AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
1st CIRCUIT
SECONDARY
MEANING
To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to
identify the source of the product rather than the product itself.
I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 49 U.S.P.Q.2d 1225 (1st Cir. 1998)
Strong and distinctive trademarks, such as fanciful words and words used in arbitrary ways receive greater protection than weak, generic marks. Some
words are so common within a particular context that they cannot secure any trademark protection until they acquire a special association with a
particular source of consumer products or services. This association is called "secondary meaning." Pursuant to this doctrine, words which have a
primary meaning of their own may by long use in connection with a particular product, come to be known by the public as specifically designating that
product.
Flynn v. AK Peters, Ltd., 377 F.3d 13, 71 U.S.P.Q.2d 1810 (1st Cir. 2004)
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
When a descriptive phrase becomes associated with a single commercial source, the phrase is said to have “acquired distinctiveness” or “secondary
meaning,” and therefore functions as a trademark. See 15 U.S.C. § 1052(f) (“[N]othing [herein] shall prevent the registration of a mark used by the
applicant which has become distinctive of the applicant's goods in commerce.”). For example, when the public perceives the phrase SPORTS
ILLUSTRATED as a particular sports magazine in addition to its primary meaning as a description of a specific feature or element, the phrase has
“acquired distinctiveness” or “secondary meaning” and may receive trademark protection. Boston Duck Tours, LP v. Super Duck Tours, LLC, 531
F.3d 1 (1st Cir. 2008)
Eight factors are typically used to assess the likelihood of confusion:
1) the similarity of the marks;
2) the similarity of the goods;
3) the relationship between the parties' channels of trade;
4) the relationship between the parties' advertising;
5) the classes of prospective purchasers;
6) evidence of actual confusion;
7) the defendant's intent in adopting its mark; and
8) the strength of the plaintiff's mark. These factors are not to be applied mechanically. Courts may consider other factors and may accord little weight
to factors that are not helpful on the particular facts of a case.
Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8, 71 U.S.P.Q.2d 1641 (1st Cir. 2004); eight-part likelihood of confusion test established in
Pignons S. A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981)
The First Circuit has not officially recognized initial interest confusion as leading to trademark infringement, but it was discussed as being possible if
the plaintiff can show that an appreciable number of reasonably prudent consumers would likely be confused. Hearts on Fire Co., LLC v. Blue Nile,
Inc., 603 F. Supp. 2d 274, 284-85 (D. Mass. 2009) (“Mere diversion, without any hint of confusion, is not enough.”); but see Northern Light
Technology, Inc. v. Northern Lights Club, 97 F. Supp. 2d 96, 113 (D. Mass. 2000) (stating that initial interest confusion is not cognizable under
trademark law in the First Circuit).
Whether a preliminary injunction should issue usually depends upon a medley of four factors:
1) the likelihood of success on the merits;
2) the potential for irreparable harm if the injunction is denied;
3) the balance of relevant impositions, i.e., the hardship to the nonmovant if enjoined as contrasted with the hardship to the movant if no injunction
issues; and
4) the effect (if any) of the court's ruling on the public interest. Although the court must consider all four factors, the sine qua non of this four-part
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
DAMAGES
inquiry is likelihood of success on the merits; if the moving party cannot demonstrate that he is likely to succeed in his quest, the remaining factors
become matters of idle curiosity."
Air Line Pilots Ass'n, Int'l v. Guilford Transp. Indus., 399 F.3d 89 (1st Cir. 2005)
Laches bars assertion of a claim where a party's delay in bringing suit is unreasonable and results in prejudice to the opposing party
K-Mart Corp. v. Oriental Plaza, Inc., 875 F.2d 907 (1st Cir. 1989)
A trademark owner who fails to use a mark for three consecutive years may be deemed to have abandoned the mark. To rebut a prima facie showing of
abandonment, a purported trademark owner must demonstrate that it intends to resume use "in the reasonably foreseeable future. Conclusory testimony
will not suffice; the owner must show evidence of activities engaged in during the nonuse period that manifest intent to resume use.
General Healthcare Ltd. v. Qashat, 364 F.3d 332, 70 U.S.P.Q.2d (1st Cir. 2004)
The ordinary use of a descriptive mark for descriptive purposes will amount to fair use.
WCVB-TV v. Boston Athletic Ass'n., 926 F.2d 42, 17 U.S.P.Q.2d 1688 (1st Cir. 1991); Universal Comm. Systems, Inc. v. Lycos, Inc., 478 F.3d 413
(1st Cir. 2007) (the First Circuit has not decided whether to endorse the Ninth Circuit’s test for nominative fair use).
Purchase of trademarked keywords is a “use” for trademark purposes. Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274, 282 (D.
Mass. 2009) (use of trademark as a keyword trigger for sponsored links whose text did not contain plaintiff’s trademark is actionable for surviving a
motion to dismiss); see also Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205, 207 (D. Mass. 2007).
