Goss

Official Airline Guides appeals from the district court’s judgment after a bench trial finding that the use by Mindy Goss, Ashby-web Ltd., and other defendants (“Ashby-web”) of the phrases “THE TRAVEL PLANNER USA” and “USA TRAVEL PLANNER” did not infringe OAG’s trademark “OAG TRAVEL PLANNER.” Ashby-web cross-appeals from the district court’s finding that Ashbyweb infringed OAG’s mark by using the phrase “THE TRAVEL PLANNER,” standing alone. 756 F.Supp. 1393 . The district court’s judgment follows a remand from this court for reconsideration of whether OAG’s mark qualifies for trademark protection. We have jurisdiction of the timely appeal and cross-appeal pursuant to 28 U.S.C. § 1291 .

FACTS

A. OAG Travel Planner

For more than sixty years, Official Airline Guides, Inc. has published travel directories containing listings of travel and hospitality services in the United States and abroad. OAG currently publishes and distributes three editions: a European Edition, a Pacific Asian Edition, and a North American Edition. The latter, entitled “OAG Travel Planner North American Edition,” contains information about hotels, motels, ground transportation, and airline offices in various…

concurring and dissenting:

I join the majority’s holding that Ashby-web did not infringe OAG’s trademark over “OAG TRAVEL PLANNER” by using the phrases “The Travel Planner USA” or “USA TRAVEL PLANNER.” I dissent, however, from the majority’s conclusion that Ashby-web infringed OAG’s trademark by use of the phrase “THE TRAVEL PLANNER.”

Ashbyweb demonstrated at trial the obvious proposition that “travel planner” is a generic term, like “answering machine,” “sports car,” or “tennis shoe.” Such terms are free for all to use, standing alone, to identify their product. The majority opinion permits “[o]ne competitor ... to impoverish the language of commerce by preventing his fellows from fairly describing their own goods.” Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316, 1319 (9th Cir.1982) (citations omitted).

The majority does not even decide whether “travel planner” is a generic term because it mistakenly believes that the issue was resolved by a previous panel and now stands as the law of the ease. See Official Airlines Guides, Inc. v. Goss, 856 F.2d 85 , 87 (9th Cir.1988) (“OAG I"). The majority misreads OAG I, seizing upon and badly misconstruing one…