United States District Court for the District of Columbia
March 25, 2004.
PARTIDO REVOLUCIONARIO DOMINICANO (PRD) Seccional Metropolitana de Washington-DC, Maryland y Virginia, et al., Plaintiffs
"PARTIDO REVOLUCIONARIO DOMINICANO, Seccional de Maryland y Virginia," et al., Defendants/Counterclaimants
The opinion of the court was delivered by: PAUL FRIEDMAN, District Judge
This matter came before the Court for a bench trial on the parties'
cross-motions for a permanent injunction. The dispute relates to which
party has the right to use in the Washington, D.C. metropolitan area the
name and insignia associated with one of the three major political
parties in the Dominican Republic, the Partido Revolucionario Dominicano
("PRD"). Plaintiffs contend that defendants have intentionally created
confusion among individuals who are interested in Dominican political
issues by using the name and insignia of the PRD in an unauthorized
manner, which use has caused and will continue to cause irreparable harm
to their group the first group to use the PRD name and insignia.
Plaintiffs claim a violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), and common law trademark infringement. Defendants
filed counterclaims on similar grounds, but in defendants' favor. Both
parties seek permanent injunctive relief.
A bench trial took place over three days in the Fall of 2002. At the
trial, plaintiffs called as witnesses members of plaintiffs'
organization, President Hector Santos and Organizational Secretary
Andreas Beriguete. They also called as adverse witnesses President
Franklin Jimenez and Vice President Guillermo Rivera of defendants'
organization and offered the deposition testimony of Dr. Rafael Bonilla,
Secretary of the PRD in the Dominican Republic and a former Cabinet
Minister in the Dominican Republic. Plaintiffs then called Shelley
Blumberg Lorenzana as an expert witness in translation to translate two
documents plaintiffs offered in evidence. In their case-in-chief,
defendants called as witnesses Vice President in Function Felipe
Rodriguez, Mr. Rivera and Secretary General Ivan Romero, all from
defendants' organization, and Dr. Rafael Lantigua, who is the Federal
President of the PRD for the United States, Canada and Puerto Rico. In
addition, the Court accepted in evidence numerous documents offered in
support of the parties' claims.*fn1 After carefully considering the
briefs and arguments of counsel for the parties in support of their
cross-motions for permanent injunctive relief, the testimony of the
witnesses at trial and the admitted documentary evidence, the Court
concludes that plaintiffs are entitled to injunctive relief and that
defendants are not. It therefore will grant plaintiffs' motion and will
deny the motion of defendants.
I. FINDINGS OF FACT
Upon a careful consideration and evaluation of the testimony of all the
witnesses and the documentary evidence admitted at trial, and making
credibility findings as necessary and appropriate to resolve any material
discrepancies in the testimony, the Court makes the following findings of
A. Partido Revolucionario Dominicano Sectional of Washington, D.C.
The PRD is one of three major political parties in the Dominican
Republic. The PRD has authorized the establishment of chapters, or
"seccionals," outside of the Dominican Republic in order to provide a
forum for political discussion and social and cultural interaction of
Dominicans living abroad, as well as for individuals generally interested
in issues related to the Dominican Republic. See Transcript of Trial,
October 11, 2002 ("Tr.") at 10:21-12:9 (H. Santos).*fn2
According to the
general by-laws of the PRD, there is a procedure by which interested
groups become authorized as official seccionals. Specifically, "[t]he
Political Commission of the Party shall authorize in each case the
creation and integration of the Sectionals outside of the country and in
the Zones, along with their respective jurisdictions." Defs.' Ex. 30(b),
Excerpt from the General Statutes of the Dominican Revolutionary Party
("By-laws") ¶ 2; Tr. 91:2-5, 95:5-6 (F. Jimenez). The By-laws also
provide that a federal committee in the United States shall exist "which,
as the superior body within the hierarchy, shall
coordinate the activities of the Party throughout all of North America,"
including the activities of seccionals. See By-laws ¶ 1. The
president of the Federal Committee during the relevant time period was
Dr. Rafael M. Lantigua, who testified on defendants' behalf.
Plaintiffs comprise a seccional of the PRD authorized by the Political
Commission and established in 1982. It is run by a Board of Directors and
sponsors various social events, political rallies, fundraisers and similar
activities related to the Dominican Republic and the PRD. See Tr. at
11:21-22 (H. Santos). The seccional also participates in an official
capacity in the nomination of the PRD candidate for the presidency of the
Dominican Republic. See Tr. at 17:3-19:2 (H. Santos). Plaintiffs' group
has members from the District of Columbia, Maryland and Virginia. See
Pls.' Ex. 20(a), Seccional de Washington, Maryland & Virginia Lista
de Militantes; Pls.' Ex. 20(b), Programa de Revision γ Apertura Del
Registro de Militantes; Tr. at 73:10-21, 74:19-75:2 (A. Beriguete). The
majority of plaintiffs' members are from Maryland, and meetings are held
throughout the greater metropolitan area including in Maryland and
Virginia. See Tr. at 15:12-16:23 (H. Santos).
