NAACP v. NAACP Legal Defense Fund Petition for a Writ of Certiorari to the US Court of Appeals for the District of Columbia Circuit

    *

N o .--------

■

i

IN  THE

(Hanrt nf %  &tatea
O c t o b e r  T e r m , 1984

N a t io n a l  A s s o c ia t io n  f o r  t h e  A d v a n c e m e n t  
o f  C o lo r ed  P e o p l e ,

Petitioner,
v.

N.A.A.C.P. L e g a l  D e f e n s e  & E d u c a t io n a l  F u n d , I n c .,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE 
UNITED STATES COURT OF APPEALS FOR THE 

DISTRICT OF COLUMBIA CIRCUIT

E d w a r d  W .  B r o o k e  
Counsel of Record 

B a r r y  J. C u t l e r

O ’ C o n n o r  & H a n n a n  
1919 Pennsylvania Ave., N. W.
Suite 800
Washington, D.C. 20006 
(202) 887-1400
Counsel for Petitioner

PRESS OF BYRO N  S. ADAMS, WASHINGTON, D.C. (202) 347-8203



1

QUESTIONS PRESENTED

1. Whether the decision of this Court in French 
Republic v. Saratoga Vichy Spring Co., 191 U.S. 427 
(1903), denying injunctive relief in a trademark in­
fringement case between unrelated parties, applies to 
a trademark owner who seeks injunctive relief after 
revoking the permission it previously gave to an affili­
ated organization to use its service mark.

2. Whether the rule established by this Court in 
Menendez v. Holt, 128 U.S. 514 (1888), and McLean 
v. Fleming, 96 U.S. 245 (1878), that a laches defense 
in a trademark infringement suit does not bar prospec­
tive injunctive relief, is applicable to the case of a 
national organization that withdraws the permission 
it had given to an affiliated organization to use its 
nationally-recognized service mark.

PARTIES TO THE PROCEEDING

The Petitioner in this action is the National Asso­
ciation for the Advancement of Colored People. Peti­
tioner requests a writ of certiorari to the United States 
Court of Appeals for the District of Columbia Circuit 
to review the judgment entered in favor o f the Re­
spondent, N.A.A.C.P. Legal Defense and Educational 
Fund. Inc.



TABLE OF COINTENTS

Page
Questions Presented .............................................................. i

Parties to the Proceeding..................................................  i

T able of A uthorities.............................................................. iii

Opinions Below ......................................................................... 2

Jurisdiction.................................................................................  2

Statutory Provision Involved ............................................  2

Statement of the Ca s e .........................................................  3

Reasons for Granting the W r i t ................................. 9
I. By Finding That The NAACP Had Not Granted A 

Revocable License When It Gave Permission To 
The LDF To Use Its Mark, The Court Below Con­
tradicted Established Law And Created Great Un­
certainty About The Trademark Rights Of Related 
Parties .....................................................................  9

II. In Upholding A Defense Of Laches To Bar Pro­
spective Injunctive Relief, The Court Below Mis­
applied Decisions Of This Court That Govern The 
Trademark Rights Of The NAACP And The LDF. 12

Conclusion .................................................................................... 17

A ppendix

A. Court of Appeals Opinion, January 25, 1985 ----  la
B. District Court Decision and Order, March 28,

1983 ......................................................................  23a
C. District Court Order, June 6, 1983 ...................... 39a
D. District Court Judgment, June 6, 1983 ............... 40a
E. Court of Appeals Judgment, January 25, 1985 .. 42a
F. Relevant Statutory Provisions...........................  44a

ii 1U

TABLE OF AUTHORITIES

Cases: Page
Ancient Egyptian Arabic Order of Nobles of the Mystic 

Shrine v. Michaux, 279 U.S. 737 (1929).................  13
Anheuser-Busch v. DuBois Brewing Company, 175 F.2d 

370 (3d Cir. 1949), cert, denied, 339 U.S. 934 (1950) 14
Brown v. Bd. of Education, 347 U.S. 483 (1954)........ 5
Coca-Cola Bottling Co. v. Coca-Cola Co., 269 F. 796 

(D. Del. 1920) ....................................................... 10,12
Council of Better Business Bureaus, Inc. v. Better Busi­

ness Bureau of South Florida, 200 U.S.P.Q. 282 
(S.D. Fla. 1978) .......................................................  U

Creswill v. Grand Lodge Knights of Pythias of Georgia,
225 U.S. 246 (1912) .................................................  13

Dwinell-Wright Co. v. White House Milk Co., 132 F.2d 
822 (2d Cir. 1943) ...................................................  14

Edwin K. Williams & Co., Inc. v. Edwin K. Williams <& 
Co.—East, 542 F.2d 1053 (9th Cir. 1976), cert, 
denied, 433 U.S. 908 (1977) .....................................  12

French Republic v. Saratoga Vichy Spring Co., 191 
U.S. 427 (1903) ......................................................... 13

Grand Lodge Improved, Benevolent, Protective Order 
of Elks of the World v. Eureka Lodge No. 5, Indep. 
Elks, 114 F.2d 46 (4th Cir.), cert, denied, 311 U.S.
709 (1940) ................................................................. 11

Grotrian, Helffericli, Schulz, Th. Steinweg Nachf. v.
Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975) .. 14

Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 
(1916) ........................................................................ I4

Indep. Nail <& Packing Co., Inc. v. Stronghold Screw 
Products, Inc., 205 F.2d 921 (7th Cir.), cert, de­
nied, 346 U.S. 886 (1953) ........................................ 14



IV

T able of A uthorities continued
Page

Int’l Union, U.M.W. v. District 50, U.M.W., 298 F. 
Supp. 1262 (D.D.C. 1969), vacated in part as moot,
435 F.2d 421 (D.C. Cir. 1970), cert, denied, 402 
U.S. 906 (1971) ..................................................  10,15

McLean v. Fleming, 96 U.S. 245 (1878) .................... 13
Menendez v. Holt, 128 U.S. 514 (1888) ...................passim
Nat’l Bd. of YWCA v. YWCA of Charleston, 335 F. 

Supp. 615 (D.S.C. 1971) ...................................... 11
Nat’l Circle, Daughters of Isabella v. Nat’l Order of 

Daughters of Isabella, 270 F. 723 (2d Cir.), cert, 
denied, 255 U.S. 571 (1920) ..................................  14

Professional Golfers Ass’n v. Bankers Life <& Casualty 
Co., 514 F.2d 665 (5th Cir. 1975) .........................  10

Purcell v. Summers, 145 F.2d 979 (4th Cir. 1944) . . .  11,16.
Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 

1037 (2d Cir. 1980) .........................................  14,15,16
Talbot v. Indep. Order of Owls, 220 F. 660 (8th Cir. 

1915) ................................................................... 11,16
Tisch Hotels, Inc. v. Americana Inc., 350 F.2d 609 (7th 

Cir. 1965) .......................    14
Tisch Hotels, Inc. v. Atlanta Americana Motor Hotel 

Corp., 254 F. Supp. 743 (N.D. Ga. 1966)........... 10,15
United States Jaycees v. Philadelphia Jaycees, 639 

F.2d 134 (3d Cir. 1981)........................................passim
United States Jaycees v. San Francisco Jr. Chamber 

of Commerce, 354 F. Supp. 61 (N.D. Cal. 1972), 
aff’d, 513 F.2d 1226 (9th Cir. 1975) ............. 11,15,16

Statutes:
15 U.S.C. § 1114 .. 
15 U.S.C. § 1121 .. 
28 U.S.C. § 1254(1) 
28 U.S.C. § 1338 ..

2
8
2
8

IN THE

( t o r t  o f  tlj? lUntteJi S t a t e s
O c to ber  T e r m , 1 9 8 4

No. --------

N a t io n a l  A s s o c ia t io n  fo r  t h e  A d v a n c e m e n t  
o f  C olored  P e o p l e ,

Petitioner,
v.

N.A.A.C.P. L e g a l  D e f e n s e  & E d u c a t io n a l  F u n d , I n c .,
Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE 
UNITED STATES COURT OF APPEALS FOR THE 

DISTRICT OF COLUMBIA CIRCUIT

Petitioner National Association for the Advance­
ment of Colored People respectfully prays that a writ 
of certiorari be issued to review the judgment of the 
United States Court of Appeals for the District of 
Columbia Circuit entered in favor of the Respondent, 
N.A.A.C.P. Legal Defense and Educational Fund, 
Inc., on January 25, 1985.



2

OPINIONS BELOW

The January 25, 1985 Opinion of United States 
Court of Appeals for the District of Columbia Circuit 
(the “ court below” ) is reported at 753 F.2d 131 (D.C. 
Cir. 1985) and is reproduced in the Appendix hereto, 
la. The March 28, 1983 Decision and Order of the 
United States District Court for the District of Co­
lumbia (the “ district court” ), granting Petitioner’s 
motion for summary judgment, is reported at 559 F. 
Supp. 1337 (D.D.C. 1983) and is reproduced in the 
Appendix hereto, 23a. The unreported June 6, 1983 
Order of the district court, denying Respondent’s mo­
tion for reconsideration, is reproduced in the Appen­
dix hereto, 39a. The unreported June 6, 1983 Judg­
ment of the district court, which included the terms 
of a permanent injunction, is reproduced in the Ap­
pendix hereto, 40a.

JURISDICTION

The judgment of the court below was entered on 
January 25, 1985. Appendix, 42a. This petition for 
writ of certiorari was filed April 25, 1985. The juris­
diction of this Court is invoked under 28 U.S.C. 
§ 1254(1).

STATUTORY PROVISION INVOLVED

The substantive provision on which Petitioner’s 
claim is based is the Lanliam Trademark Act, 15 
U.S.C. § 1114, and is reproduced in the Appendix 
hereto, 44a. Because this case involves application of 
the common law defense of laches to a trademark 
claim, neither the decision below nor this petition 
raise questions of construing that provision of the 
Lanham Trademark Act.

3

STATEMENT OF THE CASE

This case involves the respective rights of two in­
dependent, but formerly affiliated, civil rights organi­
zations to the mark “ NAACP,”  which both groups 
have used over the years to identify themselves. The 
decision of the court below, which overturned a broad 
permanent injunction that the district court entered 
to protect the public from confusion that it found 
likely to continue, conflicts with traditional trademark 
rules, places a cloud over the right of trademark 
owners to permit the use of their marks by others, 
and results in the type of public confusion that the 
trademark laws were designed to avoid. The decision 
below appears to be the first and only case to conclude 
that the permission requested of and given by a 
trademark owner to an affiliate to use its established 
service mark does not create a revocable license, and 
to hold that a laches defense precludes the trademark 
owner from withdrawing the permission after the 
owner’s relationship with the affiliate changes.1

The National Association for the Advancement of 
Colored People ( “ N AACP”  or the “ Association” ) 
was founded as a membership organization in 1909. 
According to its certificate of incorporation, its pur­
poses were:

to promote equality of rights and eradicate caste 
or race prejudice among the citizens of the United 
States; to advance the interests of colored citi-

1 There is no dispute that the Association was the first person or 
organization to use the “ N A A C P ”  letters as a mark and that the 
Association has used the initials continuously from at least 1910 to 
the present. The mark is registered in the name of the Association 
in the U.S. Patent and Trademark office.



4

zens; to secure for them impartial suffrage; and 
to increase their opportunities for securing justice 
in the courts, education for their children, employ­
ment according to their ability, and complete 
equality before the law.

During the N A A C P’s first 25 years, the Association 
sought to achieve these goals through educational 
work, legislative advocacy, and, to a lesser degree, 
litigation. During the 1930s, as the NAACP increas­
ingly used litigation as a means of effecting change, 
the NAACP was hindered in its fundraising efforts, 
largely because the Bureau of Internal Revenue (now 
the IR S ) had ruled that the contributions so badly 
needed for the N AACP’s litigation efforts were not 
deductible for federal income tax purposes because 
of the Association’s lobbying activities. At the Bu­
reau’s suggestion, the NAACP took steps to form a 
new affiliate, technically separate from its lobbying 
effort, that could accept tax deductible contributions 
and handle the Association’s litigation caseload.

For three years, the directors and staff of the 
NAACP planned for the formation of its affiliate, to 
be known as the “ N.A.A.C.P. Legal Defense and Edu­
cational Fund, Inc.”  (the “ L D F ” ). To satisfy a New 
York State prerequisite for incorporating the new 
entity, the NAACP Board of Directors (the “ Board” ) 
on October 9, 1939 passed the following resolution 
to indicate that the use o f the N A A C P’s mark by the 
LDF was authorized:

W h e r e a s , [the proposed directors of the LDF] 
have requested permission of the [N AACP] to use 
the initials, “ N.A.A.C.P.” , in an application for 
a Certificate of Incorporation of the “ N.A.A.C.P.

