SunAmerica Corp. v. Sun Life Assurance Co. of Canada

SunAmerica Corp. and Sun Life Insurance Co. of America (SLA) (plaintiff) and Sun Life Assurance Co. of Canada and Sun Life Assurance Co. of Canada (U.S.) (SLC) (defendant) were both in the business of selling insurance products to American consumers. Both SLA and SLC had used the Sun Life trademark in connection with their services, either alone or in combination with geographic modifiers, for nearly eight decades. In June 1989, SLA sued SLC for trademark infringement, alleging that SLC’s use of the Sun Life and Sun Life (U.S.) marks was causing consumer confusion. In response, SLC counterclaimed against SLA for trademark infringement, seeking an injunction to bar SLA’s use of the Sun Life marks altogether. The district court determined that SLC was the senior user of the Sun Life marks and therefore had enforceable rights in its use of such marks, and, further, that a likelihood of confusion existed between the parties’ names. The district court also found, however, that SLC had acquiesced to SLA’s use of its infringing marks. Such acquiescence operated to bar SLC’s trademark-infringement claim against SLA, but because the district court found that inevitable confusion existed between the parties’ names, that inevitable confusion revived SLC’s trademark rights. Accordingly, the district court granted the injunction SLC sought. SLA appealed.