The official name of plaintiffs' group at its inauguration in 1982 was
Partido Revolucionario Dominicano Seccional of Washington, D.C. See Tr.
at 32:1-4 (H. Santos). The organization began using the name Partido
Revolucionario Dominicano Seccional Metropolitana de Washington D.C.,
Maryland Γ Virginia in 2000. See id. at 31:5-6. Individually,
plaintiffs are three corporations: one incorporated in Washington D.C. on
March 31, 2002, under the name "Partido Revolucionario Dominicano (PRD),
Seccional Metropolitana de Washington-DC, Maryland Γ Virginia;"
one incorporated in Virginia on December 1, 2000, under the name "Partido
Revolucionario Dominicano (PRD), Seccional Metropolitana de
Maryland y Virginia;" and one incorporated in Maryland on April 7, 2000,
under the name "Partido Revolucionario Dominicano (PRD), Seccional
Metropolitana de Washington-D.C., Maryland and Virginia, Ltd."
(collectively, "PRD-DC"). See Pls.' Ex.1, Government of the District of
Columbia Certificate of Incorporation (March 31, 2000); Pls.' Ex. 2,
Commonwealth of Virginia State Corporation Commission Certificate of
Incorporation (December 1, 2000); Pls.' Ex. 3, State of Maryland
Certificate of Incorporation.
As an authorized seccional, plaintiffs have a non-exclusive license to
use the name and insignia of the PRD in their publications and in the
course of their activities. See Tr. at 19:3-10 (H. Santos); Defs.' Ex.
34, Affidavit of Rafael A. Lantigua, M.D. ("Lantigua Aff") ¶ 11. A
group may not use the name Partido Revolucionario Dominicano unless it
officially has been approved by the PRD's Political Commission as a
seccional. See Tr. at 95:11-14; 127:8-10 (F. Jimenez).
B. "Partido Revolucionario Dominicano, Seccional de Maryland y
In 1996, several individuals decided to form a new seccional separate
from PRD-DC to be called "Partido Revolucionario Dominicano, Seccional de
Maryland y Virginia," ("PRD-MD/VA"). PRD-MD/VA focused on membership in
Maryland and Virginia, although the group did not have a policy of
rejecting individuals from Washington, D.C. See Rodriguez Test. (Nov.
19, 2002).*fn3 After assessing the potential membership base of a new
PRD-MD/VA applied to be an official seccional in January of 1999. See
Defs.' Ex. 10, Letter of Application; Tr. at 116:1-18 (F. Jimenez);
Rodriguez Test. (Nov. 19, 2002). This application was rejected verbally
by the then-PRD President Emmanuel Esqua Guerrero at a meeting in New
York, and ultimately was never approved. See Tr. at 117:19-119:4 (F.
Jimenez); Lantigua Test. (Nov. 19, 2002). PRD-MD/VA submitted a second
application to become an authorized seccional in November 1999. See Defs.'
Ex. 11, Letter from PRD-MD/VA to PRD President Hatuey DeCamps requesting
authorization of PRD-MD/VA as a seccional; Tr. at 117: 9-16 (F.
While both Mr. Jimenez and Mr. Rodriguez testified that Dr. Lantigua
had authorized PRD-MD/VA as a seccional, both witnesses admitted that the
Federal Chairman is not authorized to do so; only the PRD Political
Commission is. See Tr. at 94:15-20 (F. Jimenez); Rodriguez Test. (Nov.
19, 2002). Instead, the Federal Chairman's role in the admission of new
seccionals is to swear in the seccional after receiving "orders from the
party in the Dominican Republic." Tr. at 94:21-22 (F. Jimenez). Although
several defense witnesses testified that the Federal Chairman received
authorization to authorize PRD-MD/VA, see Tr. at 110: 21-24 (F.
Jimenez); Romero Test. (Nov. 19, 2002); Rivera Test. (Nov. 20, 2002),
this testimony is either conclusory and not supported by evidence or
based on Dr. Lantigua's assurances that PRD-MD/VA had been authorized by
the PRD, which does not suffice to prove that authorization in fact had
In his pre-trial affidavit, Dr. Lantigua averred that "[t]he P.R.D. has
by-laws that govern the way that the P.R.D. and committees, seccionales,
and other sub-groups that are authorized pursuant to those By-laws . . .
operate and conduct themselves." Defs.' Ex. 34, Lantigua Aff. ¶ 3.
