If a mark is not federally registered, the owner can seek legal remedy for trademark infringement under state law, asserting that the other party’s use of a copy, reproduction, imitation, or counterfeit of the mark is likely to cause confusion, mistake, or deception as to the source of origin of the goods or services.
Federal trademark infringement occurs when a party makes "unauthorized use in commerce of any reproduction, copy, or colorable imitation of a federally registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services, where such use is likely to cause consumer confusion, mistake, or deception."
In order to prevail on a trademark infringement claim, a plaintiff must establish that
|“||(1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) 'in connection with the sale. . . or advertising of goods or services,' (5) without the plaintiff's consent.||”|
In addition, "the plaintiff must show that defendant's use of that mark 'is likely to cause confusion . . . as to the affiliation, connection, or association of [defendant] with [plaintiff], or as to the origin, sponsorship, or approval of [the defendant's] goods, services, by [plaintiff].'"
In determining whether consumers are likely to be confused, the court will look at various factors, such as:
- (1) the strength of the mark;
- (2) the proximity of the goods;
- (3) the similarity of the marks;
- (4) evidence of actual confusion;
- (5) the similarity of marketing channels used;
- (6) the degree of caution exercised by the typical purchaser; and
- (7) the defendant's intent.
- Section 32: “Any person who shall, without the consent of the registrant — 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 likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant. . . .”
- Section 43: “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 — is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . 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.”
Careful scrutiny of the statutory language of these two provisions reveals that while section 32 claims are reserved exclusively for owners of registered trademarks, section 43 claims could be brought by owners of both registered and unregistered marks. In addition, while both causes of action are aimed at preventing unauthorized uses of marks that are deceptive and misleading to consumers, section 43 prohibits a broader range of practices, including false designation of origin or sponsorship.
In order to establish a violation of either Section 32(1) or Section 43(a) of the Lanham Act, the trademark owner (plaintiff) must demonstrate that the following elements are satisfied:
- The plaintiff possess a mark that is valid and protectable under the Lanham Act.
- The defendant used the mark in commerce in connection with any goods or services without the consent of the plaintiff.
- The defendant’s use of the mark is likely to cause consumer confusion concerning the origin or sponsorship of the goods or services.
The first element is typically straightforward for the plaintiff to show. According to the Lanham Act, a certificate of registration issued by the U.S. Patent and Trademark Office serves as “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.”
The second prerequisite to establish a defendant’s liability is to show that the defendant’s use of the plaintiff’s trademark is a commercial use of the mark as a trademark — that is, the defendant used the mark “in commerce,” in connection with the sale of goods or services. However, this second element has caused courts interpretive difficulties because there are two relevant statutory definitions that may apply to the phrase “use in commerce.” The first definition provides that the word “commerce” means “all commerce which may lawfully be regulated by Congress.” The second definition defines the specific phrase “use in commerce” to mean
|“||the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce — (1) on 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) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.||”|
The “use” prong of a trademark infringement claim has been the focus of much of the keyword advertising litigation.
Under the third element, “likelihood of confusion,” the plaintiff need not show that actual consumer confusion has occurred as a result of defendant’s use of the trademark, but rather that consumer confusion as to the source of the goods is probable. The likelihood of confusion analysis is a fact-specific inquiry that examines whether “the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Evidence to prove or disprove this third element often takes the form of customer surveys. Specific court opinions in each of the federal circuits have set forth a list of factors that courts are to consider in trademark infringement cases when analyzing “likelihood of confusion.” For example, the U.S. Court of Appeals for the First Circuit has identified the following eight relevant criteria:
|“||the similarity of the marks; the similarity of the goods; the relationship between the parties’ channels of trade; the relationship between the parties’ advertising; the classes of prospective purchasers; evidence of actual confusion; the defendants’ intent in adopting its mark; and the strength of the plaintiff’s mark.||”|
However, as one federal court has explained, “[n]ot all of the factors are always relevant; nor are they of equal importance in each case. . . . Consequently, no one factor is dispositive on the determination of likelihood of confusion.”
These defenses include:
The remedies available for trademark infringement include:
- (1) Injunctions.
- (2) Any damages sustained by the plaintiff, defendant’s profits, and the costs of the action.
- (3) In exceptional cases, reasonable attorneys' fees.
- (4) The court may order that any infringing articles bearing the reproduction, copy, or colorable imitation of a registered mark be destroyed.
