National Council of The United States v. The Del Norte Council of the Society…

Background

The National Council is a nonprofit Delaware corporation headquartered in Missouri. It has used “The St. Vincent de Paul Society” and related names since 1845 and owns several registered and unregistered marks. The National Council’s local conferences operate as legally separate entities but must follow its standards, pay solidarity dues, report regularly, and receive licenses to use the National Council’s marks and other support.

The Del Norte Council was a local conference from 1979 until 2022. It had been licensed to use names including “Society of St. Vincent de Paul” and “St. Vincent de Paul” for its thrift store. After the Del Norte Council declined to update its bylaws and said it would disassociate, the National Council asserted that the license ended. The Del Norte Council continued using the marks and refused requests to stop using them. The National Council filed claims under the federal trademark statute, the Lanham Act, and California law. It did not seek default judgment or a remedy on its separate restitution, constructive-trust, and unjust-enrichment claim, and it sought only injunctive relief at this stage.

The Del Norte Council did not defend the lawsuit. The court noted that its corporate status was suspended, which prevented it from participating in litigation, but did not prevent entry of default judgment. The Clerk entered default in May 2024. Wes Nunn, identified as the Del Norte Council’s Secretary of the Board, moved to intervene and for a more definite statement.

Default judgment

Under Federal Rule of Civil Procedure 55, default judgment follows entry of default. The court first confirmed federal-question jurisdiction over the Lanham Act claims, supplemental jurisdiction over the related state claims, personal jurisdiction over the Del Norte Council, and proper service on its registered agent.

The court applied the seven factors commonly used in the Ninth Circuit to decide whether to enter default judgment. It found that denying judgment would leave the National Council without another way to obtain the requested injunction; that the complaint adequately stated trademark infringement and unfair-competition claims; that no money award was being sought at this stage; that no material factual dispute appeared; and that the Del Norte Council’s failure to participate was not excusable neglect. Although courts generally prefer decisions on the merits, the court found that the defendant’s failure to appear made that impractical and that the other factors supported default judgment.

For the registered marks, the court concluded that the allegations showed the National Council was the prior user and owner of valid marks and that the Del Norte Council continued using them without a license. Because the Del Norte Council was a former licensee, its continued unauthorized use established consumer confusion for purposes of the claims at this stage. The court also found that the allegations adequately supported protection of the National Council’s unregistered marks because of prior use and acquired market meaning. The court treated the related California trademark claims as substantially similar to the federal claims and did not analyze them separately.

Remedies

The court found that the National Council established the requirements for a permanent injunction: irreparable harm from losing control over its marks and goodwill, inadequate legal remedies, a balance of hardships favoring the National Council, and a public interest in protecting valid trademarks. It found portions of the proposed injunction too broad, however, and entered narrower relief.

The permanent injunction bars the Del Norte Council from using “Del Norte Council of the Society of St. Vincent de Paul,” specified “St. Vincent” marks, or confusingly similar variations in connection with charitable services or related functions in the United States, except to refer to the National Council. It also bars statements or uses that suggest affiliation, authorization, sponsorship, or approval by the National Council; specified “formerly known as” language; and applications to register prohibited marks, trade names, or domain names.

The court held that the National Council was entitled to attorney fees under the Lanham Act based on the pleaded willful conduct, but the order did not set a fee amount. Instead, it permitted the National Council to file a supported motion for attorney fees.

Nunn’s motions

The court denied intervention as of right because Nunn lacked a significantly protectable interest in the action. His asserted interest was the possibility of personal liability, but the National Council had disavowed any plan to add personal-liability claims against Nunn or other board members. The court therefore found his concern hypothetical and too remote from the trademark claims.

The court also denied permissive intervention. Nunn’s potential personal-liability issue did not share a common question of law or fact with the underlying trademark dispute, and the National Council had not sued him. The court said intervention to defend against an unfiled claim would unnecessarily delay the case. Because Nunn could not intervene, the court denied his motion for a more definite statement as well. His request to file an amicus brief was also denied.

Disposition

The court granted the National Council’s motion for default judgment on its federal Lanham Act and state-law claims, entered the specified permanent injunction, and denied Nunn’s motion to intervene and motion for a more definite statement.