Dr. Lantigua also averred that as president of the Federal Committee, he
serves as "the leader of the 'Federacion de Seccionales,' which
authorizes and oversees the operations and activities of numerous
'seccionales' or branches around the country." Id. ¶ 6. In his
testimony at trial, however, Dr. Lantigua conceded that only the
Political Commission makes decisions regarding authorization of
seccionals. See Lantigua Test. (Nov. 19, 2002).*fn6
Defendants have offered no evidence in the form of minutes of the
meeting at which the Political Commission purportedly authorized
PRD-MD/VA, the affidavit or testimony of any individual who attended such
a meeting, or any official authorization document. Dr. Lantigua testified
that he believed PRD-MD/VA had been approved, and that he would not have
sworn in PRD-MD/VA had the group not been authorized by the Political
Commission, but his statement of belief is insufficient to demonstrate
authorization. See Lantigua Test. (Nov. 19, 2002). By contrast, Dr.
Rafael Bonilla, General Secretary of the PRO, member of the Political
Commission and official party spokesman, unequivocally stated in a
pre-trial deposition that was admitted in evidence that PRD-MD/VA is not
officially recognized as a seccional because it has never been approved
by the Political Commission. See Pls.' Ex. 20, Deposition of Rafael S.
Bonilla, Oct. 4, 2002 at 10:8-11:3, 14:21-17:23. Upon review of all the
evidence the Court finds that there is no evidence before it that the
Political Commission of the PRD officially authorized PRD-MD/VA to be an
official seccional in accordance with the PRD By-laws, Dr. Lantigua's
Dr. Lantigua presided over a swearing-in ceremony for PRD-MD/VA on
September 30, 2000. See Rodriguez Test. (Nov. 19, 2002). The invitation
for the inauguration featured the name "PRD" together with PRD-MD/VA's
name. See Defs.' Ex. 12(a) (invitation to inauguration event). The name
and insignia of the PRD also were featured prominently on decorations
displayed at the inauguration event itself. See Defs.' Ex. 12(b),
Photographs of Inauguration (name and insignia of PRD prominently
displayed at the event).
Following the September 30, 2000 inauguration party, PRD-MD/VA made an
effort to gain members, raise funds, and work with non-profits in
philanthropic endeavors. In
doing so, the group intended to expand what it considered to be PRD-DC's
limited purpose beyond political activities. See Rodriguez Test. (Nov.
19, 2002). As part of this effort, PRD-MD/VA held several events for
which it sent invitations or distributed flyers that featured the name
and insignia of the PRD, including a celebratory inauguration party on
December 1, 2000. See Rodriguez Test. (Nov. 19, 2002); Defs.' Ex. 15,
Invitation to Dec. 1, 2000 event; Defs.' Ex. 16(a), flyer for Dec. 1,
2000 party; Defs.' Ex. 16(b)-(g) (letters of invitation to Dec. 1, 2000
party). The PRD insignia was prominently displayed at the December 1, 2000
party as well. See Defs.' Ex. 17(a)-(b) (photographs of Dec. 1, 2000
PRD-MD/VA subsequently distributed a newsletter that featured the name
and insignia of the PRD, see Defs.' Ex. 19(a) ("Seccional PRD "Don
Antonio Guzman Fernandez" Maryland y Virginia" Boletin Informativo
Mesual), and distributed invitations and flyers and held numerous events
that prominently displayed the PRD name and insignia. These included: (1)
a fundraiser sponsored by PRD-MD/VA (see Defs.' Ex. 19(b) (informational
flyer for fundraiser)); (2) a letter of invitation to PRD president
Hatuey DeCamps from Ivan Romero to attend a party in honor of the first
anniversary of "inauguration" (see Defs.' Ex. 19(c))); (3) the first
anniversary party itself, at which the PRD name and insignia were
displayed (see Defs.' Ex. 19(d) (photograph of event); (4) a calendar of
2001 events of PRD-MD/VA (see Defs.' Ex. 19(f)); and (5) a party honoring
Dominican Mothers (see Defs.' Ex. 19(g) (invitational promotion)).