5

Legal Defense and Educational Fund, Inc.” ; 
therefore

B e  I t  R e so l ved , That the Board of Directors 
of the National Association for the Advancement 
of Colored People grant permission for the use of 
the initials, “ N.A.A.C.P.”  by the “ NAACP Legal 
Defense and Educational Fund, Inc.” , and au­
thorize the President and Secretary to execute 
whatever papers might be necessary to carry out 
this resolution, (emphasis supplied).2

The incorporation process was completed during 1940, 
and for many years thereafter, the LDF was held out 
as and, in fact, functioned as, an integral part of the 
Association, with common directors, officers, staff, and 
headquarters. Contributions were allocated either to 
the Association or to the LDF depending upon the 
use to be made of them, and contributors were notified 
accordingly.

After the landmark decision of this Court in Brown 
v. Board of Education, 347 U.S. 483 (1954), the 
NAACP faced intense political pressure from certain 
state officials, and was warned that the IRS might 
try once again to limit the N AACP’s litigation efforts 
by withdrawing the L D F ’s tax-exempt status. In 1957, 
the NAACP and the LDF rejected the IR S ’ demand 
that the LDF stop using the N AACP’s initials in its 
name. However, the two groups did agree to eliminate 
overlapping membership on their respective boards of

2 There were no discussions or documentation about the intended 
scope of the “ permission”  requested and granted in the resolution. 
Both the court below and the district court inferred the meaning 
and legal effect of the term “ permission”  (although quite differ­
ently) from the undisputed facts surrounding the formation of 
the LDP.



6

directors, allowing a director to serve on only one of 
the two boards, but not both. Even following that 
organizational change, the LDF continued to function 
as the Association’s legal department.

After 1957, the NAACP and the LDF experienced 
some tension and disagreement about policy issues, 
and other matters such as the allocation o f contribu­
tions. Starting in 1961, the two organizations estab­
lished liaison committees for the purpose of maintain­
ing a continuing dialogue and negotiating differences. 
The respective liaison committees presented a joint- 
memorandum of understanding and cooperation to the 
two boards.

After new disagreements arose, the NAACP Board 
in July 1965 resolved to meet with the LDF once 
again, this time to discuss whether the LDF would 
either merge  ̂with the NAACP or reincorporate under 
a new name.3 After some preliminary communications, 
liaison committees met again, at least through 1966, 
to discuss relations between the groups, including use 
of the initials. Again, however, they reached no final 
accord on the question.

3 At its July 1965 meeting, the NAACP Board passed a resolu­
tion that included language that the NAACP should go to court 
to enforce its rights, if necessary. The Board voted to "strike that 
portion of the resolution at its next meeting because key memhers 
felt that it was “ impolitic”  to have such language on record, even 
in the Board’s internal minutes. Contrary to the opinion of the 
court below, which purported to rely on some unspecified part of 
the L D P ’s oral argument rather than upon any evidence in the 
record, Appendix 9a, the NAACP did not threaten the LDP  
with any lawsuit in 1965, or at any other time prior to 1979. In 
dealing with the unpermitted use of its initials by an unrelated 
party, the NAACP acted swiftly to obtain injunctive relief. 
Appendix, 29a n. 1.

7

In the following years, the NAACP and the LDF 
continued to maintain close cooperation and contact 
on a broad variety of matters, including the L D F ’s 
handling of litigation for the hfAACP. However, 
there is no evidence that the groups specifically dis­
cussed the initials again until 1978. The district court 
found both that the LDF never agreed to change its 
name and that the NAACP never said or did any­
thing to mislead the LDF about the N AACP’s un­
willingness to let the matter of the initials remain 
unresolved forever. Appendix, 34a.

In December 1978, the NAACP wrote to the LDF 
to express concern about growing public confusion 
over the L D F ’s use of the initials and to renew dis­
cussions regarding the L D F ’s either reuniting with 
the NAACP or changing its name. Although the LDF 
immediately responded with a willingness to meet 
(without indicating in any way that the LDF re­
garded the question to have been settled at any prior 
time), liaison committees of the two organizations 
were unable to resolve their differing positions 
through early 1979. At the N AACP’s annual conven­
tion in June 1979, the NAACP Board of Directors 
voted to rescind the 1939 resolution that had granted 
permission to the LDF to use the initials and so in­
formed the LDF. That was the first and only time 
that the NAACP revoked the permission it had given 
to the LDF in 1939.

Representatives of both organizations continued to 
discuss the initials until early 1982. When no com­
promise appeared likely, however, the NAACP reluct­
antly initiated this action on May 25, 1982. The 
N AACP’s complaint alleged trademark infringement



8

and unfair competition under the Lanham Trademark 
Act, with jurisdiction arising under 28 U.S.C. § 1338 
and 15 U.S.C. § 1121. The complaint sought only 
permanent injunctive relief; it contained no request 
for money damages.

Shortly after the LDF filed its answer, the LDF 
moved for summary judgment on the ground that the 
requested injunctive relief was barred by a cluster 
of equitable defenses, including laches. The NAACP 
opposed the L D F ’s motion and filed its own motion 
for summary judgment. After reviewing exhaustive 
documentary evidence and hearing oral argument on 
the cross-motions, the district court, on March 28, 
1983, held that (1) there was no dispute as to the 
material facts; (2) by its 1939 resolution, the NAACP 
had intended to give the LDF only a revocable license, 
rather than an irrevocable assignment; (3) the equi­
table defenses of laches and acquiescence did not bar 
the N AACP’s request for prospective injunctive re­
lief ; (4) the NAACP had established a likelihood 
that past confusion would continue in the future; and 
(5) a balancing of the equities clearly favored the 
NAACP. Accordingly, the district court granted the 
N A A C P’s motion for summary judgment and denied 
the L D F ’s motion for summary judgment.

On .Tune 6, 1983, the district court denied the L D F ’s 
motion for reconsideration and issued an injunction 
barring the LDF from using the “ N AACP”  mark in 
its name or promotional literature. However, the 
Judgment granted the LDF a two-year transition 
period during which it could adopt and publicize a 
new name and logo. Appendix, 39a-41a.

9

On January 25, 1985, the court below reversed the 
judgment of the district court and remanded with 
directions that the suit be dismissed. Appendix, la. 
Contrary to the district court’s findings, the court 
below concluded that the N AACP’s original grant of 
permission to the LDF in 1939 did not constitute a 
revocable license. The court below reasoned that the 
NAACP had not used the term “ revocable license”  
and had not received any consideration for a license. 
Appendix, 21a. The court below also held that the 
N AACP’s 1979 resolution revoking the permission 
of the LDF to use the “ N AACP”  mark could not be 
enforced because the NAACP was guilty of laches for 
failing to assert its exclusive right to the initials be­
tween 1966 and 1978. Appendix, 16a-19a. This petition 
timely followed.

REASONS FOR GRANTING THE WRIT

I. By Finding That The NAACP Had Not Granted A Revoc­
able License When It Gave Permission To The LDF To 
Use Its Mark, The Court Below Contradicted Established 
Law And Created Great Uncertainty About The Trademark 
Rights Of Related Parties

Until this case, virtually every court decision that 
weighed the trademark rights of related organizations 
had characterized the grant of permission by a trade­
mark owner to use its mark as a license. The decision 
of the court below is erroneous and needs to be cor­
rected to avoid serious uncertainty in the important 
area of trademark licensing.

Many licenses, of course, are spelled out in formal 
agreements. But even when no written instrument



10

states the rights of the parties or specifically defines 
the terms of the permission granted, courts imply 
“ some type o f license”  from the relationship itself. 
United States Jaycees v. Philadelphia Jaycees, 639 
F.2d 134, 139-140 n. 7 (3d Cir. 1981) ; In t’l Union, 
U.M.W. v. District 50, U.M.W., 298 F. Supp. 1262 
(D.D.C. 1969), vacated in part as moot, 435 F.2d 421 
(D.C. Cir. 1970), cert, denied, 402 U.S. 906 (1971).

The decisions are not limited to charitable or non­
profit organizations. In a commercial setting, as well, 
a revocable license routinely is inferred from a course 
of dealing, even if the parties did not use the term 
“ license”  in their writings. See Professional Golfers 
Ass’n v. Bankers Life & Casualty Co., 514 F.2d 665, 
669 (5th Cir. 1975); Tisch Hotels, Inc. v. Atlanta 
Americana Motor Hotel Corp., 254 F. Supp. 743, 750 
(N.D. Ga. 1966).

The policy underlying these decisions is to preserve 
the important right of a trademark owner to be able 
to give permission to use its mark without surrender­
ing the right to reclaim exclusive control over its 
mark at a later date. A trademark owner is free to 
negotiate an irrevocable assignment, see Coca-Cola 
Bottling Co. v. Coca-Cola Co., 269 F. 796 (D. Del. 
1920), but until this case, courts have not inferred 
an irrevocable grant of authority except where there 
is clear evidence of the owner’s intent to make an 
assignment.

Concomitantly, a party that uses a valuable mark 
with the owner’s permission cannot later claim to have 
established secondary meaning or other rights in the

11

mark during the period of the permission.4 It would 
“ destroy the entire concept of a license”  if the licensee 
could claim that goodwill or other benefits gained 
through permitted use somehow bars the trademark 
owner’s later termination of the license or revocation 
of the permission. Philadelphia Jaycees, 639 F.2d at 
142-43.

On undisputed facts, the district court looked at the 
circumstances of the relationship between the NAACP 
and the LDF circa 1939, the language used by the 
parties, and the purpose of the NAACP in granting 
the permission and held that the 1939 resolution was 
intended to be a revocable license to use the initials; 
not an irrevocable assignment of them. Appendix, 
32a-34a. By contrast, the court below ignored the dis­
trict court’s findings and the unbroken line o f cases 
that have found implied licenses. Based in large part 
upon the failure of the NAACP to make a contract 
explicitly indicating revocability, the court below 
found that even the 1939 license conveyed a permanent 
right to the LDF. Appendix, 21a.5

* See Philadelphia Jaycees, 639 F.2d 134; United States Jaycees 
v. San Francisco Jr. Chamber of Commerce, 513 F.2d 1226 (9th 
Cir. 1975); Purcell v. Summers, 145 F.2d 979 (4th Cir. 1944); 
Grand Lodge Improved, Benevolent and Protective Order of Elks 
of the World v. Eureka Lodge No. 5, Indep. Elks, 114 F.2d 46 
(4th Cir.), cert, denied, 311 U.S. 709 (1940); Talbot v. Indep. 
Order of Owls, 220 F. 660 (8th Cir. 1915) ; Council of Better 
Business Bureaus, Inc. v. Better Business Bureau of So. Florida, 
200 U.S.P.Q. 282 (S.D. Fla. 1978) ; Nat’l Bd. of Y W C A  v. Y W C A  
of Charleston, 335 F. Supp. 615 (D.S.C. 1971).

5 If the court below was correct in its characterization of the 
permission originally granted in 1939, the doctrine of laches would 
not come into play in this case, because the irrevocable assignment

[footnote continues on next page]



12

The decision of the court below is in conflict with 
virtually every reported decision about the nature of 
the right of an entity that uses a trademark with the 
owner’s permission. The decision creates great uncer­
tainty regarding the ability of a trademark owner to 
permit use of, and still maintain exclusive control of, 
his mark. As Petitioner now shows, the decision raises 
serious questions about the applicability of the com­
mon law defense of laches in cases between related 
parties. Because of those results, it is important that 
this Court review and reverse the decision of the court 
below.

II. In Upholding A Defense Of Laches To Bar Prospective 
Injunctive Relief, The Court Below Misapplied Decisions 
Of This Court That Govern The Trademark Rights Of The 
NAACP And The LDF

For almost a century, the lower federal courts have 
followed two decisions of this Court that have estab­
lished the general rule that a laches defense to a trade­
mark infringement claim will not bar prospective 
injunctive relief, even if  it will bar a claim for money 
damages. Menendez v. Holt, 128 U.S. 514 (1888);

would have precluded the N A A C P ’s moving to reclaim exclusive 
right in the mark at any time after 1939, whether there was a 
delay or not. See Coca-Cola Bottling Co., 269 F. 796. Moreover, 
there would have been no reason for the NAACP to participate in 
the 1957 decision regarding the IRS, or to appoint at least three 
committees to negotiate with the LDF between 1961 and 1979. 
Courts regard such continuing negotiations as strong evidence of 
a license rather than ari assignment. See Edwin K. Williams & 
Co., Inc. v. Edwin K. Williams & Co.— East, 542 F.2d 1053, 1059 
(9th Cir. 1976), cert, denied, 433 U.S. 908 (1977).

13

McLean v. Fleming, 96 U.S. 245 (1878). As this Court 
held in Menendez:

Where consent by the owner to the use of his 
trademark by another is to be inferred from his 
knowledge and silence merely, “ it lasts no longer 
than the silence from which it springs; it is, in 
reality, no more than a revocable license. ’

Menendez, 128 U.S. at 523-24 (citations omitted).

