trademark infringement

1125(a)), Study of Alleged Trademark Infringement Against Global Brands in Internet Search Advertising, Trade Marks Acts | Intellectual Property India, Uniform Domain-Name Dispute-Resolution Policy,, Articles with limited geographic scope from December 2010, Creative Commons Attribution-ShareAlike License 3.0. For example, the word "Coppertone" is suggestive of sun-tan lotion, but does not specifically describe the underlying product. its color, odor, function, dimensions, or ingredients).

Instead, the owner may be able to commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. For example, the trademark "Nike," along with the Nike "swoosh," identify the shoes made by Nike and distinguish them from shoes made by other companies (e.g. billy bob wonderland wv barboursville rae showbizpizza bbw Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. Whether the trademark is being used by the defendant.

a court order (injunction) that the defendant stop using the accused mark; an order requiring the destruction or forfeiture of infringing articles; monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and. owner (the plaintiff) may file a lawsuit against the infringing user of the Trademark Infringement: Do You Need an Attorney? 2000)): If the goods in question are related but do not directly compete for sales, the likelihood of confusion analysis becomes more complex.

The public need not be able to identify the specific producer; only that the product or service comes from a single producer.

838 (S.D.N.Y.

This priority is limited, however, to the geographic area in which I sell the bubble gum, along with any areas I would be expected to expand into or any areas where the reputation of the mark has been established.

same or similar mark (the defendant) to prevent further use of the mark and its color, odor, function, dimensions, or ingredients).

Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody.

Partner Peter Crowther discusses Winston & Strawns Brussels Office.

Although registration with the PTO is not required for a trademark to be protected, registration does confer a number of benefits to the registering party. 15 U.S.C.

Between the two ends of the spectrum lie many close cases, in which the courts will apply the factors listed above.

838 (S.D.N.Y.

Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. 15 U.S.C. Passing off occurs when the defendant tries to pass off its product as the plaintiff's product.

Other defenses include genericness, functionality, abandonment, or fair use. [3] The Court there announced eight specific elements to measure likelihood of confusion: Other Courts have fashioned their own tests for likelihood of confusionlike those announced in In re E.I.

generic over time, thereby losing its trademark protectionKellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). Find out how to protect intellectual property in other countries. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. In some states, the information on this website may be considered a lawyer referral service.

Thus, for example, the term "Holiday Inn" has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. denied, 368 U.S. 820 (1961). The Puzzle of Criminal Sanctions for Intellectual Property Infringement, "AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979", "15.18 InfringementLikelihood of ConfusionFactorsSleekcraft Test | Model Jury Instructions", "Polaroid Corp. v. Polarad Elect. A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g.

Whether the defendant's use of the mark is "in commerce.". The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. Remember, however, that descriptive marks qualify for protection (and can be registered) only after they have acquired secondary meaning. 1125(a), the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.

Similarly, where the rights to a trademark are assigned to another party in gross, without the corresponding sale of any assets, the trademark will be canceled.

For example, the words "Exxon," "Kodak," and "Apple" bear no inherent relationship to their underlying products (respectively, gasoline, cameras, or computers).

What defenses are there to trademark infringement or dilution?

In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff's goodwill in using the mark. Then, to determine consumer confusion, a court may apply one of various factor tests. A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. 2017 updated quarterly). Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. But I will not be able to prevent someone else from opening a "Broadway Pizza" in Los Angeles. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods.

Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else. Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered.

The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid exception (e.g., comparative advertising) or defence (e.g., laches) to infringement, or attack and cancel the underlying registration (e.g., for non-use) upon which the proceedings are based. Although it once denoted a specific manufacturer, the term now stands for the general type of product. Damages may be trebled upon showing of bad faith.

collect money damages for the wrongful use. 15 U.S.C. An experienced trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.

1114, or an unregistered mark under 15 U.S.C. denied, 368 U.S. 820 (1961), AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.

What remedies are there for trademark infringement and/or dilution?

15-55500 (9th Cir. Such intent can be inferred from the circumstances.

Such features fall generally under the term "trade dress," and may be protected if consumers associate that feature with a particular manufacturer rather than the product in general.

The information provided on this site is not legal advice, does not constitute a lawyer referral service, and no attorney-client or confidential relationship is or will be formed by use of the site. Unlike use of a mark in commerce, registration of a mark with the PTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. 1992). Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. So, for example, a manufacturer cannot lock up the use of a particular unique bottle shape if that shape confers some sort of functional advantage (e.g. is easier to stack or easier to grip). AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. Similarly, posters bearing the logo "Enjoy Cocaine" were found to violate the rights of Coca-Cola in the slogan "Enjoy Coca-ColaCoca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark.

Bayer Co. v. United Drug Co., 272 F.505 (S.D.N.Y.

It also provides public notification of ownership.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. However, after examining many of the factors listed above, the court concluded that the use of Sleekcraft was likely to cause confusion among consumers.

What defenses are there to trademark infringement or dilution? Moreover, non-use for three consecutive years is prima facie evidence of abandonment.

if the services or goods on which the two marks are used are related to each

Such uses are privileged because they use the terms only in their purely descriptive sense.

1992), L.L.

Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage.

As described above, registration gives a party the right to use the mark nationwide, subject to the limitations noted above.