To establish contributory infringement, plaintiff must show that defendant intentionally induced the infringer to infringe plaintiff’s trademark or
continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement. Landrau v. Betancourt, 554 F.
Supp. 2d 114 (D.P.R. 2007).
The Federal Anti-Dilution Statute, 15 U.S.C. § 1125(c), “generally provides protection to the owner of a ‘famous mark’ from any use that ‘causes
dilution of the distinctive quality of the mark. Only a select number of marks, however, may qualify as ‘famous,’ and Congress intended the courts to
be ‘discriminating and selective in categorizing a mark as famous. As a result, the test of whether a mark has acquired fame is considered ‘more
rigorous’ and requires ‘a great deal more’ than the analysis employed to determine if secondary meaning exists.” If a plaintiff cannot show that its
mark is distinctive or has acquired secondary meaning, it cannot establish fame. Bay State Sav. Bank v. Baystate Financial Services, LLC, 484 F.
Supp. 2d 205, 218 (D. Mass. 2007) (quoting I.P. Lund Trading v. Kohler Co., 163 F.3d 27 (1st Cir. 1998)) (internal quotations omitted).
Attorney’s Fees: Fraud or bad faith may justify an attorneys' fees award in some cases, but a finding of bad faith or fraud is not a necessary
precondition. Willfulness short of bad faith or fraud will suffice when equitable considerations justify an award and the district court supportably finds
the case exceptional. Tamko Roofing Products, Inc. v. Ideal Roofing Co., Ltd., 282 F.3d 23, 61 U.S.P.Q.2d 1865 (1st Cir. 2002).
The First Circuit has not yet construed the criterion for awarding attorneys’ fees to a prevailing defendant in the context of the Lanham Act. Li v. Bose
Corp., 626 F.3d 116 (1st Cir. 2010).
Defendant’s Profits: If injunctive relief provides a complete and adequate remedy, then the equities of the case may not require an accounting of
profits. An award of defendant's profits is appropriate where the products directly compete, and plaintiff need not show fraud, bad faith, or palming
off. The court left undecided if the plaintiff must always show willfulness, but it did hold plaintiff must show willfulness if the reason for awarding the
profits is only to deter egregious conduct. Also, an award of defendant’s profits is appropriate even when the majority of the parties’ goods are not in
direct competition. Tamko Roofing Products, Inc. v. Ideal Roofing Co., Ltd., 282 F.3d 23, 61 U.S.P.Q.2d 1865 (1st Cir. 2002).
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
2nd CIRCUIT
SECONDARY
MEANING
“Distinctiveness in a mark is a characteristic quite different from fame. . . . The degree of distinctiveness of a mark governs in part the breadth of
protection it can command. At the low end are generic words – words that name the species or object to which the mark applies. These are totally
without distinctiveness and are ineligible for protection as marks because to give them protection would be to deprive competitors of the right to refer
to their products by name. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976) (Friendly, J.); Otakoyama Co. Ltd. v.
Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir. 1999) . . . . One rung up the ladder are “descriptive” marks – those that describe the product or
its attributes or claims. These also have little distinctiveness and accordingly are ineligible for protection unless they have acquired “secondary
meaning” – that is, unless the consuming public has come to associate the mark with the products or services of its user. See Abercrombie, 537 F.2d at
10.” Nabisco Inc. v. PF Brands Inc., 191 F.3d 208, 215, 51 U.S.P.Q.2d 1882 (2d Cir. 1999), overruled on other grounds by Moseley v. V Secret
Catalogue, Inc., 537 U.S. 418 (2003)
“A mark acquires secondary meaning when "it [is] shown that the primary significance of the term in the minds of the consuming public is not the
product but the producer." 20th Century Wear, Inc. v. Sanmark-Stardust Inc. 815 F.2d 8, 10 (2d Cir. 1987) (20th Century II) (quoting Ralston
Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133 (S.D.N.Y. 1972) (emphasis in original)). Thus, the crux of the doctrine of secondary
meaning "is that the mark comes to identify not only the goods but the source of those goods," even though the relevant consuming public might not
know the name of the producer. Id. ("Consumers often buy goods without knowing the personal identity or actual name of the [producer].").
Nonetheless, someone seeking to establish secondary meaning must show that the purchasing public associates goods designated by a particular mark
with but a single -- although anonymous -- source. Id.; cf. 3 R. Callmann, The Law of Unfair Competition Trademarks and Monopolies § 19.25, at
81-82 n. 7 (L. Altman 4th ed. 1983) (“Trademarks”) ("It suffices if consumers accept the trademark as an indication of origin."). The focus of
secondary meaning therefore is the consuming public. Hence, so must be the inquiry into whether the mark owner has a protectable interest. Although
the mark owner strives to create a secondary meaning for its product, it is the consuming public which, in effect, determines whether that effort has
succeeded. See Co-Rect Prods., Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 1985); Transgo, Inc. v. Ajac
Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985), cert. denied, 474 U.S. 1059, 106 S.Ct. 802, 88 L. Ed. 2d 778 (1986); Scott Paper Co.