Particularly where the infringer’s use of the mark 
began with the owner’s consent, Petitioner has found 
no case (other than the decision below) that has denied 
injunctive relief after the permission later was re­
voked. To reach its result, the court below had to 
ignore the entire line of trademark cases between re­
lated parties upon which the district court relied. 
Instead, the court below purported to ground its deci­
sion on rulings of this Court in which the parties had 
no previous association in charitable, civic, or com­
mercial matters. To be sure, this Court has denied 
prospective injunctive relief in trademark disputes 
involving non-profit organizations as well as commer­
cial entities. Ancient Egyptian Arabic Order of Nobles 
of the Mystic Shrine v. Michaux, 279 U.S. 737 (1929); 
Creswill v. Grand Lodge Knights of Pythias of 
Georgia, 225 U.S. 246 (1912); French Republic v. 
Saratoga Vichy Spring Co., 191 U.S. 427 (1903). In 
all three of those cases, however, not only was there 
no prior affiliation or grant of permission between the 
parties, but the facts made clear that (unlike the pend­
ing case) there was no real likelihood of public con­
fusion.9

This Court also grounded the Creswill decision on the fact that
[footnote continues on next page]



14

The Second and Third Circuits occasionally deny 
injunctive relief based upon a laches defense, but only 
where the owner of a mark took some affirmative step 
to abandon the mark or to mislead the defendant about 
its continuing right to use the mark.* 7 See Saratoga 
Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1042 
(2d Cir. 1980); Anheuser-Busch v. DuBois Brewing 
Co., 175 F.2d 370, 374 (3d Cir. 1949), cert, denied, 
339 U.S. 934 (1950); Dwinell-Wright Co. v. White 
House Milk Co., 132 F.2d 822, 825 (2d Cir. 1943). 
However, in the absence o f misleading affirmative con­
duct, even those two Circuits follow the general rule 
of Menendez and grant prospective injunctive relief. 
E.g., Philadelphia Jaycees, 639 F.2d 134; Grotrian, 
Helfferich, Schulz Th. Steinweg Nachf. v. Steinway & 
Sons, 523 F.2d 1331, 1334 (2d Cir. 1975) (damages 
barred by delay; injunction approved).

the defendant was unaware of its infringement. Where a party 
knows it has been using the mark of another party, this Court 
applies the general rule. Hanover Star Milling Go. v. Metcalf, 240 
U.S. 403, 419 (1916) ; see also Tisch Hotels, Inc. v. Americana Inc., 
350 F.2d 609, 615 (7th Cir. 1965) ; Indep. Nail & Packing Co., 
Inc. v. Stronghold Screw Products, Inc., 205 F.2d 921 (7t,h Cir.), 
cert, denied, 346 U.S. 886 (1953); Nat’l Circle, Daughters of Isa­
bella v. Nat’l Order of Daughters of Isabella, 270 F. 723 (2d Cir.), 
cert, denied, 255 U.S. 571 (1920).

7 The facts that are held to establish a laches defense in the
Second and Third Circuits likely would be regarded as establishing 
an “ acquiescence”  defense in other Circuits. In this case, the dis­
trict court found that the NAACP never misled the LDF about 
the Association’s unwillingness to give up exclusive control of the
NAACP mark. Appendix, 34a-35a. Moreover, when the NAACP  
mark was used by an unrelated third party without permission, 
the NAACP took quick action to obtain a court order to protect
its mark. Appendix, 29a.

15

Because the court below is the first court both to 
conclude that a trademark owner’s permission to a 
related party to use the owner’s trademark did not 
create an implied revocable license, and to deny in­
junctive relief after the owner later revoked the per­
mission, it is important for this Court to clarify the 
application of Menendez and Saratoga Vichy to trade­
mark disputes between related parties. In particular, 
the three-element test for laches applied by the court 
below, Appendix, 14a, makes little sense in an infringe­
ment case involving related parties.

First, cases involving related parties typically in­
volve long periods of use by a defendant, because the 
permission to use a mark may last years, even decades, 
before the owner has reason to cancel the permission.8 
Second, the trademark owner will be aware of the 
use of its mark, having given permission to the user.9 
Third, a related party presumably benefits from tbe 
permitted use of an established and widely recognized 
mark, but that party cannot establish secondary mean­
ing or other rights in the mark while the permission 
continues.10 The decision of the court below places a 
cloud over any trademark owner that now licenses or

» E.g., Philadelphia Jaycees, 639 F.2d 134 (about 35 years) ; San 
Francisco Jr. Chamber of Commerce, 513 F.2d 1226 (more than 
40 years) ; District 50, U.M.W., 298 F. Supp. 1262 (more than 25 
years before gradual separation).

9 Tisch Hotels, Inc., 254 F. Supp. at 750 (permission does not 
result in abandonment or loss of rights). If the NAACP s grant 
of permission to the IjDF in 1939 created a revocable license, the 
laches defense should not come into play in this case, because the 
permission continued until 1979. See also, note 5, supra.

10 See note 4, supra.



16

permits use of a mark, or who may want to do so in 
the future.

Lost in the decision of the court below, but critical 
to the district court opinion, is the recognition that 
the purpose of the Lanham Act is not to protect in­
fringers, but to protect the public from confusion. See 
Philadelphia Jaycees, 639 F.2d at 142. The confusion 
that is likely to follow the separation of related parties 
is “ too clear for discussion.”  Indep. Order of Owls, 220 
F. at 662; see also Purcell v. Summers, 145 F.2d at 
983. Notwithstanding the district court’s clear findings 
that past instances of public confusion between the 
NAACP and the LDF were likely to continue in the 
future, Appendix 36a, the decision of the court below 
will permit public confusion to continue in perpetuity, 
as it might in any case involving related parties.11 
See San Francisco Jr. Chamber of Commerce, 354 F. 
Supp. at 77 (risk of confusion particularly great if 
names of parties do not change after relationship 
ends).

Menendez and Saratoga Vichy, although old, remain 
important precedents of this Court which define the 
rights of parties to trademark disputes and which 
protect the public from confusion. Because the court 
below acted so inconsistently with other courts that 
have applied those cases and in a manner that threat­
ens the rights of trademark owners and licensors, this 
Court should confirm how the laches and acquiescence 
defenses described in Menendez and Saratoga Vichy

11 Because the court below decided that laches barred relief in 
this case, it did not review the confusion issue. Appendix, 13a 
n. 55.

17

are to be applied to trademark disputes between par­
ties who are related by history or agreement. Full 
review and reversal by this Court is warranted.

CONCLUSION

For these reasons, the petition for writ of certiorari 
should be granted.

Respectfully submitted,

E d w a r d  W .  B r o o k e  
Counsel of Record

B a r r y  J. C u t l e r

O ’C o n n o r  & H a n n a n  
1919 Pennsylvania Ave., N.W. 
Suite 800
Washington, D.C. 20006 
(202) 887-1400
Counsel for Petitioner



APPENDIX



la

APPENDIX A

UNITED STATES COURT OF APPEALS, 
DISTRICT OF COLUMBIA CIRCUIT.

No. 83-1719.

National A ssociation for the A dvancement of 
Colored P eople, aka NAACP

v.
N.A.A.C.P. L egal Defense & E ducational F und, I nc.,

Appellant.

Argued May 3, 1984.
Decided Jan. 25, 1985.

As Amended Feb. 26, 1985.

OPINION

Civil rights organization brought action against legal 
defense fund, its former affiliate, seeking an injunction pre­
venting the fund from using the initials of the organization 
as part of its title. The United States District Court for 
the District of Columbia, 559 F.Supp. 1337, entered sum­
mary judgment in favor of organization, and fund appealed. 
The Court of Appeals, Bazelon, Senior Circuit Judge, held 
that doctrine of laches barred suit where organization de­
layed nearly 13 years before resuming negotiations over 
fund’s use of initials in its title.

Reversed and remanded with instructions to dismiss.

Appeal from the United States District Court for the 
District of Columbia (Civil Action No. 82-01424).

Jay Topkis, New York City, of the Bar of the United 
States Supreme Court, pro hac vice, by special leave of the 
Court and William T. Coleman, Jr., Washington, D.C., with



2a

whom Vernon E. Jordan, Jr., Daniel Joseph, Randall L. 
Sarosdy and Barrington D. Parker, Jr., Washington, D.C., 
were on the brief, for appellant. Sidney S. Rosdeitcher, 
Washington, D.C., also entered an appearance for appellant.

Edward W. Brooke, Washington, D.C., with whom Barry 
J. Cutler and Judith Hall Howard, Washington, D.C., were 
on the brief, for appellee.

Before MIKVA and BORK, Circuit Judges, and BAZE- 
LON, Senior Circuit Judge.

Opinion for the Court filed by Senior Circuit Judge 
BAZELON.-

BAZELON, Senior Circuit Judge:
Two civil rights organizations contend for the right to 

use the initials “ NAACP”  as their trademark. The Na­
tional Association for the Advancement of Colored People 
(the Association) alleges that the continued use of the 
NAACP initials by the NAACP Legal Defense and Educa­
tion Fund, Inc. (the LDF) constitutes a trademark infringe­
ment.1 The LDF replies that the Association irrevocably 
granted it the right to use the initials. The LDF also main­
tains, inter alia, that the Association’s suit is barred by 
laches. In the district court, both sides moved for summary 
judgment.2 The court granted the Association’s motion and 
ordered the LDF to refrain from using the NAACP initials. 
Because the district court erred in denying the LDF’s de­
fense of laches, its judgment is reversed.

'Trademark Act of 1946 (“ Lanham A ct” ) As Amended, 15 
U.S.C. §§ 1114, 1125 (1982).

2 The two parties ‘ ‘ agreed that the passage of time has rendered 
further illumination of the facts . . . both unlikely and unneces­
sary.”  N AACP v. N AACP Legal Defense and Edac. Fund, Inc., 
559 F.Supp. 1337, 1339 (D.D.C. 1983).

3a

I. Background

The material facts are undisputed.3 The Association, 
known as “ the NAACP,”  was founded in 1909," and listed 
among its goals:

to promote equality of rights and eradicate caste or 
race prejudice among the citizens of the United States; 
to advance the interests of colored citizens; to secure 
for them impartial suffrage; and to increase their op­
portunities for securing justice in the courts, education 
for their children, employment according to their abil­
ity, and complete equality before the law.5

The Association has sought to achieve its goals through 
educational work, legislative activity, and litigation."

As early as 1936/ the Association’s Board of Directors 
voted to organize a national defense fund to raise money

3 See id. The district court noted that the parties’ “ differences 
[regarding the facts] are principally semantic.”  Id.

4 The Association was incorporated in New York in 1911. NAACP  
Certificate of Incorporation, Appellee’s Exhibit 1 at 3 [hereinafter 
cited by Exh. and page],

5 Id., Exh. 1 at 1-7.

6 The Association is a membership organization. NAACP 1981 
A nnual  R eport, Exh. 2 at 9-10.

7 For the first two decades, the Association’s legal program 
brought cases on an ad hoc basis in an effort to address issues 
important.to the Association’s aims. Unpaid legal volunteers often 
performed these legal services, and any modest litigation expenses 
were paid by the Association’s National Office or by direct contri­
butions for the particular case. During the 1930’s, however, the 
Association expanded its litigation program, targeting key areas 
of racial discrimination, including education, voting, housing, and 
the administration of criminal justice. Report on the N AACP Legal 
Program and the Relationship of the Inc. Fund to that Program 
(Dec. 21, 1961), Exh. 4 at 15.



4a

for its litigation program.8 Besides serving as a means to 
ensure on-going financing of civil rights litigation, the cre­
ation of the LDF provided an important tax advantage.* 
The Bureau of Internal Revenue had ruled that contribu­
tions to the Association were not deductible for federal 
income tax purposes because of the Association s lobbying 
work. Hence, the creation of a separate organization to 
perform the Association’s legal work allowed contributors 
wishing to support its nonpolitical activities to receive tax 
deductions.10

The Association’s Board of Directors was informed by 
the New York Secretary of State that a certificate of in­
corporation could be processed only if the new corporation 
obtained “ consent”  from the Association to the use of the 
NAACP initials.11 The Association’s Board of Directors 
then passed the following resolution on October 9, 1939:

BE IT RESOLVED, That the Board of Directors of 
the National Association for the Advancement of 
Colored People grant permission for the use of the 
initials, “ N.A.A.C.P.”  by the “ N.A.A.C.P. Legal De­
fense and Education Fund, Inc.”  and authorize the 
President and Secretary to execute whatever papers 
might be necessary to carry out this resolution.12

a See Minutes of the Association’s Board of Directors Meeting 
(Apr. 13, 1936), Exh. 6 at 24.

