When trademarks contain geographic locations, does that make their enforcement more difficult? If a bagel shop calls itself “Augusta’s Best Bagels,” how much hold does it have on the name “Augusta” in connection with bagels? If another bagel shop opened up calling itself “Augusta’s Bagels,” would it be a case of trademark infringement? This question is currently playing out between airports in San Francisco and Oakland – neighboring cities in California who both want to use “San Francisco” in their names. 

The city and county of San Francisco filed a lawsuit against the City of Oakland in April of this year when Oakland announced that it would be changing its airport name from “Oakland International Airport” to “San Francisco Bay Oakland International Airport.” Their usage of “San Francisco Bay” refers to the body of water that separates San Francisco and Oakland. The city of San Francisco has pointed out that this butts up against its own airport name, San Francisco International Airport, commonly known as SFO.

Does San Francisco have a case?

San Francisco’s Point

According to San Francisco’s complaint, the lawsuit is a way to bring Oakland’s attention to what the city predicts will be massive consumer confusion if the name change becomes final. The complaint speaks about the “hasty” nature of Oakland’s decision, pointing out that Oakland gave San Francisco’s leaders thirty minutes’ notice before publicly announcing the name change. Additionally, the city has ignored San Francisco’s direct requests to find alternative names. 

The counts of the lawsuit include:

• Federal Trademark infringement
• Federal Unfair Competition/False Designation of Origin 
• Common Law Trademark Infringement 

San Francisco points out that they have used the name San Francisco Airport or San Francisco International Airport for most of their operational history since 1927. And they have owned the registered service mark SAN FRANCISCO INTERNATIONAL AIRPORT in class 39 (airport services) since 2011. They also note that SFO has received awards that designate it as a leader in its industry – and is notably recognized by passengers.

San Francisco cites several predictions of how the similar airport names will cause problems:

• Azores Airlines is the first airline to adopt Oakland’s new airport name, and San Francisco includes a screenshot of the dropdown menu in their complaint, showing how “San Francisco International Airport” and “San Francisco Bay Oakland International Airport” in proximity could easily cause passengers to book airline tickets for one when they meant the other.
• Passengers could book an airline ticket at one airport and mistakenly book a rental car at another airport, causing delays, frustration, and possible financial loss for the cities and their vendors.
• Passengers might assume that Oakland’s airport and San Francisco’s airport are officially commercially connected when they are not.

They ended their complaint by asking for injunctive relief to prevent Oakland from beginning to use “San Francisco,” as well as an order for any airlines to stop using the mark, plus compensatory damages and attorney’s fees.

At first glance, those would seem to be some fairly strong arguments. How has Oakland responded to this? 

Oakland’s Counterpoint

Oakland’s answer to San Francisco’s complaint reads much like a younger sibling who has always lived in the shadow of their elder. They point out that Oakland International Airport has also been operating as an airline port of entry on San Francisco Bay since 1927 – but many people are unaware of exactly where Oakland is located, so they do not consider it as an option when flying into the Bay Area.

Oakland lobs a few other defenses at the complaint:

• Oakland will retain its current visual branding and its airport code of OAK, keeping it notably distinct from SFO.
• Other cities with multiple airports are able to share geographic names – for example, Chicago Midway and Chicago O’Hare. Why not SFO and OAK?
• SFO is not actually located in the city of its namesake but rather San Mateo county.

Ultimately, Oakland labels San Francisco’s lawsuit an anticompetition effort wasting taxpayer’s resources masquerading as a declaration of anti-confusion. And the “younger sibling” city has called for a declaratory judgment that they are not infringing on San Francisco’s airport trademark.

Conflict Across the Bay Shows No Signs of Going Away

San Francisco avows to be taking a benevolent stance, expressing that they would rather find an alternative to litigation for the sake of both cities. However, thus far, they are not backing down on their claim – and neither is Oakland. Keep your eyes on San Francisco Bay to see how this trademark conflict plays out.