"Use" of a trademark by an alleged infringer must be established as a threshold matter. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit. USPTO - United States Patent and Trademark Office, Madrid Protocol & international protection, Checking application status & viewing documents, Checking registration status & viewing documents, Enforcing your trademark rights/trademark litigation, International intergovernmental organizations, Transferring ownership / Assignments help. While the Second Circuit has not heard an appeal of the case yet, the case was appealed to theUnitedStatesCourtofAppeals for the Federal Circuit, which held that"theSecond Circuit would hold that, in light of Octane, theLanhamAct should have the same standard for recovering attorneys fees as the Patent Act." When a party uses a trademarked item as a component of a more complex product, collateral use allows the party to identify that component by its trademarked name. In Perfect 10, Inc. v. Giganews, Inc., No.

Thus, Apple Computer and Apple Records can peacefully co-exist, since consumers are not likely to think that the computers are being made by the record company, or vice versa. In many countries (but not in countries like the United States, which recognizes common law trademark rights), a trademark which is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings.

15 U.S.C. 1989), Toys "R" Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal.


For more on trademark infringement, please see thisHarvard Law Review article, thisUCLA Law Review article, and thisYale Law Review article. Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product.

1987), Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1127. Once it has achieved secondary meaning, trademark protection kicks in. Trademarks are governed by both state and federal law.

Can you describe the problem?

Originally, state common law provided the main source of protection for trademarks.

the strength of a partys litigating position, for this prong, courts should look at the facts of the case and the law which governs the issue, the unreasonable manner in which the case was litigated, To determine whether a case is exceptional, lower courts should look at the totality of the circumstances on a case-by-case basis, there is an unusual discrepancy in the merits of the positions taken by the parties, based on the non-prevailing party's position as either frivolous or objectively unreasonable, the non-prevailing party has litigated the case in an unreasonable manner, or, there is otherwise the need in particular circumstances to advance considerations of compensation and deterrence. Comments, or suggestions, including about the resources you'd like to see?

So, for example, the use of an identical mark on the same product would clearly constitute infringement.


It should not be considered to replace advice from an attorney.

The use of a mark generally means the actual sale of a product to the public with the mark attached.

Registration enables a party to bring an infringement suit in federal court. The statutory requirement that an alleged infringing use of a trademark be "in commerce" to establish a claim of infrinteringement under the Lanham Act is derived from trademark law's basis in the congressional power to regulate interstate commerce. Trademark law protects a trademark owner's exclusive right to use a trademark when use of the mark by another would be likely to cause consumer confusion as to the source or origin of goods.

So, for example, where the marks are similar and the products are also similar, it will be difficult to determine whether consumer confusion is likely.

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), And as such, this court refused to apply the. The success of an infringement normally turns on whether 1989). would have no exclusive right to use that term with respect to that product.

Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes.

Director of Attorney Recruiting & Development Lisa McLafferty discusses the firms culture. 1125. The USPTO is currently improving our content to better serve you. In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the Supreme Court added clarity to what an "exceptional case" is. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution. Trademark bears luck hard calaway park showbizpizza alberta 1980s calgary canada hlb misc For example, "Holiday Inn," "All Bran," and "Vision Center" all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services). For example, the PTO will refuse to register generic marks or descriptive marks that have not attained secondary meaning. 1996).

For example, the pink color of Owens-Corning fiberglass insulation or the unique shape of a Coca-Cola bottle might serve as identifying features. Any number of activities may be "in commerce" or may create a "likelihood of confusion." the strength of the trademark owner's mark; the degree of similarity between the trademark owner's mark and the allegedly infringing mark; the type of goods involved and the degree of care likely to be exercised by the purchaser; the alleged infringer's intent in selecting the mark; other facts showing that the consuming public is likely to expect the trademark owner to manufacture a product in the alleged infringer's market, or is likely to expand into that market.

Simon Luk discusses Winstons ability to serve clients globally and how the firms presence abroad benefits his private equity matters in Asia. Type of goods and the degree of care likely to be exercised by the purchaser, Likelihood of expansion of the product lines, This page was last edited on 27 May 2022, at 05:34.

Oct. 29, 1996).

The ACTA trade agreement, signed in May 2011 by the United States, Japan, Switzerland, and the EU, requires that its parties add criminal penalties, including incarceration and fines, for copyright and trademark infringement, and obligated the parties to actively police for infringement.[8][9][10]. What prerequisites must a mark satisfy in order to serve as a trademark?

These remedies are cumulative, meaning that a successful plaintiff may recover the defendant's profits in addition to any damages, or other remedies awarded. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.

For example, Kodak brand bicycles or Xerox brand cigarettes.

What does it mean to register a trademark? 3. Thus, a manufacturer selling "Computer" brand computers (or "Apple" brand apples, etc.)

For example, some courts have applied the general "likelihood of confusion" analysis, using the First Amendment as a factor in the analysis.

These presumptions may be rebutted in the court proceedings.

Some conduct through which a seller or producer seeks to capitalize on a competitor's name recognition does not amount to "use" for purposes of a trademark infringement claim.

Please reference the Terms of Use and the Supplemental Terms for specific information related to your state. And as such, this court refused to apply theOctanerule to trademark infringement cases.

15 U.S.C.

A trademark can be valid because it is officially registered, or because it has a claim under common law. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court. Courts conducting a likelihood of confusion analysis will apply 2 different standards, depending on whether the accused item directly competes or does not directly compete with the tradrmarked item (See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir.
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