9 Appellee’s Brief at 8.

10 Id.
11 II. Herman Zand Affidavit (Apr. 8, 1983), 4.

12 Minutes of the Association’s Board of Directors Meeting (Oct. 
9, 1939), Exh. H a t  39 (emphasis added).

5a

The State of New York approved the incorporation of the 
LDF in 1940.13

From 1940 to 1957, the LDF served as a subsidiary of 
the Association. Although funds were kept in separate 
accounts, all the LDF’s first directors were members of 
the Association’s board.14 The Association solicited con­
tributors by explaining that they could help the Association 
by making tax-deductible contributions to the LDF.15 
Apparently some gifts contributed directly to the Associa­
tion were placed in the LDF fund, and the contributor was 
then notified that his contribution was deductible for fed­
eral income tax purposes.16 The allocation of contributions 
between the LDF and the Association was not based upon 
who made the solicitation, but upon the purpose for which 
the money was used—so funds used for lobbying could only 
go to the Association, while funds used for litigation would 
go to the LDF.17

During this initial period, the LDF was under its pro­
genitor’s direct control. The two organizations had common 
directors, offices, and staff.18 Throughout the 1940’s and

13 See IjD F ’s Certificate of Incorporation, Exh. 19 at 46; James 
M. Nabrit, III, Affidavit (Apr. 13, 1983); see also Appellant’s 
Brief at 6.

14 See Memorandum from Thurgood Marshall to Walter White 
and Arthur B. Springarn (July 27, 1939), Exh. 17 at 42-43.

15 See, e.g., letter from John D. Rockefeller III (by his assistant 
Mary Campbell) to Walter White (May 7, 1940), Exh. 25 at 60.

' » See, e.g., letter from Walter White to Margaret and Corliss 
Lamont (May 15, 1941), Exh. 27 at 62.

17 See Memorandum from Walter White to Edward Dudley 
(June 6, 1945), Exh. 42 at 78.

18 Appellant’s Brief at 7. From 1940 to 1957, the LDF became 
increasingly independent. In 1941, the LDF began its own fund-



6a

into the 1950’s, the LDF was guided by the Association s 
National Office’s policy decisions regarding the handling of 
litigation. In particular cases, the Association’s Board o 
Directors’ approval was sought before proceeding.1 Ihe 
LDF, as the legal branch of the Association, routinely han­
dled general legal matters of the Association.

In 1957, however, the LDF and: the Association mutually 
agreed to the LDF’s independence. A gradual shift in that 
direction had suddenly been accelerated by external forces. 
The U.S. Treasury Department and several Southern state 
officials challenged the LDF’s tax-exempt status.* 19 20 The 
Southern state officials claimed that the LDF had too close 
a relationship with the Association, which was engaged in 
lobbying and political activities.21 The U.S. Treasury De­
partment objected to the sharing of board members and 
the NAACP initials.22 In response, the Association and

raising and its board did include some members who were not 
directors of the Association. The Fund moved into its own offices 
in 1952. By 1953, the LDF had its own separate annual budget. 
See Appellant’s Brief at 7.

19 See, e.g., Minutes of the L D F ’s Board of Directors Executive 
Committee Meeting (Oct. 8, 1951), Exh. 47 at 83-84.

20 See LDF Press Release, Facts About the Relationship Between 
the N.A.A.C.P. Legal Defense and Educational Fund, Inc. (LD F) 
and the National Association for the Advancement of Colored Peo­
ple (N A A C P ) (Apr. 16, 1979), Exh. 51 at 100. In a hostile reac­
tion to Brown v. Board of Education, 347 U.S. 483, 74 S.Ct. 686, 
98 L.Ed. 873 (1954), several Southern attorney generals ordered 
production of the Association’s records and membership lists seek­
ing to find any information of non-compliance with state law. See 
Appellee’s Brief at 19.

21 See Exh. 51, supra note 20.

22 John Hammond Affidavit (Apr. 8, 1983), 1(3 ; see also Appel­

lant’s Brief at 8.

7a

LDF decided that the LDF should retain its NAACP 
initials but should sever all direct connections with the As­
sociation.23 On May 16, 1957, the LDF’s board adopted a 
resolution that “ no person should be a Board member, 
officer or employee of this corporation who is also a Board 
member, officer or employee of the N.A.A.C.P.” 24

The board, budget, staff, and program of both organiza­
tions were completely separated.25 The LDF now came 
under the direct control of its own board of directors. Since 
1957, the LDF has spent over eleven million dollars solicit­
ing contributions using the NAACP initials.26 The LDF 
continued to function as the Association’s outside counsel, 
and coordinated its efforts with those of the Association 
in cases directly involving the Association’s branches and 
individual members.27 However, the LDF also sought other 
clients who had no connection with the Association.

The independence of the LDF from the Association was 
reported to the Treasury Department which never again 
challenged the LDF’s tax-exempt status.29 Donations occa­
sionally made to the’ wrong organization were forwarded 
to the intended beneficiary. Contributors were instructed

23 Hammond Affidavit, supra note 22.

24 See Appellant’s Brief at 8 ; Appellee’s Brief at 20.

25 See Exh. 51, supra note 20, at 93.

26 Nabrit Affidavit, supra note 13, ([ 3.

27 See Appellant’s Brief at 7.

29 These clients included Dr. Martin Luther King, thousands of 
freedom marchers, and thousands of victims of discrimination in 
education, in employment, and in the application of capital punish­
ment laws. Jack Greenberg Affidavit (Apr. 11, 1983), ([7.

20 See Appellant’s Brief at 8 ; see also Houck, With Charity for 
All, 93 Y ale L.J. 1415, 1440-41 (1984).



8a

about the tax deductibility of their donations,30 as well as 
advised about the total separateness of the two organi­
zations.31

Because such scrupulous organizational separation pre­
cluded-'‘ direct and formal control of the Inc. Fund [LDF] 
by the NAACP Board,” 33 cooperation between the two 
parties relied upon personal ties and common policy inter­
ests. But by the 1960’s, however, tensions between the two 
organizations became evident,33 despite the formation of 
several liaison committees established between 1960-62 and 
1965-66.34 These strained relations resulted from a height­
ening of direct competition in fund-raising.33 There was

30 See Letter from Kivie Kaplan to Thurgood Marshall (June 15, 
1961), Exh. 82 at 156; Letter from Kivie Kaplan to Thurgood 
Marshall (Feb. 20, 1961), Exh. 83 at 157; Letter from Roy Wilkins 
to N.L. McMahon (Sept. 22, 1961), Exh. 84 at 158.

31 See, e.g., Letter from John Morsell to Anne Gerber (Nov. 17, 
1966), Exh. 99 at 197. The single issue that the parties are “ un­
willing to concede as being presented upon altogether undisputed 
facts is the extent of public confusion of the two organizations.”  
559 F.Supp. at 1344. However, this factual disagreement is not 
material to the ultimate outcome of this case, which we base upon 
the defendant’s laches defense.

32 Report of the Liaison Committee with Inc. Fund Board (Apr. 
6, 1982), Exh. 90 at 171; see also Appellee’s Brief, at 26.

33 See 559 F.Supp. at 1340.

34 Minutes of the Association’s Board of Directors Meeting (Apr. 
9, 1962), Exh. 91 at 180; see also Appellee’s Brief at 23-32.

35 In 1965, the Association became a direct competitor with the 
LDF for tax-exempt contributions when it established the “ NAACP  
Special Contribution Fund.”  See Minutes of the Association’s 
Board of Directors Meeting (Jan. 6, 1964), Exh. 105 at 206. The 
L D F ’s traditional reliance on large corporate and foundation 
grants was correspondingly broadened to include small-gift contri­
butions. See Appellee’s Brief at 29-30.

9a

also a dispute over who should take public credit for suc­
cessful civil rights litigation.3” Although both organizations 
publicly attempted to deemphasize any explicit competi­
tion,37 the tensions between them continued to heighten.39

In July 1965, the Association’s Board adopted a reso­
lution 39:

it was VOTED that the Inc. Fund [the LDF] be ap­
proached by the Chairman of the Board, the Executive 
Director, the Treasury, and the Chairman of the Spe­
cial Contribution Fund for the purpose of requesting 
the Inc. Fund to voluntarily reincorporate under a 
name that does not include NAACP; or to bring the 
Inc. Fund back into Special Contribution Fund status; 
and, if they refuse to do so, the NAACP should go into 
court and enjoin them from use of the name NAACP.'”

The Association’s Executive Director orally conveyed this 
request and threat of suit to the Director of the LDF, who 
rejected the demand.41 At the Association’s September 12, 
1965 meeting, the Association’s Board formally withdrew 
the language of its resolution threatening suit.

33 Each made accusations that the media was being manipulated 
by the other in assigning historical credit for civil rights advances 
that the organizations should have shared. See Appellee’s Brief 
at 26-27.

37 See, e.g., Letter from John Morsell to L.H. Grunebaum (Aug. 
II, 1967), Exh. 104 at 204; Letter from Percy Julian to Kivie 
Kaplan (May 13, 1967), Exh. 106 at 209.

39 See Appellee’s Brief at 31.

39 Minutes of the Association’s Board of Directors Meeting (July 
2, 1965), Exh. 93 at 186.

40 Id. (emphasis added).

41 Jack Greenberg Affidavit (Dec. 7, 1982), ][[[ 3, 4. This dialogue 
was further explicated during oral argument.



10a

The Executive Director reported that the Legal Com­
mittee has suggested that a phrase in the July 2, 1965, 
minutes [page 4], to wit: “ and, if they refuse to do so, 
the NAACP should go into court and enjoin them from 
use of the name NAACP,”  be stricken from the min­
utes . . . .  [Bjecause of the feeling of the Legal Com­
mittee that it was impolitic to have such a phrase on 
record and, additionally, that it would have no standing 
in court, it was voted unanimously, on motion by Mr. 
Alexander, duly seconded, that the phrase be stricken 
from the minutes . . . .42

Thereupon, the Association’s Executive Director told the 
Director of the LDF that the threatening language had 
been withdrawn.43 On February 24, 1966, representatives 
of both sides met to discuss their relationship. It was sug­
gested again that the LDF change its name but the LDF 
declined.44

During the next twelve years, from 1966 through 1978, the 
Association remained silent concerning the LDF’s use of 
the NAACP initials.45 * The Association did not give clear 
notice to the LDF about reserving its exclusive claim to 
the NAACP initials. There were no negotiations. Coopera­
tive interchanges between the LDF and the Association’s 
attorneys waned.41’ The Association itself indicated that 
during this time, the LDF “ pursued an independent course 
of action . . . without consultation with the NAACP as to

42 Id., Exh. B.

43 Id., 11 5.

44 See letter from Julius Chambers to Margaret Wilson and 
Benjamin Hooks (Jan. 5, 1979), Exh. 142 at 262.

45 5 59 F.Supp. at 1341; see Appellant’s Brief at 10.

48 See letter from Julius Chambers to Margaret Wilson (May 29,
1980), Exh. 159 at 293. The Association had its own staff attorneys.

11a

either policy or program.” 47 At least since 1966, the LDF 
has included a disclaimer on its stationery disavowing any 
present relationship with the Association.48 During this 
period of no negotiations, the LDF continued to build up 
its goodwill—indeed, these were the salad days for the 
LDF’s litigation practice.49 The LDF continued to spend 
time and millions of dollars in soliciting gifts and recruit­
ing legal talent using the NAACP initials.50 Many public 
interest groups now use the term “ legal defense fund”  in 
emulation of the LDF’s success.51

47 Emergency Resolution Calling for the Withdrawal and Revoca­
tion of Permission To Use the NAACP Initials by the NAACP  
Legal Defense and Educational Fund, Inc. (June 25, 1979), Exh. 
153 at 282; see also Exh. 4 supra note 7, at 18-19.

48 559 F.Supp. at 1343; Appellant’s Brief at 11. The language 
currently employed is:

The NAACP L egal D efense & E ducational F und is not part 
of the National Association for the Advancement of Colored 
People although it was founded by it and shares its commit­
ment to equal rights. LDF has had for over 25 years a separate 
Board, program, staff, office and budget.

Appellant’s Brief at 11.

49 See, e.g., Bernard v. Gulf Oil Co., 619 F.2d 459, 470 (5th Cir. 
1980) (en banc), aff’d, 452 U.S. 89, 100 S.Ct. 2193, 68 L.Ed.2d 
693 (1981) ; Northcross v. Board of Educ., 611 F.2d 624, 637 (6th 
Cir. 1979), cert, denied, 447 U.S. 911, 100 S.Ct. 2999, 3000, 64 
L.Ed.2d 862 (1980). We were informed during oral argument that 
1300 cases have been brought under the L D F ’s name, using the 
NAACP initials. The district court indicated that “  ft] he universal 
esteem in which the initials are held is due in significant measure 
to its distinguished record as a civil rights litigator.”  559 F.Supp 
at 1345.