After PRD-MD/VA began advertising its events using the PRD name and
insignia, individuals approached PRD-DC board members inquiring about the
individuals were confused and assumed that PRD-DC was sponsoring the
activities. See Tr. at 21:13-22:22, 26:6-13, 29:10-21. (H. Santos).*fn7
On November 21, 2000, PRD-DC through counsel sent a letter to PRD-MD/VA
asserting that the latter group was using the name and insignia of the
PRD in violation of the law and requesting that PRD-MD/VA cease and
desist using the name. See Pls.' Ex. 7, November 21, 2000 Letter from
Stanley H. Goldschmidt, Esq. to Dr. Guillermo Rivera. Dr. Rivera
responded to the letter, stating that he did not "have a problem
complying to [the] letter, but [he would] not accept any responsibility
for other individuals who might use any stationery, material, cards,
advertisements and the like. Therefore, [Dr. Rivera would] cease to
distribute any of the items" delineated in Mr. Goldschmidt's letter.
Pls.' Ex. 9, November 24, 2000 Letter from Dr. Guillermo Rivera to
Stanley H. Goldschmidt, Esq. Dr. Rivera testified at trial that he
foresaw no problem in complying with the letter because he interpreted it
as instructing him not to use "Washington, D.C." with respect to his
group, PRD-MD/VA. See Tr. at 140:7-15 (G. Rivera). PRD-MD/VA did not
cease using the name PRD or its insignia.
Plaintiffs filed suit raising two claims: (1) a violation of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and (2) common law
trademark infringement. Specifically, plaintiffs argue that by using the
name "Partido Revolucionario Dominicano, Seccional de Maryland y
Virginia" or any of its counterparts and the PRD insignia without
knowledge or authorization, defendants have infringed on plaintiffs'
exclusive license to use the name PRD and its insignia as an authorized
seccional in the Washington, D.C. metropolitan area. Defendants
counterclaim, raising identical claims and arguing that by using the name
Partido Revolucionario Dominicano Seccional Metropolitana de Washington
D.C., Maryland y Virginia rather than Partido Revolucionario Dominicano
Seccional de Washington D.C., plaintiffs improperly expanded their name,
and by doing so have infringed on defendants' authorized name. Both
parties moved for a permanent injunction restricting the other from, inter
alia, using the name and insignia of the PRD in the current form.
A. Standard for Permanent Injunction
In determining whether to enter a permanent injunction, the Court
considers a modified iteration of the factors it utilizes in assessing
preliminary injunctions: (1) success on the merits, (2) whether the
plaintiffs will suffer irreparable injury absent an injunction, (3)
whether, balancing the hardships, there is harm to defendants or other
interested parties, and (4) whether the public interest favors granting
the injunction. See National Ass'n of Psychiatric Health Systems, et al.
v. Shalala, 120 F. Supp.2d 33, 44 (D.D.C. 2002). See also Amoco.
Production Co. v. Village of Gambell, 480 U.S. 531, 546 n.12 (1987) ("The
standard for a preliminary injunction is essentially the same as for a
permanent injunction with the exception that the plaintiff must show a
likelihood of success on the merits rather than actual success.");
National Mining Ass'n v. U.S. Army Corps of Engineers, 145 F.3d 1399,
1408-09 (D.C. Cir. 1998) (demonstration of actual success on the merits
required for permanent injunctive relief). The Lanham Act expressly
provides that "courts vested with jurisdiction of civil actions arising
this [Act] shall have power to grant injunctions, according to the
principles of equity and upon such terms as the court may deem
reasonable, . . . to prevent a violation under subsection (a), (c), or
(d) of section 1125(a) of this title." 15 U.S.C. § 1116(a).
B. Success on the Merits
1. Section 43(a) of the Lanham Act
In order to prevail in a trademark infringement case under the Lanham
Act, "the plaintiff must show (1) that it owns a valid trademark, (2)
that its trademark is distinctive or has acquired a secondary meaning,
and (3) that there is a substantial likelihood of confusion between the
plaintiff's mark and the alleged infringer's mark." Malarkey-Taylor
Associates, Inc. v. Cellular Telecommunications Industry Association,
929 F. Supp. 473, 476 (D.D.C. 1996) (citing Sears, Roebuck and Co. v.
Sears Financial Network, 576 F. Supp. 857, 861 (D.D.C. 1983)) (additional
citation omitted). These protections extend to the names and symbols
related to political organizations. See United We Stand America, Inc. v.
United We Stand, America New York, Inc., 128 F.3d 86, 90 (2d Cir. 1997).
When a tradename is not registered on the United States Principal
Register of Trademarks, it can nonetheless benefit from Lanham Act
protection. See Duggal v. Krishna, 554 F. Supp. 1043, 1044 n.4 (D.D.C.
