The Heroes Project is a charitable organization helping veterans with mental, physical, and emotional obstacles since 2009. The Heroes Project is suing Operation Hero Project for federal trademark infringement (15 U.S.C. § 1114), federal unfair competition/false designation (15 U.S.C. § 1125(a)), common law trademark infringement, and common law unfair competition. Because charitable organizations are geared to a certain cause, the names or trademarks will sound similar and it is important to distinguish and protect the marks to avoid confusion, especially among donors.
The Heroes Project provides veterans expedition opportunities, community support, and a voice to the world. The Heroes Project does this through cycling events and mountain climbing expeditions to places such as, Mount Kilimanjaro, Mount Elbrus, Mount Aconcagua and more. The Heroes Project’s efforts are featured on many news stations and are also supported by many well-known celebrities and musicians, increasing its popularity. The Heroes Project has used its mark for charitable fundraising since at least May 2010, including through its website, www.heroesproject.org. The Heroes Project filed a federal trademark application in 2013, which registered in 2017.
Defendant Operation Hero Project offers similar charitable activities and fundraisers aimed towards veterans. Operation Hero Project operates a website, operationheroproject.org, as well as a Facebook page under the same trademark. Operation Hero Project’s activities include climbing excursions, bike rides, golf tournaments and other fundraising events. Before the lawsuit, Plaintiff alleges it sent a cease and desist letter to Defendant asserting its trademark rights, but Defendant refused to cease use of their mark in April 2018.
The complaint identifies a previous case in which the U.S. District Court of the Central District of California found that “the THP [The Heroes Project] mark ha[d] acquired distinctiveness through secondary meaning as a result of the widespread acclaim and national media attention that its services have gained. . . . The Heroes Project is a strong mark, particularly in commercial strength, given the publicity it has received from the press and celebrities.” The Heroes Project v. Fitco Cares Found., Case No. 14-cv-02978-DMG-E, ECF No. 29 (C.D. Cal. 2014). Because The Heroes Project’s trademark wasn’t registered during the Fitco suit, the organization had to prove that their mark had acquired secondary meaning. Thus, the court enjoined the defendants from using the Heroes Project mark. One advantage of a trademark registration with the USPTO is it creates the presumption that the mark is inherently distinctive, and The Heroes Project will not have to prove secondary meaning in this case.
The court will examine the likelihood of confusion factors: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). The Heroes Project claims that the defendants have continued to use this mark despite its similar qualities and possible confusion, and uses the mark to “unfairly usurp and capitalize on the value and good will of the HEROES PROJECT Mark.” To protect their brand and charitable services, The Heroes Project requests that the court enjoin Operation Hero Project from further use of the mark. Heroes Project also seeks to enjoin use of the domain name and social media sites and transfer of the same to plaintiff. Lastly, the Heroes Project requests that the court grant actual damages as well as profits gained by the defendant.
Under 15 U.S.C. § 1117 (c)-(d), the court can grant The Heroes Project’s request for monetary damages, transfer of domain names, and transfer of social media.
This case is The Heroes Project v. Operation Hero Project, Case 2:18-cv-05988 (C.D. Cal. 2018).