trademark likelihood of confusion · distribution, or advertising of any goods or services ......

Trademark – Likelihood of Confusion

“(1) Any person who shall, without the consent of the registrant—(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 on or in connection with which such use is

, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided.” Lanham Act §32


“(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) . . . 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.” Lanham Act § 43

Trademark – Use Requirement?

• Rescuecom v. Google• Mark is “Rescuecom” for on-site computer

services and sales• Search for “rescuecom” results in ads from

competitors• How Adwords Works

http://youtu.be/05we2g3Edgs


• Rescuecom v. Google• Both § 32 and § 43 require infringer to “use

in commerce”• Is this a “use in commerce” of Rescuecom’s

Mark?• Is this harmful?


“(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) . . . 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.” Lanham Act § 43


• AMF v. Sleekcraft


• AMF v. Sleekcraft• Gateway questions:

• compare goods/services at issue• If compete for sales, just look at

similarity• If related, but not competitive, look at

all factors• If completely unrelated, no LOC

• Normally, in any case, look at all factors


• AMF v. Sleekcraft1. Strength of Mark2. Proximity of Goods3. Similarity of Marks4. Evidence of Actual Confusion5. Marketing Channels Used6. Type of Goods/Degree of Purchaser Care7. Alleged Infringer’s Intent8. Likelihood of Expansion


• Confusion as to Sponsorship• Initial Interest Confusion• Post-Sale Confusion• Reverse Confusion

• LSU v. Smack Apparel

• What is the mark?• What goods?



1. Strength of Mark2. Proximity of Goods3. Similarity of Marks4. Evidence of Actual Confusion5. Marketing Channels Used6. Type of Goods/Degree of Purchaser Care7. Alleged Infringer’s Intent8. Likelihood of Expansion

Trademark – Dilution

“(c) Dilution by blurring; dilution by tarnishment(1) Injunctive relief . . . the owner of a famous mark that is

, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become , commences use of a mark or trade name in commerce that is

of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” § 43


• Louis Vuttion v. Haute Diggity Dog• Likelihood of Confusion?• Famous?


“(c) . . . (2) Definitions (A) . . . a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors. . . :(i) The duration, extent, and geographic reach of advertising and publicity of the mark . . . .(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.(iii) The extent of actual recognition of the mark.(iv) Whether the mark was registered . . . .” Lanham Act §43


• Louis Vuttion v. Haute Diggity Dog• Likelihood of Confusion• Famous?• Blurring?


“(c) . . . (2) (B) . . . “dilution by blurring” is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:(i) The degree of similarity . . . .(ii) The degree of inherent or acquired distinctiveness . . . .(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.(iv) The degree of recognition of the famous mark.(v) [Intent]

(vi) Any actual association . . . .” Lanham Act § 43


• Louis Vuttion v. Haute Diggity Dog• Likelihood of Confusion• Famous?• Blurring?• Tarnishment?


“(c) . . . (2) (C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Lanham Act § 43


• Louis Vuttion v. Haute Diggity Dog• Likelihood of Confusion• Famous?• Blurring?• Tarnishment?• Exclusions?


“(c) . . . (3) Exclusions The following shall not be actionable as dilution . . . :(A) Any fair use, including a nominative or descriptive fair use, . . . other than as a designation of source for the person’s own goods or services, including use in connection with—(i) advertising or promotion that permits consumers to compare goods or services; or(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.(B) All forms of news reporting and news commentary.(C) Any noncommercial use of a mark.” Lanham Act § 43

Trademark – Indirect Infringement

Tiffany v. eBay• Counterfiets being sold as “Tiffany” on eBay website• Direct trademark infringement? LOC

• Dilution?• Indirect infringement?

