The opinion of the court was delivered by: BY THE COURT; JAY C. WALDMAN
Plaintiff American International Airways (hereinafter "Airways") is suing defendant American International Group ("AIG") for wrongful use of civil proceedings pursuant to 42 Pa. Cons. Stat. § 8351 et seq., the so-called "Dragonetti Act," following AIG's prior unsuccessful suit against Airways for trademark infringement. Jurisdiction is premised on diversity.
Presently before the court is AIG's motion for summary judgment. Oral argument was held on March 3, 1993.
The facts of the underlying trademark action are set out in detail in the court's opinions denying AIG's motion for a preliminary injunction, see American International Group v. American International Airways, 726 F. Supp. 1470 (E.D. Pa. 1989), and, following a trial on the merits, denying AIG's request for a permanent injunction. See American International Group v. American International Airways, 1990 WL 39897 (E.D. Pa. April 4, 1990).
In summary, the court found that AIG promoted and extensively used its tradename in the insurance and financial services fields, but that it had no presence in the commercial aviation field. Indeed, while AIG owned and operated several corporate jets, it was not even licensed legally to provide commercial aviation services.
Airways had used the tradename "American International" in connection with commercial air transportation services since 1981. On April 18, 1985, AIG's request to register the mark "American International" with the United States Patent and Trademark Office ("PTO") in the air transportation services field was denied due to a likelihood of confusion with Airways which had already registered the same mark for use in that field.
The court found that the "American International" mark was essentially descriptive and that AIG had failed to prove secondary meaning in the aviation services market or a likelihood of confusion between AIG and Airways among the present and potential customers of either.
The court ultimately entered judgment in favor of Airways.
A motion for summary judgment requires the court to consider whether the pleadings, depositions, answers to interrogatories, admissions on file, and affidavits, show there is no genuine issue as to any material fact, and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). Only facts that may affect the outcome of a case under applicable law are "material." "The mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Id. at 247-48.
All reasonable inferences from the record must be drawn in favor of the non-movant. Id. at 255. Although the movant has the initial burden of demonstrating an absence of genuine issues of material fact, the non-movant must then establish the existence of each element on which it bears the burden of proof. See J.F. Feeser, Inc. v. Serv-A-Portion, 909 F.2d 1524, 1531 (3d Cir. 1990), cert. denied, 113 L. Ed. 2d 246, 111 S. Ct. 1313 (1991) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986)).
The pertinent facts are uncontroverted or set forth in a light most favorable to ...