Trademark infringement

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Contents 1 Under State Law 2 Under Federal Law 3 Claims 4 Remedies 5 Statute of Limitations 6 References

[edit] Under State Law

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.^[1]

[edit] Under Federal Law

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."^[2] 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.^[3]

[edit] Claims

A federal trademark registration entitles the owner of the mark to pursue two independent causes of action for infringement, under the following sections of the Lanham Act:

• 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. . . .”^[4]

• 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.”^[5]

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.^[6]

In an action under either section, the touchstone of trademark infringement is the standard of “likelihood of confusion,” which means that the plaintiff need not show that actual confusion has occurred, but rather that consumer confusion as to the source of the goods is probable.^[7] The usual remedy for trademark infringement is injunctive relief,^[8] although monetary relief is also available.^[9]

[edit] Remedies

The remedies available for trademark infringement include:

(1) Injunctions.^[10]

(2) Any damages sustained by the plaintiff, defendant’s profits, and the costs of the action.^[11]

(3) In exceptional cases, reasonable attorney fees.^[12]

(4) The court may order that any infringing articles bearing the reproduction, copy, or colorable imitation of a registered mark be destroyed/^[13]

[edit] 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.^[14] 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.^[15]

[edit] References

1. ↑ See, e.g., Cal. Bus. & Prof. Code §14320 (2006).
2. ↑ 15 U.S.C. §1114.
3. ↑ Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).
4. ↑ 15 U.S.C. §1114(1).
5. ↑ Id. §1125(a)(1).
6. ↑ 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.
7. ↑ 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”).
8. ↑ 15 U.S.C. §1116.
9. ↑ Id. §1117(a) (permitting recovery of the infringer’s profits, plaintiff’s damages and litigation costs, and attorney's fees).
10. ↑ 15 U.S.C. §1116(a).
11. ↑ Id. §1117(a).
12. ↑ Id. §1117(a).
13. ↑ Id. §1118.
14. ↑ 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).
15. ↑ 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.”).