1983) ("The Lanham Act's proscription of unfair competition . . . is
available to the owner of an unregistered mark."). Here, both plaintiffs
and defendants bring suit under 15 U.S.C. § 1125(a), which provides
in relevant part that:
[a]ny person who, on or in connection with any goods
or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device, or
any combination thereof, or any false designation of
origin, false or misleading description of fact, or
false or misleading representation of fact, which (A)
is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or
association of such person with another person, or as
to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another
person . . . shall be liable in a civil action by any
person who believes that he or she is or is likely to
be damaged by such act.
15 U.S.C. § 1125(a)(1). Courts have concluded that this section
provides a cause of action to the licensee of a trademark or tradename
against a competitor for improper use of the licensed mark. See Twentieth
Century Fox Film Corp. v. Marvel Enterprises, Inc., 277 F.3d 253, 260 (2d
Cir. 2002); Ouabaug Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154,
160 (1st Cir. 1977) (exclusive licensee of product in United States has
standing under Section 1125(a) as one "who suffer[ed] adverse
consequences from a violation").
The analysis for unfair competition under Section 43(a) of the Lanham
Act is essentially the same as the analysis for trademark infringement.
"Where [the mark] is not inherently distinctive, the essential elements
are the same for either a trademark infringement or unfair competition
action." American Association for the Advancement of Science v. Hearst
Corp., 498 F. Supp. 244, 261-262 (D.D.C. 1980). In addition, "the remedy
for unfair competition, injunctive relief, is the same as that provided
by the infringement law." Id. at 262. The Court therefore will apply the
Sears, Roebuck infringement test to the parties' claims.
a. Ownership of the Mark
The first prong of the Sears, Roebuck analysis requires a party to
demonstrate "ownership" of the mark in question. In the absence of a
registered trademark, the Court assesses the factual circumstances from
which the claims arise in order to determine whether the party
claiming infringement or unfair competition has a cognizable interest in
the mark or name in question. See Duggal v. Krishna, 554 F. Supp. at 1047
(where the mark in dispute was the name of a periodical, the court
conducted inquiry as to which party owned the periodical). Here, the
"ownership" question boils down to whether either group has a license
from the PRD to use the name and insignia of the party. As the Court has
found, plaintiffs as an authorized seccional have a non-exclusive license
from the PRD to use the name and insignia of the PRD in their activities
and publications. See supra at 4. Accordingly, the Court concludes that
plaintiffs meet the first prong of the Sears, Roebuck test.
As the Court also has found, however, a group may not use the name
Partido Revolucionario Dominicano or its insignia unless it officially
has been approved by the Political Commission as a seccional. See supra
at 5, 7. Because the Court found that plaintiffs were approved to use the
name but that defendants failed to produce any evidence that the
Political Commission of the PRD ever authorized PRD-MD/VA, see supra at
8, the Court concludes that defendants' group does not have a license to
use the name and insignia of the PRD. Defendants therefore fail to meet
the first prong of the Sears, Roebuck standard, and their claim against
b. Distinctiveness and Secondary Meaning
With respect to the second prong of the Sears, Roebuck test, the Court
in Malarkey-Taylor stated:
The general rule regarding distinctiveness is clear:
an identifying mark is distinctive and capable of
being protected if it either (1) is inherently
distinctive or (2) has acquired distinctiveness
through secondary meaning. Generic and descriptive
terms receive little or
no trademark protection, while suggestive, arbitrary
or fanciful marks are viewed as inherently distinctive
and entitled to varying degrees of protection.
Malarkey-Taylor Associates, Inc. v. Cellular Telecommunications Industry
Association, 929 F. Supp. at 476 (quotation and citation omitted). See
also The Appleseed Foundation, Inc. v. Appleseed Institute, Inc.,
981 F. Supp. 672, 675 (D.D.C. 1997). A mark has secondary meaning "if it
inspires an association in the minds of the relevant buying public
between the name of the product and the product itself, or its source."
Duggal v. Krishna, 554 F. Supp. at 1047 (citing American Association for
the Advancement of Science v. Hearst Corp., 498 F. Supp. at 255).
The existence of secondary meaning under Section 43(a) is a factual
determination and, while there is no definitive list of criteria used to
determine secondary meaning, courts do look to "(1) the duration and
continuity of use of the mark, (2) the extent of advertising and
promotion and amount of money spent thereon, (3) figures showing sales of
plaintiff's products or number of people who have viewed it, and (4)
identification of plaintiff's and defendant's respective markets."
