Trademark Law and Practice
Causes of Action
Trademark infringement is the violation of another's trademark rights by using the mark without authorization.
The basic test for infringement is "likelihood of confusion."
An infringing use of a trademark must be a "use in commerce."
Likelihood of Confusion
Each circuit has its own test to determine the likelihood of confusion.
There are some factors that are common to most of these tests however:
- Similarity of the marks
- Proximity of the goods or services
- Whether the products are sufficiently related in the mind of the consumer
- Strength of the plaintiff's mark
- Actual confusion
- Defendant's intent
Contributory infringement occurs when one induces another to infringe yet another's trademark or continues to supply his product to one that he knows or should have known is infringing upon another's trademark.
Trademark dilution is making a famous mark weaker.
Trademark dilution can occur "by blurring" or "by tarnishment."
A dilution action only applies to purely commercial speech.
- Famous mark
- Similarity to mark
Dilution by Blurring
Trademark dilution by blurring is when a "famous mark" loses some of its distinctiveness because of the use of a similar mark, regardless of what for.
There are six factors used to determine dilution by blurring:
- Degree of similarity
- Degree of distinctiveness
- Exclusive use/Policing
- Actual association
Dilution by Tarnishment
Trademark dilution by tarnishment is when a "famous mark" has its reputation hurt because of a similarly named product of poor quality or unwholesome context.
There is no hard line for what a famous mark is, but it has to be really famous. Usually around 70% recognition among the general consuming public is required.
To determine whether a mark is famous, four factors are used:
- The extent of duration and geographic reach
- The volume and geographic extent of sales
- The extent of actual recognition
- If it was registered before the creation of the principal register
Under the Lanham Act, false advertising requires:
- A false or misleading statement of fact about a product;
- Such statement either deceived, or had the capacity to deceive a substantial segment of potential consumers;
- The deception is material, in that it is likely to influence the consumer’s purchasing decision;
- The product is in interstate commerce; and
- The plaintiff has been or is likely to be injured as a result of the statement at issue.
Cybersquatting is when one registers the domain name of another's distinctive mark with the bad faith intention to profit from it.
It requires that the person:
- has a bad faith intention to profit from the mark and
- registers or uses a domain name that is identical, confusingly similar, or dilutive of a distinctive mark.
Factors for bad faith intention to profit
Whether or not a person has a bad faith intention to profit is determined by balancing nine factors:
- His IP rights in the domain name
- The extent to which the domain name consists of his legal name or other common name
- His prior use of the domain name in connection with the bona fide offering of goods or services
- His bona fide noncommercial or fair use of the mark in a site at the domain name
- His intent to diver consumer from from the mark owner's site, either for commercial gain or to tarnish the mark by creating a likelihood of confusion
- His offer to transfer or sell the domain name for financial gain without using it in the bona fide offering of any goods or services, or a history or doing this
- His provision of false contact information which registering the domain name, failure to update it, or history of doing this
- His acquisition of multiple domain names identical or confusingly similar to marks of others
- The extent to which the mark is distinctive and famous