purchaser identity. The district court found that the outlet 

and purchaser identity for the two organizations was the same, and again 

Coalition offers no argument to the contrary. We agree with the district court. 

The undisputed evidence shows that Alliance and Coalition both target New 

Orleans voters, often through the same local channels. The greater the overlap 

between the outlets for, and consumers of, the services, the greater the 

potential for confusion. See, e.g., Exxon, 628 F.2d at 505 (finding similarity of 

products where both plaintiff and defendant were involved in “car care”); cf.

Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 262 (5th Cir. 1980) 

(explaining that “[d]issimilarities between the retail outlets for and the 

predominant consumers of plaintiff’s and [defendant’s] goods lessen the 

possibility of confusion, mistake, or deception”).

Advertising media identity. The district court found that the two 

organizations advertised on behalf of candidates “in the same or similar 

media.” Coalition again fails to dispute this finding. We agree with the district 

court. The undisputed evidence shows both organizations advertised in New 

Orleans newspapers using the same means, such as sample ballots in the 

newspaper and flyers distributed by mail or by hand. “[A]dvertising in similar 

media [i]s an indication that consumers might be confused as to the source of 

similar products.” Am. Rice, 518 F.3d 332 (brackets added); see also, e.g., 

Xtreme Lashes, 576 F.3d at 229 (inferring similar advertising and marketing 

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channels where both parties targeted the same class of buyers using “print 

advertisements, direct mailings, and Internet promotion”).

Defendant’s intent to infringe. “‘[I]f the [challenged] mark was adopted 

with the intent of deriving benefit from the reputation of (the plaintiff,) that 

fact alone may be sufficient to justify the inference that there is confusing 

similarity.’” Chevron Chem. Co. v. Voluntary Purchasing Grps., Inc., 659 F.2d 

695, 703-04 (5th Cir. Unit A Oct. 1981) (quoting Amstar Corp., 615 F.2d at 263)

(brackets added). The district court found that, while there was no evidence of 

“actual intent to infringe,” Coalition’s logo “was certainly intended to mimic, 

and largely mimic[s] ... Alliance’s logo.” In response, Coalition argues this issue 

should not have been resolved on summary judgment because Alliance did not 

introduce evidence of intent to infringe.

The district court correctly inferred from the striking similarity between 

the marks that Coalition’s later mark was adopted “with the intent of deriving 

benefit from [Alliance].” Chevron, 659 F.2d at 704. “‘[A]s soon as we see that a 

second comer in a market has, for no reason that he can assign, plagiarized the 

‘make-up’ of an earlier comer, we need no more[.]’” Id. (quoting American 

Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 563 (2nd Cir. 1953)). 

Coalition’s own evidence bolsters this conclusion. At oral argument, Coalition 

drew our attention to a 1992 version of its logo featuring a slightly different 

stylized bird. But the mark challenged here is Coalition’s 2008 mark, which

features a newer iteration of the bird exactly like Alliance’s. “[W]e can think of 

no other plausible explanation for such behavior” than Coalition’s intent to 

benefit from Alliance’s pre-existing reputation. Chevron, 659 F.2d at 704.

Actual confusion. Alliance admitted, and the district court 

acknowledged, that there was no evidence of actual confusion. On appeal

Coalition relies heavily on this point, to no avail. “Although actual confusion is 

the ‘best evidence’ of confusion, it ‘is not necessary to a finding of likelihood of 

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confusion.’” Am. Rice, 518 F.3d at 333 (quoting Amstar, 615 F.2d at 263); see 

also, e.g., Exxon, 628 F.2d at 506 (explaining that “evidence of actual confusion 

... is not essential to a finding of likelihood of confusion”) (citation omitted).

Care exercised by potential purchasers. The district court did not analyze 

this factor and Coalition does not address it on appeal. See, e.g., Smack 

Apparel, 550 F.3d at 483 (explaining that, “[w]here items are relatively 

inexpensive, a buyer may take less care in selecting the item, thereby 

increasing the risk of confusion”). We need not consider this factor, since no 

one factor is dispositive, Am. Rice, 518 F.3d at 329, and since the balance of 

the factors point overwhelmingly in Alliance’s favor.

***

In sum, we agree with the district court that Alliance established 

likelihood of confusion as a matter of law. See, e.g., Viacom, 891 F.3d at 192 

(affirming summary judgment on likelihood of confusion even though “every

digit” of confusion did not weigh in movant’s favor) (emphasis in original). We 

therefore affirm the district court’s injunction as to Alliance’s composite mark. 

C.

We modify the district court’s injunction in one respect. The injunction 

restrains Coalition from using “the Coalition Marks,” which are defined to 

encompass not only Coalition’s logo, but also its “designation ‘Coalition for 

Better Government.’” To the extent the injunction restrains Coalition from 

using the name “Coalition for Better Government” in connection with 

endorsing candidates or its other activities, we find the injunction overbroad.

Based on our own review of the record, we conclude that Coalition’s use of its

trade name (as distinct from its logo) does not create a likelihood of confusion 

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with Alliance’s differently-worded trade name.15 In other words, Coalition may 

continue to use its name—provided it disassociates the name from its current

logo or develops a different logo that does not create confusion with Alliance’s 

composite mark. We therefore modify the injunction only to the extent that it 

restrains the use of Coalition’s name. We leave the injunction intact in all other 

respects. See, e.g., Wynn Oil Co. v. Purolator Chem. Corp., 536 F.2d 84, 86 (5th 

Cir. 1976) (modifying injunction on appeal by deleting one subsection). 

IV.

For the foregoing reasons, we AFFIRM the district court’s summary 

judgment ruling, but MODIFY the injunction to restrain only the use of 

Coalition’s logo.

AFFIRMED AS MODIFIED

 

15 See, e.g., Holidays Inns, Inc. v. Holiday Out in Am., 481 F.2d 445 (5th Cir. 1973) 

(affirming conclusion that “Holiday Inn” and “Holiday Out” were not confusingly similar); see 

also, e.g., W.L. Gore & Assoc., Inc. v. Johnson & Johnson, 882 F. Supp. 1454 (D. Del. 1995) 

(concluding “‘Easy Slide’ is dissimilar from ‘Glide’ in appearance and sound, tipping the 

balance against a finding of likelihood of confusion”), aff’d, 77 F.3d 465 (3rd Cir. 1996); CocaCola Co. v. Essential Prods. Co., 421 F.2d 1374, 1376 (C.C.P.A. 1970) (holding Coca-Cola and 

Coco Loco not confusingly similar because, inter alia, “the articulate utterance of one mark 

is far from identical with that of the other mark”); see also generally 4 McCarthy §23:30

(collecting cases holding word marks not confusingly similar). We reach this conclusion based 

solely on the record before us and offer no view regarding Alliance’s pending opposition to 

Coalition’s PTO application, which was stayed pending this lawsuit.

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