50 Appellant’s Brief at 12.

51 At least thirteen such organizations exist. See Appellant’s 
Brief at 12.



12a

Negotiations were initialed by a letter from the Associa­
tion to the LDF on December 29, 1978. The correspondence 
indicated concern about confusion stemming from LDF’s 
use of the NAACP initials.52 * On June 28, 1979, the Associa­
tion’s board adopted a resolution that rescinded the reso­
lution of October 9, 1939 and revoked permission to use the 
NAACP initials. The Association registered the NAACP 
initials with the Patent and Trademark Office on January 
26, 1982. On May 25, 1982, the Association initiated this 
suit.153

The Association alleged that its 1939 resolution granted 
only a revocable license for use of the NAACP initials, and 
that the LDF’s continued use of the initials constituted a 
trademark infringement. In response the LDF maintained 
that the 1939 resolution was an irrevocable grant, and that 
estoppel, acquiescence, and laches prevent the Association 
from belatedly asserting its claim. After a period of dis­
covery, the parties made cross-motions for summary 
judgment.

The district court noted that the parties “ agreed that 
the passage of time has rendered further illumination of 
the facts (upon which their differences are principally 
semantic) both unlikely and unnecessary.” 54 The court held 
that: (1) the 1939 resolution was intended as a revocable 
license to use the NAACP initials; (2) the Association did 
not lose exclusive control of its initials by acquiescence, 
estoppel, or laches; and (3) the potential for future public 
confusion between these two parties as a result of the 
shared trademark was substantial. The district court thus 
granted the Association’s motion for summary judgment. 
The court ordered that an injunction banning the LDF’s

52 5 59 F.Supp. at 1341.

52 Id.

54 Id. at 1339.

13a

use of the NAACP initials would issue upon exhaustion of 
appeals. It also prohibited the LDF from referring to their 
former affiliation with the Association two years following 
this initial injunction. But because we find that the Associa­
tion’s suit is barred by laches, the district court’s judgment 
is reversed.55

II. The Laches Defense

The doctrine of laches 55 bars relief to those who delay 
the assertion of their claims for an unreasonable time. 
Laches is founded on the notion that equity aids the vigilant 
and not those who slumber on their rights. Several aims 
are served by requiring the reasonable diligence of plain­
tiffs in pursuing their legal rights. Plaintiffs are encour­
aged to file suits when courts are in the best position to 
resolve disputes. As claims become increasingly stale, perti­
nent evidence becomes lost; equitable boundaries blur as 
defendants invest capital and labor into their claimed prop­
erty;57 and plaintiffs gain the unfair advantage of hind­
sight, while defendants suffer the disadvantage of an un­
certain future outcome.

55 In so doing, we need not decide whether summary judgment 
was appropriate in denying the defendant’s other independent de­
fenses. Nor do we reach the controversies involving the amount of 
public confusion and the validity of the district court’s remedy.

55 See Trademark Act of 1946 As Amended, 15 U.S.C. §1069  
(1982) (principles of laches may be applied by federal courts).

57 Non-profit organizations must heavily rely on their accumu­
lated goodwill. This is due to “ contract-failure” : services provided 
by non-profits are often not immediately verifiable to their con­
tributors. See Hansmann, The Role of Non-profit Enterprise, 89 
Yale L.J. 835, 843-45 (1980). Here goodwill is tied to a trademark 
that defines property lines. Contributors identify particular non­
profit organizations by the goodwill built around their trademarks.



14a

Here almost thirteen years passed from 1966 through 
1978 during which this case was ripe for judgment. Laches 
may not have been applicable if the Association had pur­
sued negotiations during this time rather than going d:rect- 
ly to court.58 Understandably these two civil rights organi­
zations were reluctant to air publicly a fight among brothers 
and sisters. But legal precedent requires that this well- # 
meaning motive be objectively evidenced by on-gomg nego­
tiation to excuse a stale claim.59 The Association fails to 
offer reasons why negotiations were not possible.

A. The Doctrine

The essential elements of laches are well-defined by com­
mon law. There are three affirmative requirements: (1) a 
substantial delay by a plaintiff prior to filing suit; (2) a 
plaintiff’s awareness that the disputed trademark was being 
infringed; and (3) a reliance interest resulting from the 
defendant’s continued development of good-will during this 
period of delay.'’0 Courts also look for factors that may 
negate the invocation of laches by excusing the delay:

5* The record, as described by the district court, plainly indicates 
the total lack of negotiations during this time frame. 559 F.Supp. 
at 1341. Nor does the Association challenge this factual finding.

50 In some instances, courts excuse delay if there were on-going 
negotiations. See infra p. 139. On the other hand, there are no 
court cases excusing twelve years of delay based purely on the 
motive, however well-meaning, of wishing to avoid the disadvan­
tages of filing suit. Laches is not like the defenses of acquiescence 
or abandonment that may require evidence of an intent to abandon. 
4 R. Callm an , T he L aw  of Unfair  Competition , T rademarks 
and Monopolies §22.21, at 110 (1983).

«° See Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 
1037, 1040 (2d Cir. 1980) ; R. Callm an , supra note 59.

15a

(1) ongoing negotiations;61 and (2) conscious fraud or bad 
faith by the defendant.82

Laches may bar injunctive relief when the defendant has 
established a substantial reliance interest.63 The district 
court failed to recognize this principle.64 It is true that 
“ mere delay”  by itself does not bar injunctive relief if the 
defendant did not invest resources that contribute to a 
trademark’s future value.65 But injunctive relief may be 
appropriately barred when the defendant invested substan­
tial labor and capital that builds the trademark’s goodwill.66 
This future property interest, resulting from reliance dur­
ing the plaintiff’s negligent delay, therefore prevents the 
enjoining of the defendant’s continued use of the trademark.

61 See infra p. 139.

62 See, e.g., Cuban Cigar Brands v. Upmann In t’l, Inc., 457 F. 
Supp. 1090, 1098-99 (S.D.N.Y. 1978).

62 See French Republic v. Saratoga Vichy Spring Co., 191 U.S. 
427, 24 S.Ct. 145, 48 L.Ed. 247 (1903); Saratoga Vichy Spring 
Co., Inc. v. Lehman, 625 F.2d 1037, 1041 (2d Cir. 1980).

64 The district court stated that laches rarely bars injunctive 
relief. 559 F.Supp. at 1344. But the very sources cited by the dis­
trict court recognize the importance of a defendant’s reliance 
interest. See, e.g., Menendez v. Holt, 128 U.S. 514, 524, 9 S.Ct. 
143, 145, 32 L.Ed. 526 (1888) (no denial of injunction because 
no action done in reliance) ; R. Callm an , supra note 59 § 22.21, 
at 110 (mere delay without the defendant’s reliance does not 
disentitle plaintiff to injunction). Furthermore, the Supreme Court, 
in later opinions, explicitly made laches available as an equitable 
defense barring injunctive relief. See, e.g., French Republic v. 
Saratoga Vichy Spring Co., 191 U.S. 427, 24 S.Ct. 145, 48 L.Ed. 
247 (1903).

65 In such an instance, simply barring the plaintiff’s monetary 
recovery of damages during the negligent delay may be considered.

6,1 See infra p. 139.



16a

The district court erred in denying the defense of laches. 
Although considerable deference is given to the trial judge s 
discretion on the question of laches,67 here the material 
facts are not in dispute according to both the parties and 
the district court.68

B. The Affirmative Requirements

The requirements of laches are satisfied by the facts of 
this case. First, the Association delayed for almost thirteen 
years before resuming negotiations over the LDF’s use 
of the NAACP initials. This length of time is comparable 
to that in other cases in which the laches doctrine has been 
applied.69 While mere delay by itself does not bar injunctive 
relief, here there was substantial investment by the LDF 
during this considerable time lapse. Because the Association 
did not give clear notice of its exclusive claim to the NAAC 
initials during this hiatus, the Association failed to reserve 
its rights. Such delay invites reasonable reliance by 
strengthening the defendant’s belief that its use of a trade­
mark will not be challenged. The cases cited by the district 
court do not tolerate the length of the delay found here.70

87 See, e.g., Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 
1008, 1009 (7th Cir. 1970), cert, denied, 401 U.S. 956, 91 S.Ct. 
978, 28 L.Ed.2d 240 (1971) (while recognizing weight of district 
court’s discretion, the appellate court reverses after review of 
detailed record).

88 See supra notes 2 & 3.

89 See, e.g., Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 
492 (2d Cir.), cert, denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed2d 
25 (1961) (eleven-year delay); Seven-Up Co. v. O-So-Grape, 283 
F.2d 103, 105-06 (7th Cir. 1960), cert, denied, 365 U.S. 869, 81 
S.Ct. 903’ 5 L.Ed.2d 859 (1961) (thirteen-year delay).

79 See, e.g., Independent Nail & Packing Co. v. Stronghold Screw 
Prods., Inc. 205 F.2d 921 (7th Cir.), cert, denied, 346 U.S. 886,

17a

Second, it is undisputed that the Association had knowl­
edge of the LDF’s alleged infringement.71 These two organi­
zations knew each other intimately. In 1957, it was a mutual 
decision to separate and to allow the LDF to retain its 
NAACP initials. In the 1960’s, the Association was also 
aware of the direct competition that was developing be­
tween the parties. The Association had ample opportunity 
to resort to a suit. In fact, the Association did threaten 
litigation, but withdrew its threat.72

Third, the Association’s conduct gave the LDF reason­
able justification to rely on the Association’s inaction, and 
to invest resources based upon this reliance. We again em­
phasize that, while mere passage of time does not bar in­
junctive relief, here the defendant’s use of the NAACP 
initials resulted from both the plaintiff’s inaction and con­
duct that encouraged continued use of the trademark. The 
Association failed to reserve its rights during the twelve 
year period. Indeed, it had previously agreed to the LDF’s 
independence without asserting an exclusive claim to the 
NAACP initials. The prejudice resulting from the reliance 
interest building during the years of delay in this case was 
substantial. The LDF continued to develop “  [t]he universal

74 S.Ct. 138, 98 L.Ed. 391 (1953) (two-day delay) ; Coca-Cola Co. 
v. Gemini Rising, Inc., 346 F.Supp. 1183, 1192 (E.D .N .Y. 1972)
(ten to fifteen months) ; H.A. Friend and Co. v. Friend and Co., 
276 F.Supp. 707, 716 (C.D.Cal.1967), aff’d, 416 F.2d 526 (9th
Cir. 1969), cert, denied, 397 U.S. 914, 90 S.Ct. 916, 25 L.Ed.2d
94 (1970) (one and a half years).

71 This is not a case where the plaintiff was ignorant of the 
alleged infringer’s use of its trademark. See Ancient Egyptiari 
Arabic Order of Nobles of the Mystic Shrine v. Michaux, 279 U.S. 
737, 747, 49 S.Ct. 485, 488, 73 L.Ed. 931 (1929); R. C allm an , 
supra note 59, § 22.21, at 110.

72 See supra p. 135.



18a

esteem in which the [NAACP] initials are held. The 
LDF invested substantial labor and millions of dollars in 
pressing important civil rights suits, soliciting gifts, and 
recruiting legal talent using the NAACP initials.74 Because 
many organizations have names virtually identical to the 
LDF’s except for the NAACP initials, it is only these ini­
tials that distinguish the LDF from its emulators. 5

Courts have never imposed an affirmative obligation upon 
a defendant to clarify its right to use a disputed trademark 
during the plaintiff’s delay.76 The undisputed facts of this 
case point to the reasonableness of the LDF’s reliance upon 
the Association’s delay in enforcing its claims. The passing 
of almost thirteen years without any clear reservation of 
rights by the Association creates a presumption of reason­
able reliance. The Association’s conduct included affirma­
tive acts of encouragement. Besides having agreed to the

™ 559 F.Supp. at 1345. So during this time, the Association 
benefitted from the added luster given to the NAACP initials by 
the L D F ’s litigation successes.

74 See supra pp. 135-136.

75 Despite acknowledging this evidence, the district court con­
cluded that there was “ no evidence”  to support a finding of 
prejudice. The court felt that the LDF could recast its identity 
sans the initials. 559 F.Supp. at 1344. But prejudice is not the 
mechanical ability to change identities, but the loss of investment 
in labor and capital in reliance upon the plaintiff s inaction. Also 
there was substantial evidence on the record of the additional 
monetary costs of fund-raising if the LDF was unable to use the 
NAACP initials. See James Robinson Affidavit (Apr. 13, 1983),

HI! 5-8.
76 The district court also concluded that because the LDF knew 

“ that a reckoning could come at any time,”  it is forced to suffer 
the consequences of taking this risk. 559 F.Supp. at 1344. But the 
cases never have imputed this gambling as affecting the result. 
All the evidence indicates that the LDF acted in good faith and 
believed that it had a justifiable right to use tne NAACP initials.