In many cases a trademark owner will be satisfied with an outcome where the violator ceases use of the challenged mark. In other cases, monetary relief will also be desired, particularly if intentional copying exists and the unauthorized user has profited from its infringing activities. In still other circumstances, the trademark owner may be willing to permit the unauthorized party to continue use, but subject to certain limitations, such as modifications to the challenged mark or the manner in which it is used, or geographically restricted use of the mark. Or the trademark owner may only desire to keep the Federal Register clear of similar marks. For example, where a third-party application or registration lists goods or services within the trademark owner’s scope of use, but the trademark owner does not believe that the third-party’s actual marketplace use is likely to cause confusion, the trademark owner may not object to continued use of the third-party mark, but will object to its presence on the register.
Statute of limitations
Although there is no express federal statute of limitations for civil trademark infringement claims, federal courts generally follow the limitations period for the most analogous state law cause of action from the state in which the claim is heard; courts have also applied the equitable doctrine of laches to determine whether a trademark infringement claim is untimely. One federal appellate court has determined that criminal trademark infringement prosecutions are governed by the general five-year statute of limitations for non-capital offenses under Title 18 of the U.S. Code.
- See, e.g., Cal. Bus. & Prof. Code §14320 (2006).
- 15 U.S.C. §1114.
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406-07 (2d Cir. 2005) (quoting 15 U.S.C. §1114(1)(a)).
- 1-800 Contacts, Inc., 414 F.3d at 406-07 (quoting 15 U.S.C. §1125(a)(1)(A)).
- Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
- 15 U.S.C. §1114(1).
- Id. §1125(a)(1).
- Inwood Labs. v. Ives Labs., 456 U.S. 844, 858 (1982). In substance, however, there is little difference between the federal and state laws concerning trademark infringement, and a litigant in a trademark infringement case will often assert all of these claims.
- See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001); Fisons Horticulture v. Vigoro Indus., 30 F.3d 466, 472 (3d Cir. 1994); Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036, 1051 (9th Cir. 1999).
- 15 U.S.C. §1057(b).
- Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005) (“[T]rademark infringement law prevents only unauthorized uses of a trademark in connection with a commercial transaction ... ); Wells Fargo & Co. v. WhenU.com, Inc., 293 F.Supp.2d 734, 757 (E.D. Mich. 2003) (“There can be no liability under the Lanham Act absent the use of a trademark in a way that identifies the products and services being advertised by the defendant.”).
- 15 U.S.C. §1127.
- Id. See also Holiday Inns v. 800 Reservation, 86 F.3d 619, 626 (6th Cir. 1996) (“[T]he defendants’ use of a protected mark . . . is a prerequisite to the finding of a Lanham Act violation.”); Miss Dig Sys., Inc. v. Power Plus Eng'g, Inc., 944 F. Supp. 600, 602 (E.D. Mich. 1996) (“As the language of these statutory provisions shows . . . the court . . . must first find that the defendant . . . has made an actual ‘use’ of the plaintiff’s trademark. In the absence of this preliminary finding, there can be no liability for trademark infringement or unfair competition under the Lanham Act.”).
- See, e.g., Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987) (explaining that “[l]ikelihood of confusion requires that confusion be probable, not simply a possibility”).
- International Ass’n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996).
- See, e.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987) (“As to incidents of actual confusion, Mutual produced evidence of actual confusion in the form of a survey conducted by Sorenson Marketing and Management Corporation of New York. We consider this appropriate, for surveys are often used to demonstrate actual consumer confusion.”); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 467 n.15 (4th Cir. 1996) (“We may infer from the case law that survey evidence clearly favors the defendant when it demonstrates a level of confusion much below ten percent.”).
- Pignons S. A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981).
- IDV North America v. S&M Brands, 26 F.Supp.2d 815, 824 (E.D. Va. 1998) (citation omitted).
- The trademark law recognizes many defenses to infringement including innocent infringement, laches, acquiescence, unclean hands, fraud, and abandonment. See Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks §31.4 (2003).
- 15 U.S.C. §1116(a).
- Id. §1117(a).
- Id. §1117(a).
- Id. §1118.
- See Ronald J. Nessim, Criminal (and Civil) Trademark Infringement: What Statute of Limitations Applies?, 76 J. Pat. & Trademark Off. Socy'y 933, 937 (Dec. 1994).
- 18 U.S.C. §3282; see also United States v. Foote, 413 F.3d 1240, 1247 (10th Cir. 2005)(“In the case of the Counterfeit Trademark Act, a criminal statute, Congress has provided a specific statutory period in §3282.”).