American Association for the Advancement of Science v. Hearst Corp., 498
F. Supp. at 257. See also Russian Academy of Sciences, et al. v. American
Geophysical Union, No. 98-2165, 1998 U.S. Dist. LEXIS 20598, at *12
(D.D.C. Dec. 16, 1998). The relevant inquiry is not whether the general
public associates a name with a product or a source, but rather whether
the "relevant buyer class" does. American Association for the Advancement
of Science v. Hearst Corp., 498 F. Supp. at 256. In this action, the
question is whether persons in the Washington, D.C. metropolitan area who
are interested in the PRD and its political activities associate the name
and insignia of the PRD with plaintiffs' group.
The Court concludes that plaintiffs have demonstrated that such an
association exists between the name and insignia of the PRD and PRD-DC
and that PRD-DC and its various corporate names thus have acquired
secondary meaning. Plaintiffs have shown that since its inception in 1982
its large membership and like-interested individuals have looked to
plaintiffs to represent them in matters related to the PRD, including in
an official capacity in the PRD political conventions in the Dominican
Republic. See supra at 4-5. The formal authorization of PRD-DC as a
seccional underscores this connection because individuals interested in
activities related to the PRD likely are aware of the existence of the
"seccional" system and look to official seccionals to provide a local
link to the PRD. In addition, defendants' use of the name and insignia of
the PRD in the same geographic area or "market" in connection with
activities similar to those of PRD-DC, such as fundraisers for the PRD
and events involving PRD officials, further evidences the secondary
meaning and the goodwill attached to these marks. See Russian Academy of
Sciences, et al. v. American Geophysical Union, 1998 U.S. Dist. LEXIS
20598, at *13 (mimicking of plaintiff's journal title in defendant's
marketing materials indicates secondary meaning in relevant target
c. Likelihood of Confusion
The third prong of the Sears, Roebuck test asks "whether the relevant
purchasing public is likely to be confused by the use of the defendants'
mark." Malarkey-Taylor Associates, Inc. v. Cellular Telecommunications
Industry Association, 929 F. Supp. at 476. "The crucial focus of the
inquiry is the effect of the defendant's mark on prospective purchasers.
If the [mark] is likely to have the effect of confusing purchasers into
believing that the [the defendant's mark]
is somehow associated with [plaintiff's mark . . .] or if it would tend
to cause purchasers to mistake the [defendant's mark] for [the plaintiffs
mark] itself . . . the requirements for finding this element of
infringement are satisfied." American Association for the Advancement of
Science v. Hearst Corp., 498 F. Supp. at 257. See also The Appleseed
Foundation, Inc. v. Appleseed Institute, Inc., 981 F. Supp. at 675
("[T]he Court looks at the effect that defendant's use of the mark has or
would have on prospective consumers within the relevant product
market."); Malarkey-Taylor Associates, Inc. v. Cellular
Telecommunications Industry Association, 929 F. Supp. at 477 ("[T]he
focus is on whether a similarity exists that is likely to cause
Here, plaintiffs have demonstrated that actual confusion occurred as a
result of PRD-MD/VA using the PRD name and insignia. See supra at 9-10.
And while a party need not demonstrate actual confusion in order to
satisfy the third prong of the Sears, Roebuck test, `"there can be no
more positive or substantial proof of the likelihood of confusion than
proof of actual confusion.'" Russian Academy of Sciences, et al. v.
American Geophysical Union, 1998 U.S. Dist. LEXIS 20598, at *22 (quoting
American Association for the Advancement of Science v. Hearst Corp., 498
F. Supp. at 258). See also The Appleseed Foundation, Inc. v. Appleseed
Institute, Inc., 981 F. Supp. at 675 ("[E]vidence of actual confusion is
substantial proof of this element."); Malarkey-Taylor Associates, Inc.
v. Cellular Telecommunications Industry Association, 929 F. Supp. at 477
("[A]ctual confusion is substantial proof of the existence of the
likelihood of confusion."). Even if the evidence of actual confusion is
not overwhelming, however, "the instances documented [by plaintiffs]
demonstrate that confusion is likely."
National Rural Electric Cooperative Association v. National Agricultural
Chemical Association, 26 U.S.P.Q 2d 1294, 1296 (D.D.C. 1992).
In assessing the likelihood of confusion, the Court may consider a
number of factors. While not all of these factors need be present in
every case, the factors include: (1) the strength of the plaintiff's
mark; (2) the degree of similarity between the two marks; (3) the
proximity of the products; (4) evidence of actual confusion; (5) the
defendants' purpose or reciprocal of good faith in adopting its own
mark;*fn8 (6) the quality of defendants' product; and (7) the
sophistication of the buyers. See Malarkey-Taylor Associates, Inc. v.
