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Trademark Infringement Outline

LLM Law Outlines > Intellectual Property (IP) Law Outlines

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Trademark 21, 22, 23. Trademark - Infringement, Defenses
Infringement: Trademark Use, Likelihood of Confusion, Dilution
Defenses: Abandonment, First Amendment
MML 976-1023; 15 U.S.C. §§ 1051, 1052, 1057(c)-(d), 1065, 1115, 1125(a)
MML 1023-43, 1066-73, 1082-99; 15 U.S.C. §§ 1115(b)(4), 1125(c), 1127
Federal Cause of Action 1) § 32(1) Infringement of registered marks

Any person who shall, without the consent of the registrant -
o (A) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(B) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction . . . to labels, signs, prints, packages, . . . or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided 2) § 43(a)(1)(A) Infringement of unregistered marks: Confusion as to source 3) § 43(a)(1)(B) False advertising

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which  (A) is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval or his or her goods, services, or commercial activities by another person,
or [Confusion as to Source]
 (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, [False
Advertising]
o shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
4) § 43(c) Dilution 5) § 43(d) Cybersquatting

Reserving .com and domain that belonged to someone else 1 Trademark

2 Trademark
Elements of trademark Infringement

1. Valid trademark: distinctive mark used in commerce where you have priority

2. D "used" the trademark

3. D's use occurred "in commerce"

4. D's use "in connection with sale, offering for sale, distribution, or advertising" of goods or services

5. Likelihood of confusion
Trademark Liability Analysis
(1) Threshold Issue: Trademark Use
- "Use in Commerce"
o trademark owner must use a mark in commerce to establish rights in the mark

s.45 Lanham Act: "use in commerce" means bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark

mark shall be deemed to be in use in commerce
 (1) on a goods when
 (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
 (B) goods are sold or transported in commerce, and
 (2) on service when it is used or displayed in the sale or advertising of services and the services are rendered in commerce… and the person rending the services is engaged in commerce in connection with the services
- Stop competitors that confuse consumer/ harm competition
- What type of use qualify? Use/ associate the mark in any way?
o If they didn't use the trademark as a mark but to make money  may not be sufficient

Using the trademark as comparison  not harming in a trademark way

Low barrier to pass, but more of an issue in the context of the internet1-800 Contacts v WhenU.com (2nd Cir.) [0:30]
o Facts: WhenU.com was a software company that developed and distributed a software application known as "SaveNow". The program contains a directory that match specific URLs or search terms that the user enters into their browser to categories of popup advertisements.
When the user typed "1800contacts.com" into their browser the SaveNow program would match this to the category "eye-care" and retrieve an ad for vision direct. Advertisers could not request or purchase keywords to trigger their ads. The display of a particular advertisement was controlled by the category associated with the website or keyword, rather than the website or keyword itself.
o Plaintiff argued there was trademark use

3 Trademark

oPopup ads: by causing Vision Direct's advertisement to appear when plaintiff's website was accessed, defendants "are displaying plaintiff's mark 'in the advertising of' . . . Vision Direct's services."
 Internally: when WhenU used plaintiff's mark by including it in the directory to trigger advertisements for companies that compete with plaintiff.
Holding: Doesn't count as it is a functional use and not seen by a consumer
 WhenU did not "use" P's registered trademark under the Lanham Act's definition
 Functional use of URL
 Not seen by consumer
 No sale of specific keywords to advertisers; just categories
 No display of 1-800 Contacts™ on the popup ad

Rescuecom Corp v Google, Inc. (2d Cir. 2009) Product Placement; internal use

Facts: Rescuecom Corp (P) argued that Google, Inc.'s (D) use of P's trademark was a "use in commerce"  infringed its trademark through Google's recommendation and sell of P's
TM to Google's advertisers (including P's competitors)  when a Google user initiated a search of the term "Rescuecom"  trigger the appearance of their advertisements and links in a manner likely to cause confusion for the consumer

DC ruled in favour of Google: when the users search Rescuecom, would not display R's trademark at any way apparent to the consumers  2nd Cir. reversed

Held for P: Google's use of the "Rescuecom" trademark constituted a "use in commerce"
under the Lanham Act.
 Google's use was not internal + not the same as product placement
 Mark shall be deemed to be "use in commerce" on services when it is used or displayed in the sale or advertising of services and services are rendered in commerce

Court rejected Google's arguments:
1) Inclusion of a trademark in an internal computer directory cannot constitute trademark use [because it is not communicated to the public]
 Court: but Google's recommendation and sale of P's mark to it's advertising customers are not internal uses  Google's use causes confusion to consumers
 Distinguished from 1-800 case:
o In 1-800, ads were displayed in a different window and did not affect the end-user's ability to access the plaintiff's website

Here, Google used P's TM to Google's advertising customers when selling its advertising services.
o Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses (c.f. Internal directory in
WhenU - 1-800 did not imply that use of a trademark in a software program's internal directory precludes a finding of trademark use.)
o Court: if we allow such use, operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion 2) its use of R's TM is same as a retail vendor who uses product placement to allow one vendor to benefit from a competitors'
name recognition:

4 Trademark


Product placement: When a store-brand generic product is placed next to a trademarked product to induce a customer who specifically sought out the trademarked product to consider the typically less expensive, generic brand as an alternative  not deceptive  no liability
But deceptive plan of product placement designed to confuse consumers would result in liability under the Lanham Act
Court: here, Google creates a likelihood of consumer confusion as to trademarks  searcher likely to believe mistakenly that the different name appeared is affiliated with the brand name sought in the search

Summary
 The Lanham Act provides causes of action for infringement of registered and unregistered marks. (§§ 32(1), 43(a)(1)(A))
 Elements of infringement: Valid trademark; Use of trademark by defendant;
Defendant's use occurred in commerce; Defendant's use was in connection with sale, offering for sale, distribution, or advertising of goods or services; Likelihood of confusion
 Trademark use online: use of a trademark in an internal software program doesn't insulate a defendant from a charge of infringement if the mark is used externally. (Rescuecom)
(2) Likelihood of Confusion
- (i) confusion-based infringement
- (ii) dilution
- (iii) extension by contract (franchising and merchandising)
- (iv) domain names and cybersquatting
- (v) indirect liability
- (vi) false advertising
(i) Confusion-Based Infringement
General multi-factor "likelihood of confusion" test
- AMF Inc. v Sleekcraft Boats (9th Cir. 1979)
o Facts: AMF and Nescher both manufacture recreational boats. AMF uses the mark "Slickcraft" used since 1968 (boats for racing) and Nescher uses
"Sleekcraft"  AMF allege infringement

DC held: AMF's trademark was valid but not infringed for unlikely confusion o

Held for AMF: factors relevant to likelihood of confusion
 Suggests likelihood of confusion  case remanded to DC
 No one factor predominate, all are considered 1) Strength of the mark

Distinctiveness: stronger secondary meaning/ consumer associate the company with the mark, the stronger the strength of the mark; stronger linguistic link between the product and the

5 Trademark name (descriptive marks are protected but on the lower end),
the stronger the strength

Counter: the more the consumers know the mark, the less possibility that they would be confused

Slickcraft is a suggestive mark for boats (not too distinctive) 
weak mark entitled to restricted range of protection  only infringement if marks are quite similar + goods closely related 2) Proximity of the goods

The more likely the public is to make association between the producers of the related goods  the less similarity in the mark is required to find likelihood of confusion  the less similarity between the marks will suffice when the goods are complementary

Sold to the same class of purchasers

Here, non-competing, but similar in use and function: extremely close in this case, both for water skiing and speedy cruises 3) Similarity of the marks  important

To a consumer

Tested on 3 levels: sight, sound, meaning  here, found all 3 to be similar a) Sight: though names appear dissimilar when viewed in conjunction with the logo, but the logo is often absent in advertisements b) Sound: similar - difference is only in a small part of a syllable c) Meaning: similar - closeness in meaning substantiate a claim of similarity of trademarks

Disclaimers can be effective in reducing likelihood of confusion if consumers are likely to notice them 4) Evidence of actual confusion  important

Confusion in both trade and in the mind of the buying public

Present confusion is persuasive proof that future confusion is likely, but may be discounted if unclear or insubstantial

Standard: reasonably prudent purchaser of the products

[Note: difficult to find, esp. if infringement is challenged early enough and there may not be very many of confused consumers
 court generally allow results of consumer surveys as evidence of actual confusion - but expensive]
o Here: insignificant 5) Marketing channels used

No evidence that both lines were sold together except at boat shows, but similar and parallel use of normal marketing channels

Each sells through authorised retail dealers in diverse localities,
same sales and advertising method employed, identical price

6 Trademark range, general class of boat purchasers exposed to the products overlap (though different submarkets)
6) Type of goods and degree of care likely to be exercised by purchaser

Both produce high quality, expensive goods, boats are purchased only after thoughtful, careful evaluation of the product and the performance the purchaser expects

Standard: typical buyer exercising ordinary caution
 Though wholly indifferent may be excluded
 Standard includes the ignorant and the credulous

When goods are expensive, buyer can be expected to exercise greater care in his purchases [but depends on the buyers]
o Trademarks are unimportant to average boat buyer - boats are not the type of purchase made only on general impression

Little harm to P's reputation when D's products is of equal quality  though P cannot control D's product's quality 7) D's intent in selecting the mark; and  important

D's good faith  intent matters because D would use the mark to confuse consumers; hurts D to have a bad intent [no evidence of intent to confuse]
o D was unaware of P's use of the Slickcraft mark when D adopted its name  after notification of purported infringement, D
designed a distinctive logo 8) Likelihood of expansion of the product lines

Strong possibility that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing

When goods are closely related, any expansion is likely to result in direct competition

If both parties are diversifying their model lines  strong potential that one or both parties will enter into and compete in each other's submarketNote: each circuit has its own multi-factor test, though largely overlapTylenol PM v Excedrin PM (2nd Cir):
o Court sometimes focused on similarity, sometimes on differences 1) Strength of the mark: "PM" refers to night time usage  not generic but descriptive
 No secondary meaning for Tylenol, but the trade dress has secondary meaning
 "PM" suggesting something about the product (commonly used amongst these type of medication)
2) Proximity of the goods: yes 3) Similarity of the marks: "PM", blue box, trade dress was strongly similar,
create similar overall impression 4) Actual confusion: P provided evidence, but DC found no actual confusion 7

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