• “intentionally induces another to infringe a trademark”• inducement

• “continues to supply its [service] to one whom it knows or has reason to know is engaging in trademark infringement”• contributory infringement

Trademark – Genericness

• Never distinctive• Car for automobiles• Bed for mattress

• Becomes generic• Genericide• Starts distinctive• usually arbitrary or fanciful

• Becomes generic


• Murphy Door Bed v. Interior Sleep• Starts suggestive, at least for wall bed• Had patent


• Murphy Door Bed v. Interior Sleep• Defendants have distribution agreement• once PTO rejects registration, defendants

form corp. named Murphy Bed• Burden on defendants became generic• “commercial protection a developer of

innovation deserves”• Determine became generic:• dictionary use• use by media—as adjective or noun• policing efforts

Trademark – Functionality

• Three types:• Utilitarian Functionality – trade

dress/product configuration (TrafFix)• Aesthetic Functionality – trade

dress/product appearance (Qualitex)• Linguistic Functionality -- genericness

(Murphy Bed)• Looking for when protection creates barrier to

entry that outweighs any reduction in consumer search costs


• TrafFix Devices v. Marketing Displays• “essential to the use or purpose of the product or

affect its cost or quality” (p. 820)• If patent claims trade dress at issue, then

presumed functional


• TrafFix Devices v. Marketing Displays• “essential to the use or purpose of the product or

affect its cost or quality” (p. 820)• If patent claims trade dress at issue, then

presumed functional• Evidence dual spring helped function

• and impacted costs• Court not appear concerned with whether there

were alternatives• Looking for a “significant non-reputation-related

disadvantage”

Trademark – Abandonment

“A mark shall be deemed to be “abandoned” if either of the following occurs:(1)

Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” Lanham § 45


“A mark shall be deemed to be “abandoned” if either of the following occurs: . . .(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment

under this paragraph.” Lanham § 45


• MLB v. Sed Non Olet Denarius• 1958 – Brooklyn Dodgers leave Brooklyn

for L.A. – become L.A. Dodgers• Non-use of “Brooklyn Dodgers” for

baseball team from 1958 forward, resumes in 1981• old-timers game• products


• MLB v. Sed Non Olet Denarius• Abandonment?• Court focuses on non-use as team• And presume no intent to resume after

23 years of non-use• Court not enjoin use at restaurant started

in 1988• What if restaurant started selling shirts?

• Does this protect consumers?• What about protection of brand investment?

Trademark – Fair Use

• KP Permanent Make-up, Inc. v. Lasting Impression

• “micro colors” mark

Trademark – Fair Use

• KP Permanent Make-up, Inc. v. Lasting Impression

• Fair use by KP Permanent Make-up• used to merely described goods, not

identify source• Like Zatarains

• What if there is still confusion as to source?• No burden on alleged infringer to prove

no confusion• Allow some degree of confusion (“mere

confusion”)

Trademark – Nominative Use

• Mattel v. MCA• “Barbie” as mark• Title of song• Protectable?• LOC?

• Nominative Use?

• Dilution?• Exception?

http://blog.richmond.edu/s09law641/files/2009/04/aqua-barbie-girl-clip.mp3


“(c) . . . (3) Exclusions The following shall not be actionable as dilution . . . :(A) Any fair use, including a nominative or descriptive fair use, . . . other than as a designation of source for the person’s own goods or services, including use in connection with—(i) advertising or promotion that permits consumers to compare goods or services; or(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.(B) All forms of news reporting and news commentary.(C) Any noncommercial use of a mark.” Lanham Act § 43

Trademark – Injunction

“(a) Jurisdiction; serviceThe several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant , according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or

(d) of section 1125 of this title.” Lanham § 34

Trademark – Injunction

• Herb Reed v. Fl. Entertainment• Band breaks up, members keep performing• Herb Reed founder, sues tribute band

• Customer complaints• Irreparable Harm?

• After eBay• No longer presume

Trademark – Damages

“(a) Profits; damages and costs; attorney feesWhen a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125 (a) or (d) of this title, or a willful violation under section 1125 (c) of this title . . . the plaintiff shall be entitled, . . . to recover(1) defendant’s profits,(2) any damages sustained by the plaintiff, and

(3) the costs of the action.” Lanham § 35


• Lindy Pen v. Bic Pen• “Auditor” as mark for pen• Initial Interest and Reverse

Confusion• Lost Profits

• Very tough in reverse confusion

• Some circuits allow you to use infringer’s profits as proxy

• Defendant’s Profits


• Big O Tire v. Goodyear

• “Big Foot” as mark for tire

• Reverse Confusion

• Corrective advertising

• Costs more than Big O’s profits

trademark likelihood of confusion · distribution, or advertising of any goods or services ......

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