Cellular Telecommunications Industry Association, 929 F. Supp. at 477
(citing Polaroid Corp. v. Polorad Elec. Corp., 287 F.2d 492, 495 (2d
In this case, plaintiffs' use of the name and insignia of the PRD is
long-standing and strong. As the only official seccional of the PRD in
the Washington, D.C. area for over 22 years, thirteen of which were prior
to the creation of PRD-MD/VA, it is likely that the relevant population
presumed that PRD-DC was the entity sponsoring events in this area that
were advertised with the name and insignia of the PRD.*fn9 The two
groups' names are strikingly similar; they differ only in the inclusion
of Washington, D.C. in PRD-DC's name. PRD-MD/VA uses the name and the
insignia of the PRD in the same manner as PRD-DC does, as part of its
official name and in printed materials relating to the group. The target
populations reside in the same metropolitan area and overlap almost
completely. PRD-DC has members from Washington, D.C., Maryland and
Virginia; while PRD-MD/VA targets members only in Maryland and Virginia,
it does not officially exclude Washington, D.C. residents. See supra at
5. In addition, the purpose of PRD-MD/VA is similar to that of PRD-DC in
providing an official link between the residents of the Washington, D.C.
metropolitan area in Maryland and Virginia to the PRD. See supra at 5.
Finally, plaintiffs have demonstrated through testimony presented at
trial that there is actual confusion between the two groups in the minds
of the relevant population. See supra at 9-10.
In addition to all of these factors, there is some evidence of intent
to infringe or bad faith on the part of PRD-MD/VA in its
continued use of the PRD name and insignia even after Mr. Rivera's
receipt of plaintiffs' cease and desist letter of November 21, 2000. See
supra at 10. See also Malarkey-Taylor Associates, Inc. v. Cellular
Telecommunications Industry Association, 929 F. Supp. at 478 (bad faith
evidenced in refusal to cease and desist use of mark after notification
of infringement); National Rural Electric Cooperative Association v.
National Agricultural Chemical Association, 26 U.S.P.Q 2d at 1297
Based upon its analysis of the foregoing factors, the Court concludes
that plaintiffs have met the third prong of the Sears, Roebuck standard.
The plaintiffs therefore have demonstrated that defendants are in
violation of Section 43(a) of the Lanham Act.
2. Common Law Trademark Infringement
The analysis with respect to the parties' common law trademark
infringement claims mirrors the analysis conducted for federal statutory
trademark/unfair competition claims. See Russian Academy of Sciences, et
al. v. American Geophysical Union, 1998 U.S. Dist. LEXIS 20598, at *10;
see generally American Association for the Advancement of Science v.
Hearst Corp., 498 F. Supp. at 262. The resolution of the common law claim
in plaintiffs' favor and to defendants' detriment therefore flows
directly from the Court's resolution of the Lanham Act claim.
C. Irreparable Harm
Trademark infringement "by its very nature causes irreparable injury."
The Appleseed Foundation, Inc. v. Appleseed Institute, Inc., 981 F.
Supp. at 677. See also Malarkey-Taylor Associates, Inc. v. Cellular
Telecommunications Industry Association, 929 F. Supp. at 478 (citing
Crime Control, Inc. v. Crime Control, Inc., 624 F. Supp. 579, 581
(D.D.C. 1984)) (trademark infringement raises a presumption of
irreparable harm). In this instance, PRD-DC is claiming that the
infringement has resulted in its loss of control over its reputation and
in injury to its goodwill, which, they argue, are harms that are not
compensable in money damages and therefore justify injunctive relief.
See Russian Academy of Sciences, et al. v. American Geophysical Union,
1998 U.S. Dist. LEXIS 20598, at *30 (citing Malarkey-Taylor Associates,
Inc. v. Cellular Telecommunications Industry Association, 929 F. Supp. at
478); American Association for the Advancement of Science v. Hearst
Corp., 498 F. Supp. at 262. As the court of appeals has noted,
"[s]ource, reputation and good will are as important to
eleemosynary institutions as they are to business organizations. . . .
[An organization's] financial credibility to raise funds, its general
reputation, the reputation of those managing and supporting it, are all
at stake if its name is used by some other organization and the two
become confused in the minds of the public." American Gold Star Mothers,
Inc. v. National Gold Star Mothers, Inc., 191 F.2d 488, 489 (D.C. Cir.