19a

LDF’s independence, the Association continued as a client 
of the LDF and did not protest the LDF’s use of the initials 
despite the LDF’s independent dealings with other clients. 
Finally, the LDF wag aware that the Association had threat­
ened to sue but did not.77 The LDF’s good-faith reliance 
was reasonably based upon both the Association’s prolonged 
passivity and its affirmative acts.

C. The Absence of Negating Factors

The district court correctly indicated that courts tolerate 
delays if the parties are negotiating a settlement.76 But the 
undisputed facts show that from 19(56 through 1978 there 
were no negotiations. In the total absence of negotiations, 
delay “ stemming from an abhorrence of time-consuming 
and costly litigation”  does not preclude laches.79

Nor was there any evidence presented that suggested 
bad faith or conscious fraud by the LDF. Indeed, both 
parties have cooperated in exchanging donations attributed 
to the wrong organization. The LDF’s disclaimer on its

77 See supra p. 135. For similar instances where laches is applied 
because a suit was threatened and followed by delay, see Con­
tinental Coatings Corp. v. Metco, Inc., 464 F.2d 1375 (7th Cir. 
1972) ; Anheuser-Busch, Inc. v. Du Bois Brewing Co., 175 F.2d 370 
(3d Cir. 1949). See also 4 R. Callm an , supra note 59, § 22.23, 
at 118; 2 H. Nims, T he L aw  of U nfair Competition and T rade­
marks § 409, at 1286-87 (1947). None of the cases or authorities 
distinguish whether the threat to sue is delivered through formal 
versus informal channels. The significant point is that a dropped 
threat of suit suggests that the defendant’s reliance was reason­
able. Communications between these two organizations largely re­
lied on informal ties.

76 5 59 F.Supp at 1344.

7!’ R. Callm an , supra note 59, § 22.23 at 119; see also supra 
note 59. The Association did sue a Rhode Island organization that 
had used the NAACP initials. 559 F.Supp. at 1341 n. 1.



20a

stationery further indicates good faith efforts to reduce 
any possible public confusion over its use of the NAACP 
initials. In conclusion, there is an absence of factors that 
might counsel our hesitation in applying laches.

III. The Lack of Licensing Arrangements

The Association alleges that from 1966-78 the LDP pos­
sessed only a revocable license to use the NAACP initials. 
The Association bases this view upon a non-profit parent 
organization’s right to revoke use of its name when an 
affiliate dissociates itself from the parent.80 Our review of 
the case law reveals no separate rule for non-profit organi­
zations.81 The cases relied upon by the Association inyolve 
local chapters of national organizations whose right to use 
the parent’s name was conditioned—in the organization s 
bylaws or charter—on the local’s continued affiliation with 
the national organization.82 * * * The agreements between the 
Association and the LDF contained no such condition.

Even examined in the most favorable light, these cases 
do not establish that an affiliate’s right to use the parent’s

80 Appllee’s Brief at 48.

81 Given the heavy reliance by non-profits upon trademarks, see. 
supra note 57, it would seem especially important that we en­
courage clear contractual arrangements regarding their use of 
trademarks.

82 See, e.g., United States Jaycees v. Philadelphia Jaycees, 639 
F.2d 134, 139-40 (3d Cir.1981); United States Jaycees v. San 
Francisco Jr. Chamber of Commerce, 354 F.Supp. 61, 71 (N.D.
Cal. 1972), afj’d, 513 F.2d 1226 (9th Cir.1975); see also 513 F.2d 
at 1231 & n. 9 (Merrill, J., dissenting) (discussing National B d .o f
the Young Women’s Christian A ss’n v. Young Women’s Christian
Ass’n of Charleston, 335 F.Supp. 615 (D.S.C.1971) ; Grand Lodge
Improved Benevolent, Protective Order of Elks of the World v.
Eureka Lodge No. 5, Independent Elks, 114 F.2d 46, 48 (4th Cir.),
cert, denied, 311 U.S. 709, 61 S.Ct. 319, 85 L.Ed. 461 (1940)).

21a

name ceases anytime the parent chooses. Rather, they 
establish that the affiliate’s right expires when the affiliation 
ceases. The parent organization therefore must assert its 
exclusive claim to the trademark when disaffiliation occurs. 
Here the affiliation between the Association and the LDF 
ceased in 1957. Nevertheless, there was mutual agreement 
to the LDF’s continued use of the NAACP initials as an 
independent organization.

A revocable license cannot be contrived from the record. 
Such trademark licensing requires (1) explicit contractual 
arrangements indicating revocability; 81 and (2) supervision 
and controls by the licensor over the licensee.8' Indeed, 
there was no contract between the parties which contained 
the words “ revocable license,”  much less any exchange of 
consideration for this alleged license. The record before us 
is clear and there was no mutual agreement to a revocable 
licensing arrangement.88

83 There were no provisions which indicated (1) that this alleged 
license was revocable at will, or (2) under what conditions the 
license would be revoked. We can find no cases in which a re­
vocable trademark license was imputed when there was a twplve- 
year delay while the defendant was developing a significant reli­
ance interest during this time. In fact, in the absence of qualifying 
language upon a license, the right to use the license may be deemed 
perpetual. See Kidd v. Johnson, 100 U.S. (10 Otto) 617, 619. 25 
L.Ed. 769 (1879); see also Croton Watch Co. v. Laughlin, 208 
F.2d 93, 96 (2d Cir.1953) ; Coca-Cola Bottling Co. v. Coca-Cola 
Co., 269 F. 796, 807-08, 811 (D.Del.1920).

84 Here there was neither contractual control nor actual control 
by the Association over the L D F ’s work with other clients from 
1957-58. See Reddy Communications, Inc. v. Environmental Action 
Foundation, 477 F. Supp. 936, 944 (D.D.C.1979).

88 Nor did the 1939 resolution result in a revocable licensing 
arrangement. The Association’s resolution did “ grant permission 
for the use of the initials.”  See supra note 12. No mention was 
made of a revocable license; no words indicated the conditions 
that would cause revocation of the grant. To the contrary, the



22a

IV. Conclusion

The National Association for the Advancement of Col­
ored People and the NAACP Legal Defense and Education 
Fund, Inc. share common ideals and a distinguished com­
mon heritage. History suggests that they were jointly re­
sponsible for the revolution in civil rights that led to and 
has been epitomized by the Supreme Court’s decision in 
Brown v. Board of E d u ca tio n The passage of time cou­
pled with the reliance between the parties leads this court 
to conclude that laches bars the injunctive relief sought by 
the Association. These two great organizations, like bril­
liant but quarreling family members, must continued  
share the NAACP initials with which they were born, t he 
judgment is reversed. The case is remanded to the district 
court with directions that the suit be dismissed.

So ordered.

record shows that the Association did not intend to condition the 
grant in this manner. Zand Affidavit, supra note 11, Hit ,

Although we need not decide whether the 1957 agreement con­
stituted an irrevocable license, certainly the record does not sup­
port the finding that a revocable license was granted. The parties 
mutually agreed to the L D P ’s independence and continued use ot 
the NAACP initials. The Association’s right as a parent o r g a n i ­
zation to deny an affiliate’s use of its name was ripe for determina­
tion at that time. It. does not seem reasonable to impute retro­
actively a revocable license during the twelve-year time span in 
which the LDF was expending resources in reliance upon t e 
Association’s inaction.

86 347 U.S. 483, 74 S.Ct. 686, 98 L.Ed. 873 (1954).

23a

APPENDIX B

UNITED STATES DISTRICT COURT, 
DISTRICT OF COLUMBIA.

Civ. A. No. 82-1424.

National A ssociation fob the A dvancement of 
Colored P eople, Plaintiff,

v.
N.A.A.C.P. L egal D efense and E ducational F und, Inc.,

Defendant.

March 28, 1983.

National Association for the Advancement of Colored 
People brought an action seeking to enjoin NAACP Legal 
Defense and Education Fund from the use of the registered 
mark “ NAACP.”  On cross motions for summary judg­
ment, the District Court, Jackson, J., held that: (1) plain­
tiff’s grant of permission to defendant for the use of the 
initials was intended as a revocable license to use, and not 
an irrevocable assignment of, the disputed initials, (2) 
plaintiff did not lose exclusive control of its initials by 
acquiescence or laches; and (3) plaintiff was entitled to 
an injunction preventing defendant from further use of 
its initials, since to permit defendant to go its own way 
while retaining the initials was likely to result in further 
public confusion.

Ordered accordingly.

Edward W. Brooke, Barry J. Cutler, O’Connor & Han­
nan, Washington, D.C., Thomas I. Atkins, Gen. Counsel, 
NAACP, Brooklyn, N.Y., for plaintiff.



24a

Jay Topkis, Kenneth Roth, Paul, Weiss, Rift™** Whar- 
ton l  Garrison, New York City, Vernon E_ Jordan^
Daniel Joseph, Akin, Gamp, Strauss, Hauer & Fe'd- W » 
L to n , D.C, Barrington D. Parker, Jr Charles S. Bar­
e s t ,  Parker, Ausprita, Neesemann & Delelianty P.C., 
New York City, for defendant.

d e c i s i o n  a n d  o r d e r

JACKSON, District Judge.
In the prosaic context ot this trademark action two ot 

the nation's preeminent civil rights organ,zat.ons contend 
for the right to nse the common distinguishing initials hy 
which hoih are known and to which each can fairly alarm 
to have added luster. Joined hy purpose as well as j a m
for most of »  the
Advancement ot Colored i v „  tnc
NA A C P  Legal Defense and Education r •
(‘ ‘ LDF’ ’ ) are parting company. Over the years in whic 
he, ahored together, however, they have taught four gen­

erations of Americans that civics and civility are cognate 
virtues as well as words, qualities no less in evidence 
as !Uey confront each other for the first time as adversaries.

NAACP alleges that it has used those initials« Ots^ark 
since “ at least 1910;“  that beginning in 1939 it permit 
.h TTYw t}ien a newly incorporated subsidiary, to us. 
them- and that, the LDP heing now independent its eon-
tinued use of them infringes the mark to the confusion of 
the public, and represents unfair competition in v.olat 
of Sections 32 and 43 of the Trademark Act of 1946. 15 
IT a r  W 1114 and 1125. It prays that the LDF he perma 
nentW j o i n e d  from the use henceforth of the initials
“ NAACP.”

Acknowledging plaintiff’s prior claim to the mark the 
LDF answers that the NAACP irrevocably *rant«? ** *, 
right to use of the initials in perpetuity, unconditionally

25a

and without reverter, and that the NAACP’s acquiescence 
in or indifference to its continued use of them for nearly 
20 years since its first objection works an estoppel to 
object now. The LDF counterclaims for a judgment declara­
tory of its own absolute right to joint or concurrent use 
of the initials with plaintiff hereafter.

The ease is now before the Court on the parties’ cross- 
motions for summary judgment. They are agreed that he 
passage of time has rendered further illumination of the 
facts (upon which their differences are principally se­
mantic) both unlikely and unnecessary. The documentary 
evidence now before the Court and parties statements of 
the case establishes sufficient material facts, hereinafter set 
forth, to be undisputed, from which the Court concludes 
that judgment must be given for plaintiff.

I.
The plaintiff National Association for the Advance­

ment of Colored People was founded in 1909 and incor­
porated in New York in 1911,

to promote equality of rights and eradicate caste or 
race prejudice among the citizens of the United States, 
to advance the interests of colored citizens; to secure 
for them impartial suffrage; and to increase their op­
portunities for securing justice in the courts, education 
for their children, employment according to their abil­
ity, and complete equality before the law.

And so it has done to this day, becoming a national organi­
zation grown to some 400,000 members who belong to about 
1700 branches in 36 conferences located in seven regions 
throughout the United States.

The NAACP has traditionally sought to achieve its ob­
jectives bv a calculated blend of education, lobbying, and 
litigation. In the early years litigation was undertaken



26a

largely ad hoc; legal services were generally donated y 
volunteers, and such expenses as there were paid from th 
NAACP’s general funds or defrayed by contributions ob­
tained for a particular cause. By the 1930’s, however cer­
tain of the NAACP’s distinguished scholar-advocates fore­
saw the potential of litigation aS the most effective vehicle 
for rapid progress and set in motion t le programs 
minating in the cases which constitute so much of the his­
tory of the civil rights movement of the 20th centur^  
such cases, however, they realized that e impr 
financing of the past would not suffice and sought a way 
to assure that cases would he adequately underwritten 
before being undertaken. The dilemma they encountered- 
now familiar to non-profit public interest groups hut less 
so then-was the reluctance of contributors to support or- 
ganizations, however deserving, with non-derluctible gifts 
and the unwillingness of the Internal Revenue Service (then 
" e  Bureau of Internal Revenue) to allow tax deductions 
for gifts to organizations engaged m political activi y. 
solution they arrived at was the LDF.

