Originally Posted by mrcool1122

Finally. My moment to shine ... I am a trademark lawyer.

Surprisingly, most of the comments on this thread have got it mostly right. It is possible for both 1) AA to establish trademark rights in FLAGSHIP formatives and 2) for DL's use of the term "flagship" to describe its offerings to not be trademark infringement.

AA has a registration for, among other things, FLAGSHIP SUITES with respect to "transportation of passengers and cargo by air." They've had this registration since 2009. However, a common misconception is that registration is the sine qua non of trademark rights; i.e., that rights spring from federal registration. Fundamentally, rights arise first from actual use in commerce. USPTO registration helps trademark owners establish nationwide notice, gives extra avenues of recovery in court when infringement actions are brought, and also offer certain privileges of "incontestability" once registration is held for a certain number of years. But a mark holder must actually use the mark to be eligible for registration.

AA's specimen of use for its most recent renewal of the FLAGSHIP SUITES registration (which can be seen here) shows that they're using this term to market an international first class seating product. I haven't read the complaint but I would imagine that this specific mark is the heart of their claim and not use of FLAGSHIP with respect to lounges, as some here have mentioned (although that certainly would be in the complaint as part of their asserted family of marks). They would have a pretty solid claim that DL's use of "flagship" to identify an in-flight experience is confusingly similar, to the average consumer, with AA"s FLAGSHIP SUITE in-flight product--at least to avoid going thrown out on a motion to dismiss.

Many people have mentioned the descriptiveness bar. It is true that a word which is merely descriptive of the good or service cannot function as a trademark. That is, unless the mark has acquired distinctiveness, meaning that consumers have come to associate the term with the mark holder. In US law, a presumption of distinctiveness arises after 5 years of continuous use. Based on the length of AA's registration, it is unlikely to be wholly invalidated for descriptiveness.

However, again as some people have mentioned, DL may have a defense of descriptive fair use. This has its roots in the First Amendment, yes, but there is no need to resort to lofty constitutional protections; the defense is enshrined right in the statute, the Lanham Act, at 15 USC 1115(b)(4). It's not infringement if "use of the ... term ... is a use, otherwise than as a mark ... of a term ... which is descriptive of and used fairly and in good faith only to describe the goods or services of such party"

There are lots of elements in 1115(b)(4), which any reader can probably see as difficult for DL to establish: use not as a mark; use in good faith; only to describe the goods. DL's new "flagship" product could arguably be used in its descriptive, dictionary sense ("the best or most important thing owned or produced by a particular organization"). But there are a lot of facts that go into this defense and I could see a jury or judge going either way.

Either way, a fairly interesting trademark case.