The fact that PRD-MD/VA holds itself out as an official seccional has
caused confusion among those individuals who seek to be involved in an
authorized seccional in the Washington, D.C. metropolitan area. It also
has resulted in the donation of funds for PRD-related activities to an
unauthorized group. See supra at 8-9. In addition, to the extent that
PRD-MD/VA is attempting to broaden its scope of activities beyond that of
PRD-DC, see supra at 8-9, such an effort may be construed by members of
the relevant population as a shift of PRD-DC's mission to PRD-DC's
Confusion among political organizations risks an additional, unique
harm. As the Second Circuit concluded:
a political organization that adopts a platform and
endorses a candidate under a trade name performs the
valuable service of communicating to voters that it
has determined that the election of those candidates
would be beneficial to the objectives of the
organization. . . . If different organizations were
permitted to employ the same trade name in endorsing
candidates, voters would be unable to derive any
significance from an endorsement, as they would not
know whether the endorsement came from the
organization whose objectives they shared or from
another organization using the same name. . . . The
resulting confusion would be catastrophic; voters
would have no way of understanding the significance of
an endorsement or position taken by parties of
recognized major names.
United We Stand America, Inc. v. United We Stand, America New York,
Inc., 128 F.3d at 90-91.
Because seccionals have a formal role in the nomination of the PRD
presidential candidate, PRD-MD/VA's continued presentation of itself as
an authorized seccional risks not only confusion among the relevant
population as to PRD-DC's positions, but also risks the compromise of the
PRD political process in the Dominican Republic. The Court therefore
concludes that plaintiffs have demonstrated irreparable harm and a threat
of continuing irreparable harm should PRD-MD/VA continue to hold itself
out as an authorized seccional.
D. Balance of Harms and the Public Interest
The Court also concludes that the balance of harms weighs in
plaintiffs' favor. Plaintiffs have functioned under the name and insignia
of the PRD for over twenty years. The designation as an authorized
seccional comes with benefits and responsibilities that have great
significance for its members, including their official representation in
the political process in the Dominican Republic. The undermining of the
group's reputation and goodwill and the impact on its members put the
receipt of those benefits and the fulfillment of those responsibilities
at risk. By contrast, any harm that defendants claim is mitigated by the
fact that it is not authorized to function under the name and insignia of
the PRD in the first place and has been in existence for a much shorter
period of time. "[T]he balance of harms cannot favor a defendant whose
injury results from the knowing infringement on the plaintiff's
trademark." Malarkey-Taylor Associates, Inc. v. Cellular
Telecommunications Industry Association, 929 F. Supp. at 478. See also
Russian Academy of Sciences, et al. v. American Geophysical Union, 1998
U.S. Dist. LEXIS 20598, at *30; The Appleseed Foundation, Inc. v.
Appleseed Institute, Inc., 981 F. Supp. at 675. Finally, because PRD-DC is
the only authorized seccional in the metropolitan area, there
is a public interest in preventing PRD-MD/VA from representing itself as
a competing authorized seccional.
For the foregoing reasons, the Court concludes that plaintiffs have met
their burden of demonstrating their entitlement to a permanent
injunction. It therefore will grant plaintiffs' motion and will deny
defendants' motion. An Order consistent with this Opinion shall issue
this same day.
For the reasons stated in a separate Opinion issued this same day, it
ORDERED that plaintiffs' Motion for a Permanent Injunction [35-1] is
GRANTED; it is
FURTHER ORDERED that Defendants/Counterclaimants' Motion for a
Permanent Injunction [36-1] is DENIED; it is
FURTHER ORDERED that defendants are enjoined from using the name
"Partido Revolucionario Domincano" or any variation thereof (see Opinion
at 5-6 n.3), or the insignia thereof; it is
FURTHER ORDERED that defendants are enjoined from distributing
materials that incorporate in any manner the name "Partido Revolucionario
Domincano" or any variation thereof, or the insignia thereof; it is
FURTHER ORDERED that defendants are enjoined from engaging in
fundraising or any other activities intended to solicit money or
donations from the public while using the name "Partido Revolucionario
Domincano" or any variation thereof, or the insignia thereof; it is
FURTHER ORDERED that defendants are enjoined from attempting to
register members for any organization through the use of the name
"Partido Revolucionario Domincano" or any variation thereof, or the use
of the insignia thereof; it is
FURTHER ORDERED that defendants are enjoined from implying in any
manner whatsoever that "Partido Revolucionario Domincano, Seccional de
Maryland y Virginia" is an authorized seccional of the Partido
Revolucionario Domincano, or that any such organization is affiliated
with plaintiffs' organization or the Partido Revolucionario Domincano; it
FURTHER ORDERED that on or before April 14, 2004, plaintiffs shall file
a memorandum indicating whether final judgment in this matter should be
entered; and if final judgment is not appropriate, delineating what
issues remain for resolution; and it is
FURTHER ORDERED that defendants shall file a response to plaintiffs'
memorandum on or before April 26, 2004. SO ORDERED.