Thirty vears after its own founding, the NAACP created 
the defendant “ N.A.A.C.P. Legal Defense and Educational 
Fund Inc.,”  as a New York non-profit corporation, with 
respect to which the NAACP Board of Directors resolved, 
on October 9, 1939, as follows:

WHEREAS, [the directors of the LDF] have re­
quested permission of the [NAACP] to use the:initials 
“ N A A C P ” , in an application for a Certificate 
Incorporation of the “ N.A.A.C.P. Legal Defense and 
Educational Fund, Inc.” ; therefore,

BE IT RESOLVED, That the Board of Directors 
of the National Association for the Advancement of 
Colored People grant permission or the use of t 
initials, “ N.A.A.C.P.”  by the “ N.A.A.C.P. Legal De­
fense and Educational Fund, Inc.” , and authorize ti

27a

President and Secretary to execute whatever papers 
might be necessary to carry out this resolution.

In 1940 the LDF’s certificate of incorporation was ap­
proved by the State of New York, and the Internal Reve­
nue Service confirmed the new corporation’s tax-exempt 
status. The creation of a separate organization to conduct 
the NAACP’s legal work had enabled contributors wishing 
to support its non-political activities to receive deductions 
for their donations.

Thereafter the LDF and the NAACP (sometimes affec­
tionately called the “ Inc. Fund”  and the “ Association”  
to distinguish them in-house) kept separate books of ac­
count but still shared directors, offices and staff with one 
another. In the beginning there was considerable coopera­
tion and coordination between the two organizations on 
matters of both operations and policy. Donations to one or 
the other were allocated according to their stated purpose 
without regard to the identity of the nominal payee, and 
the organizations frequently issued “ exchange checks”  to 
cure apparent mistakes in designation. The Executive Com­
mittee of the LDF Board of Directors often sought the 
approval of the board of the NAACP before it litigated 
questionable cases. And the LDF routinely handled gen­
eral legal matters for the NAACP.

Although the organizations were physically separated in 
1952 when the expansion of the LDF legal staff forced a 
move to new quarters a few blocks away, they experienced 
little distance of any other kind until May, 1957, when the 
LDF Board resolved to end the practice of interlocking 
directorates. The resolution did not result from any philo 
sophical divergence but, rather, was adopted primarily as 
a countermeasure to “ massive resistance to their efforts 
to enforce compliance with Brown v. Boardl of Education 
(and secondarily to dispel growing IRS’ unease at treating 
such close relatives as separate entities for tax purposes). 
State Attorneys General in several southern states were



28a

indiscriminately ordering the production of financial rec­
ords and membership lists of both groups in quest of evi­
dence of non-compliance with state law—any state law—to 
discredit or disable either or both. This technical separation 
for tactical purposes produced some confusion, primarily 
among those who had thought of them as, in essence, a 
single organization. But even after their formal separation 
the NAACP and the LDF remained largely able to coordi­
nate efforts and avert conflicts, particularly in the sensitive 
area of fund-raising.

One of the NAACP’s prominent leaders believed that a 
potential for disharmony had always existed in their struc­
tural differences. The NAACP is, and has always been, a 
membership corporation; the LDF has no members as such, 
its Board of Directors having only to account to itself. 
Whatever their origins, by 1960 tensions between the two 
had begun to emerge, and the first of several liaison com­
mittees was established to discuss jurisdictional issues and 
relations. In early 1962 the liaison committee presented a 
joint statement to the directors of both organizations sug­
gesting means of and urging accommodation. Although tax 
considerations continued to preclude the NAACP’s direct 
and formal control of the LDF, the directors of both boards 
were agreed that the whole of the LDF’s resources could 
be devoted to NAACP legal programs without endanger­
ing the LDF’s tax-exempt status.

Despite the sentiment for reconciliation, however, con­
flicts increased, primarily as to fund-raising, and in July, 
1965, the NAACP Board passed a resolution calling upon 
the LDF to curb its autonomic impulses and revert to 
“ special contribution fund status’ ’ or reincorporate under 
a name which would not include the initials “ NAACP.”  
As originally drawn the resolution provided that were the 
LDF to refuse to do either, the NAACP should sue “ to 
enjoin them from use of the name NAACP,”  but in Sep­
tember 1965, at the urging of an elder statesman, the threat-

29a

enmg language was stricken from the resolution as “ im­
politic.”

In 1966 and 1967 the groups again attempted rapproche­
ment, but relations now faltered over which was entitled 
to take major credit for the recent dramatic successes of 
the civil rights movement, and the NAACP was growing 
ever more concerned about its ability to compete for funds 
with its aggressive and tax-exempt cohort now concur­
rently approaching many of the same sources. The 1960’s 
was, of course, a decade of momentous events in civil 
rights history : the March on Washington in 1963, followed 
by the assassination of President Kennedy, the enactment 
of the Civil Rights and Voting Rights Acts of 1964 and 
1965 under President Johnson, racial riots across the 
country, and the well-publicized murders of prominent 
black figures. Both organizations, preoccupied with such 
events, weredistracted from efforts to repair their alliance.

In the 1970’s the persistent (but usually ameliorable) 
problem of contributors’ confusion of the NAACP and the 
LDF 1 was exacerbated by controversy as to which organi­
zation was entitled to a principal share of the acclaim (and 
could exult the most) on the occasion of the 20th anniver­
sary of the Brown decision. And as the dispute festered 
the NAACP leaders who had been present at the creation 
of the LDF, and had tempered relations between them for 
a quarter century, died, retired, or (in one case) accepted 
appointment to the Supreme Court.

1 Even sophisticated contributors who might have been expected 
to know better made similar mistakes in trying to make contribu­
tions to one or the other, and the press would occasionally garble 
their titles. In cases not involving the LDF, the NAACP moved 
swiftly to eliminate confusion, as when it successfully sued to 
enjoin the unauthorized use of its initials by an unrelated organi­
zation incorporated under the name of “ Rhode Island Chanter 
NAACP, Inc.”



30a

Nevertheless the NAACP remained reluctant to provoke 
the final break with the LDF and endured the situation in 
silence (except for sporadic internal expressions of dis­
content in April, 1975, and again in January, 1978, when 
the NAACP Board again took up the LDF’s use of the 
NAACP initials).

Then in December, 1978, the NAACP again notified the 
LDF of its concern about the confusion between the two 
groups “ which results from the continued use of the 
NAACP initials in the Legal Defense and Educational 
Fund’s name.”  Although the LDF immediately reiterated 
its willingness to discuss relations between the two, it still 
decined to change'its name. Yet another liaison committee 
negotiated through early 1979, but in June the LDF once 
more refused either to resubordinate itself or to relinquish 
use of the initials. At the end of that month the 70th An­
nual Convention of the NAACP voted to call upon its 
Board to “ withdraw and revoke permission previously 
granted”  the LDF to use the initials. The Board did so 
on June 28th, voting to rescind the resolution of October 
9, 1939, and revoke the permission therein granted. For­
mal notice of the Board’s action was sent to the LDF within 
the week, demanding that it “ cease and desist”  in its use 
of the coveted initials. The LDF rejected the ulitmatum, 
ironically, on October 9, 1979, the 40th anniversary of the 
fateful original authorization. For practical purposes the 
conciliatory process had ended, notwithstanding desultory 
efforts on the part of both to revive it, and on January 
26, 1982, the NAACP signalled its disillusion by formally 
registering the initials with the Patent and Trademark 
Office. Its complaint herein was filed the following May 25th.

II.

Injunctive relief is appropriate in trademark cases when 
use of the distinguishing mark “ is likely to cause confu­
sion or . . . mistake, or to deceive------ ”  The parties need

31a

not be true competitors; the inquiry is, simply, whether the 
public “ . . . is likely to believe that [the alleged infringer’s] 
services come from the same source, or are affiliated with 
the trademark owner.”  Foxtrap, Inc. v. Foxtrap, Inc., 671 
F.2d 636, 639 (D.C.Cir.1982). Nor is the right to enjoin 
an infringement limited to commercial enterprise. Tt is as 
available to public service organizations as to merchants 
and manufacturers, United States Jaycees v. Philadelphia 
Jaycees, 490 F.Supp. 688 (E.D. Pa.1980), vacated and 
remanded on other grounds, 639 F.2d 134 (3d Cir.1981); 
United States Jaycees v. San Francisco Junior Chamber 
of Commerce, 354 F.Supp. 61, 71 (N.D.Cal.1972), aff’d, 513 
F-2d 1226 (9th Cir. 1975), but it may also be lost to them 
by the same defenses, including acquiescence and laches. 
Ancient Egyptian Arabic Order of Nobles of the Mystic 
Shrine v. Michanx, 279 U.S. 737, 49 S.Ct. 485, 73 L.Ed. 931 
(1929); Creswell v. Grand Lodge Knights of Pythias of 
Ga., 225 U.S. 246, 32 S.Ct. 822, 56 L.Ed. 1074 (1912). One 
who uses another’s mark and alleges laches or acquiescence 
amounting to estoppel assumes the burden of showing not 
only inexcusable delay but also the injustice of stopping 
him. Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 
1015, 1018 (C.C.P.A.1967). And at the last injunctions re­
main always equitable remedies, to be issued when it would 
be equitable to do so although an award of money may be 
unjust. McLean v. Fleming, 96 U.S. 245, 253, 24 L Ed 828 
(1877).

Mere delay or acquiescence cannot defeat the remedy 
by injunction in support of the legal right, unless it 
has been continued so long and under such circum­
stances as to defeat the right itself. . Where consent 
bv the owner to the use of his trademark by another 
is to be inferred from his knowledge and silence 
merely, ‘ it lasts no longer than the silence from which 
it springs; it is, in reality, no more than a revocable 
license.’ (citations omitted) Menendez v. Holt, 128 U.S. 
514, 523-24, 9 S.Ct. 143, 144-145, 32 L.Ed. 526 (1888).



32a

The Source of Authorization  ̂ characterizations of
The parties begin with alte ^  ^  interest of some

plaintiff’s ‘ ‘ grant’ to def d t ^  plaintifff quoting its
description in the th a f the words “ grant permission
1939 resolution, argnes that tne ^  defendant n0 more
for the use of initials J  Qn a particular relation-
than a revocable’ h<* “ ® .. hip ended, plaintiff was en- 
ship, and when the rela n a a C P  says that the
titled to rescind the ^  , &nd affiliate, and the gen-
relationship was one P . t disengages itself from 
eral rule is that when an the parent’s
its parent, it r e b ^ e s  any g ^  parental name 
name, no matter th*• l a n g u a g e ^  philadelphia Jay-
was acquired, Û l f r]rV)S\)- United States Jaycees v. 
eees, 639 F.2d 134 (3d CirAWl. L' f ce, 354 F.S«PP-
Son Francisco Junior Chambe F.Supp.
T l n f l  Vnitm V.M.W. «. 435 F.2d 421
1262 (D.D.C.1969), vacat'd S R m  91 a .Ct 1372,
(D-C.Cir.1970), cert, deme , only that it was for-
28 L.Ed.2d 645 (1971), e\en rffanization. Grand Lodge 
ruerlv affiliated with the parent g Elfcs of the
improved, Benevolent and F.2d 46

% &  * '  * * ■ ™ 81 s  c t  3

"  n  «  - — i s r "'Strair&TC». S
, i  A l 9 » ) .  the LDF . « « «  tie  Un,ltatiM,”
ahvavs connoted, in the a h een -o f ™  right. . . "
the conveyance of an "  ™U,tion one of irrevocahle 
Id. at 810-11, making the d femlant relies, however,
assignment. The case on w h ic h ^  interpretation
arose in a commercial co \ . t ^  ^  the construction of 
of the word “ grant ^  enncluded that the docn-
i S T j f  t C ^ t  ’ conduct considered as a whole mdi-

33a

cated an intent to allow an indeterminable use of the trade­
mark “ Coca-Cola,”  and that, to give it any other meaning 
would inevitably result in the demise of the business the 
parties had sought to establish by contract in the first place.

Insofar as the case law is concerned, the relationship 
between plaintiff and defendant appears to be sui generis. 
It has characteristics of both the parent-affiliate and, as 
the LDF points out, even the parent-child relationship.2 
(And never, the LDF argues, borrowing from the idiom 
of family law, has any court gone so far as to deny even 
the most unruly offspring its birthright to the patronym). 
It least resembles, however, the commercial transactions 
in which the case law is most favorable to the LDF.

The Court concludes that it is unnecessary to assign the 
relationship a category to determine the effect to be given 
to the 1939 resolution, however, for it is possible to dis­
cern, from both the language and circumstances of the 
resolution alone, an intent to confer upon the LDF less 
than a right to use the initials in perpetuity. First, the 
resolution is found in the minutes of a board of directors 
meeting, a document whose primary function is to record 
the proceedings of the governing body of the organization 
and not to constitute the definitive expression of the ac­
tion being authorized. Second, the resolution also author­
izes the execution of “ whatever papers”  might be neces­
sary to carrv it out, clearly contemplating that further 
papers might be needed to give effect to an idea the resolu­
tion merelv set in motion; thus, the use of the word grant 
cannot be presumed to have had the same precise mean­
ing for the secretary who took the resolution down as it 
would for the draftsman of, for example, a conveyance 
of land. Third, the resolution grants permission—not the

2 It could also be said to have aspects of the attorney-client rela­
tion in which the former is indisputably the servant at sufferance

of the latter.



34a

right-to  use the initials, a usage which in common par- 
lance implies something of lesser order of finality and 
which can ordinarily he withdrawn Finally and pe 
most importantly, those members of the NA 
who undertook in October of 1939 to procrea e the LDJ 
saw themselves as engaged primarily in lawful tax av 
ance Had they envisioned the LDF in years ence 
potential competitor for contributions, not to mentron 
claim, they would have been less generous with their svmho 
to which so much meaning had already been given.

The Court concludes that, irrespective of the' 
cation to be given the parties’ re ationship, the 1939j e s  
lotion was intended as a revocable license to use and not 
an irrevocable assignment of, the disputed initials.

Acquiescence and Laches
Defendant LDF submits that thei NAACP’s inordinate

delav in commencing this action, during ; cfpnt.lv
LDF has continued its use of the mitia s w n e cons‘

coup,ed°with a detrimental change of position ,n rehance 
thereon hv the one seeking to take advantage of the doc­
trine. And laches, that species of estoppel which f^fiw aU y 
involves the elapse of time alone, requires P^.l 
nredicate to its being successfully invoked. See 3 Lallma , 
The Law of Unfair Competition. Trademarks and Monop­
olies, $79.1 at 515 (3d Ed.1969).

This record simply does not support a finding that the

NAf c r t: “ “

A  t o  TlheLDF
NAACP never capitulated on the point. ( nc ee ,

35a

has, since the mid-1960’s, anticipated the possibility that 
it might eventually have to disassociate itself altogether 
from plaintiff by including a disclaimer of any present 
relationship on its stationery). Given the ancestry of their 
relationship, the NAACP’s inaction is less consistent with 
acquiescence freely accorded than with a reluctance to an­
tagonize a onetime ally or to abort hopes of an eventual 
reconciliation by anything so divisive as a lawsuit.

While it occasionally bars an award of damages, laches 
is rarely found a sufficient bar to an injunction in trade­
mark actions. See Menendez v. Holt, 128 U.S. 514, 9 S.Ct. 
143, 32 L.Ed. 526 (1888); McLean v. Fleming, 96 U.S. 245, 
24 L.Ed. 828 (1877); Indep. Nail d Packing Co. v. Strong­
hold Screw Products, Inc., 205 F.2d 921 (7th Cir.), cert, 
denied, 346 U.S. 886, 74 S.Ct. 138, 98 L.Ed. 391 (1953). 
Courts frequently tolerate long delays in bringing such 
suits, see e.g. Indep. Nail d Packing Co., 205 F.2d at 927; 
James Bur rough, Ltd. v. Sign of Beefeater, Inc., 572 F.2d 
574 (7th Cir.1978), particularly if, as here, the parties are 
negotiating a settlement, Coca-Cola Co. v. Gemini Rising, 
Inc., 346 F.Supp. 1183, 1192 (E.D.N.Y.1972); Blaw-Knox 
Co. v. Siegerist, 300 F.Supp. 507, 157 U.S.P.Q. 36, 41-42 
(E.D.Mo.1968) or are related. II.A. Friend d Co., Inc. v. 
Friend d Co., 276 F.Supp. 707, 716 (C.D.Cal.1967), aff’d 
416 F.2d 526 (9th Cir.1969), cert, denied, 397 U.S. 914, 90 
S.Ct. 916, 25 L.Ed.2d 94 (1970). There is, moreover, no 
evidence to support a finding that the LDF has been 
prejudiced by the passage of time in its ability to recast 
its public identity in a form sans the initials. Tt has known 
for years that a reckoning could come at any time and 
elected to take its chance that the NAACP would not, even 
as a last and only resort, force the issue to the point of 
litigation.

The Court concludes that plaintiff has not lost exclusive 
control of its initials by acquiescence or laches.



36a

Confusion

The one issue the LDF is unwilling to concede as being 
presented upon altogether undisputed facts is the extent 
of public confusion of the two organizations. Such instances 
of confusion as the record may show, it argues, are isolated 
or explainable on other grounds, and, most importantly, 
have been routinely corrected voluntarily by the parties 
out of mutual respect. The Court disagrees. The significant 
number of documented instances of confusion submitt 
by plaintiff, often on the part of those who might be ex­
pected to know better, raises the inference that they have 
been repeated manyfold over the years in circumstances 
in which documentation of them has been lost or, mor 
likely still, they were never documented at all.

Moreover, the standard for injunctive relief in trademark 
cases is not actual confusion in the past but the potential 
for confusion in the future, 15 U.S.C., * 1114(1), and evi­
dence of past confusion is not only unnecessary to plain­
tiff’s burden of proof, to the extent it is shown at all it s 
probative of the likelihood of its occurring again if the 
circumstances giving rise to it are no a ere . *■ ' 
trap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 639-40 (D. .
1982).

Manv public interest groups, in ironic emulation of the 
structure so successfully employed by plaintiff and de­
fendant in the past, use “ legal defense funds endowed 
with the parent organization’s name to conduct their ht -̂ 
gation. People assume that relations between two such 
f l i e s  bearing virtually identical names ami commit d 
to the same goals are, at least, symbiot.c; to the public 
separate treasuries and internecine jealousies are matt 
of indifference.

The Court finds that to permit the LDF t° go its own 
wav while retaining the NAACP initials is l.kely to resnlt 
in further public confusion, absent injunctive relief, and

37a

defendant has submitted no evidence—as distinguished 
from argument—to suggest to the contrary.

The Remedy

It has been said that the essence of unfair competition 
in a common law trademark context is the misappropria­
tion of the labors and expenditures of another, Saratoga 
Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d 
Cir.1980), and that in an infringement proceeding looking 
to an injunction in which the basis of the defense is the 
passage of time, as with any principle of equity jurispru­
dence, the equities must be balanced. Id., at 1040.

The LDF says, with justification, that there has been 
no misappropriation. The universal esteem in which the 
initials are held is due in significant measure to its dis­
tinguished record as a civil rights litigator.1 The LDF pre­
dicts that its ability to attract skilled advocates to continue 
the tradition will suffer if it must abandon the name in 
which its reputation was won. The NAACP responds that 
the LDF is, in essence, a “ law firm”  (once its law firm) 
and that the names of law firms can and do change, while 
nevertheless retaining their reputations for good or ill 
among those who know about such things. And the NAACP 
proclaims its own investment in the name, over a con­
siderably longer period and, on more than a few tragic 
occasions, in more than time and money.

1 See, e.(j., NAACP v. Button, 371 U.S. 415, 421-22, 83 S.Ct. 
328, 331-332, 9 L.Ed.2d 405 (1963) ; Bernard v. Gulf Oil Co., 619 
F.2d 459, 470 (5th Cir.1980) (en banc), aff’d, 452 U.S. 89, 101 
S.Ct. 2193, 68 L.Ed.2d 693 (1981) ; Northerns v. Board of Educ., 
611 F.2d 624, 637 (6th Cir.1979), cert, denied, 447 U.S. 911, 100 
S.Ct. 2999, 64 L.Ed.2d 862 (1980); N AACP Legal Defense and 
Educational Fund, Inc. v. Campbell, 504 F.Supp. 1365, 1368 (D. 
D.C.1981).



38a

But the NAACP ultimately has a far greater stake in 
but tne heretofore borne the

“  £;independence is now, however, / PrPafter If the

- - p  X m .lies s ez&rjzz*. which
fo r ig lu a tT a m , imbued with meaningfor ^ b e f o r e
the LDF came into being, its " lent - to aliow
linked to the LDF for so long as he LDFi chooses to » 
it to he so, without, however, the ability to^ ^  ^

The Court concludes, therefore, that the 
lies clearly in plaintiff's favor, and ,Us, for the fore„o g 
reasons, this 28th day of March, 1983,

r „d t™ tT s ad‘enied, and an inyuncHot. ^ " g ™ *  
defendant to take appropriate ac on to ame ^  ^  ^

P0? ‘ i Ĉ rr ^ P ” T n8eitsnn»me, publications, publicity,
soUdtations and public representations and to refra.n from
the use of any »ame, semce: mark logo, 0 ^  ^  ^

S L t U Z y  b e t r t i l r  deteZined to he .lust; and it is 

FURTHER ORDERED, that the pa.r«es shall 'snhm,

after settled upon notice for hearing

39a

APPENDIX C

UNITED STATES DISTRICT COURT 
FOR THE DISTRICT OF COLUMBIA

Civil Action No. 82-1424

National A ssociation for the Advancement of 
Colored People, P la in tiff,

v.
N.A.A.C.P. Legal Defense and Educational F und, Inc.,

D efen d a n t.

[Filed Jun 6 1983 Clerk, U.S. District Court 
District of Columbia]

ORDER

Upon consideration of defendant’s motion for recon­
sideration of the Decision and Order of March 28, 1983, 
plaintiff’s opposition thereto, and the oral argument of 
counsel thereon, it appearing to the Court that the addi­
tional facts shown by defendant’s supplemental affidavits 
in support of said motion would not alter the inferences 
drawn by the Court from those undisputed facts previ­
ously made of record herein even if deemed to be true, or 
the conclusions of law made thereon, it is, this 6th day of 
June, 1983,

ORDERED, that the motion for reconsideration is de­
nied ; and it is

FURTHER ORDERED, that final judgment be entered 
for plaintiff in accordance with Decision and Order of 
March 28, 1983.

/ s /  T homas Penfield Jackson 
Thomas Penfield Jackson 

U.S. District Judge



40a

a p p e n d ix  d

UNITED STATES DISTRICT COURT 
FOR THE DISTRICT OF COLUMBIA

Civil Action No. 82-1424

National A ssociation for the Advancement of 
Colored P eople, Plaintiff,

v.
N.A.A.C.P. Legal Defense and Educational F und, Inc.,

Defendant.

[Filed Jun 6 1983 Clerk, U.S. District Court 
District of Columbia]

JUDGMENT

For the reasons set forth in the Court's Decision and 
Order of March 28, 1983, herein, in accordance with bed.
R. Civ. P. 58, it is, this 6th day of .June, 1983,

ORDERED, that on a date not more than six (6) months 
from the later of the date of this Judgment or the con­
clusion of appellate proceedings herein, if any, defenda 
N A A C P Legal Defense and Educational Fund, Inc., its 
officers, directors, employees and agents, and all others in 
act ve concert or participation with them, shall cease and 
desist from using the initials “ NAACP”  . .  defend.”  s 
name, publications, publicity, solicitations and other public 
representations; shall cause its certificate of incorPor^  
tion, bv-laws, and all other corporate documents to be 
amended to eliminate the use of or reference to the initials
“ NAACP”  in anv name or title by which it shall c e ermi 
to be known; and shall refrain from the use of any name 
service mark, logo or initials confusingly similar to those 
of the plaintiff NAACP; and it is

41a

FURTHER ORDERED, that notwithstanding any other 
provision of this Judgment, defendant shall retain the right 
to identify itself as “ formerly N.A.A.C.P. Legal Defense 
Fund, Inc.”  (or “ formerly N.A.A.C.P. Legal Defense and 
Educational Fund Inc.” ) for a period of two (2) years 
from the date aforesaid.

/ s /  T h o m a s  P e n fie ld  J ac k so n  
Thomas Penfield Jackson 

U.S. District Judge



APPENDIX E

UNITED STATES COURT OF APPEALS FOR THE 
DISTRICT OF COLUMBIA CIRCUIT

42a

September Term, 1984 
Civil Action No. 82-01424

No. 83-1719

National A ssociation for the A dvancement of 
Colored. P eople, aka NAACP

v.

N.A.A.C.P. Legal Defense & E ducational F und, Inc.,
Appellant

Appeal from the United States District Court for the 
District of Columbia.

Before: Mikva and Bork'  Circuit Judges, and Bazelon, 
Senior Circuit Judge.

[United States Court of Appeals for the District of Colum­
bia Circuit Filed Jan 25 1985 George A. Fisher Clerk]

JUDGMENT

This cause came on to be heard on the record on appeal 
from the United States District Court for the District of 
Columbia, and was argued by counsel.

On consideration thereof It is ordered and adjudged by 
this Court that the judgment of the District Court appea e

43a

from in this cause is hereby reversed and this case Is re­
manded with directions that the suit be dismissed, all in 
accordance with the Opinion for the Court filed herein 
this date.

Per Curiam 
For The Court 

/ s /  George A. F isher 
George A. Fisher 

Clerk

Date: January 25, 1985
Opinion for the Court filed by Senior Circuit Judge 

Bazelon.