v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). See also Madrigal Audio Laboratories, Inc. v. Cello, Ltd., 799 F.2d 814, 822 (2d
Cir. 1986) (same but involving trade name). Again, it is not always the general public's understanding but -- depending upon the product -- often only
a segment of consumers that need be examined. See Playboy Enters. V. Chuckleberry Publishing, Inc., 687 F.2d 563, 567 (2d Cir. 1982) (the
litigants' magazines appealed to the same consumer group -- heterosexual adult males); President & Trustees of Colby College v. Colby College-N.H.,
508 F.2d 804, 808 (1st Cir. 1975) (college could establish secondary meaning by showing "the congruence of its name and its institution in the minds
of an appreciable number of individuals broadly associated with other institutions of higher education in a given geographic area."); Inc. Publishing
Corp. v. Manhattan Magazine, Inc.,616 F. Supp. 370, 386 (S.D.N.Y. 1985), aff'd mem., 788 F.2d 3 (2d Cir. 1986) (relevant consumer group in
trademark case involving magazine titles comprised of advertisers, subscribers, and newsstand purchasers)…. Moreover, it is only necessary to show
that a substantial segment of the relevant group of consumers made the requisite association between the product and the producer. See Levi Strauss &
Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985) (en banc); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 381 (7th Cir.), cert.
denied, 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91 (1976) 3 R. Callmann, Trademarks, supra, § 19.26, at 86. ….
In Thompson Medical we collected the various precedents that discussed the question of secondary meaning, 753 F.2d at 217, and drew from them the
elements utilized in determining whether secondary meaning had been created, noting that "no 'single factor [was] determinative,' and [that] every
element need not be proved." Id. (quoting American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d Cir. 1979)). The elements are
1) advertising expenditures,
2) consumer studies linking the mark to a source,
3) unsolicited media coverage of the product,
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
4) sales success,
5) attempts to plagiarize the mark, and,
6) length and exclusivity of the mark's use.” Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1221-22 (2d Cir. 1987),
overruled on other grounds by Paddington Corp. v. Attiki Commc’ns vs. A/S/M Commc’ns, 830 F.2d 1217, 1222 (2d Cir. 1987).
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
"The strength of a mark refers to its ability to identify the source of the goods being sold under its aegis. See Nora Beverages, Inc. v. Perrier Group of
America, Inc., 269 F.3d 114, 123 (2d Cir. 2001). There are two components of a mark's strength: its inherent distinctiveness and the distinctiveness it
has acquired in the marketplace. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743-44 (2d Cir. 1998). The former, inherent
distinctiveness, examines a mark's theoretical potential to identify plaintiff's goods or services without regard to whether it has actually done so. The
latter, acquired distinctiveness, refers to something entirely different. This measure looks solely to that recognition plaintiff's mark has earned in the
marketplace as a designator of plaintiff's goods or services. See TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88, 97 (2d Cir. 2001).
...
Courts assess inherent distinctiveness by classifying a mark in one of four categories arranged in increasing order of inherent distinctiveness: (a)
generic, (b) descriptive, (c) suggestive, or (d) fanciful or arbitrary. Streetwise, 159 F.3d at 744; Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503,
1508 (2d Cir. 1997). A proper name such as Brennan's is descriptive because it does not by itself identify a product; however, if a name develops
secondary meaning, it may come to identify a product as originating from a single source. . . . The name of a person, therefore, like other descriptive
marks, is protectable only if it has acquired secondary meaning. Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 217 (2d Cir. 2003).
Brennan's, Inc. v. Brennan's Rest., 360 F.3d 125, 132 (2d Cir. 2004)
“Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity
between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of
defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.”
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495, 128 U.S.P.Q. 411, 413 (2d Cir. 1961)
“Internet initial interest confusion… arises when a consumer who searches for the plaintiff’s website with the aid of a search engine is directed instead
to the defendant’s site because of a similarity in the parties’ website addresses. . . . Because consumers diverted on the Internet can more readily get
back on track than those in actual space, thus minimizing the harm to the owner of the searched-for site from consumers becoming trapped in a
competing site, Internet initial interest confusion requires a showing of intentional deception.”
Savin Corp. v. Savin Group, 391 F.3d 439, 462 n. 13, 73 USPQ2d 1273, 1287 n.13 (2d Cir. 2004) (citations omitted)
“We recognize that in a trademark infringement action the kind of product, its cost and the conditions of purchase are important factors in considering
whether the degree of care exercised by the purchaser can eliminate the likelihood of confusion which would otherwise exist. We decline to hold,
however, that actual or potential confusion at the time of purchase necessarily must be demonstrated to establish trademark infringement under the
circumstances of this case.
The issue here is not the possibility that a purchaser would buy a Grotrian-Steinweg thinking it was actually a Steinway or that Grotrian had some
connection with Steinway and Sons. The harm to Steinway, rather, is the likelihood that a consumer, hearing the "Grotrian-Steinweg" name and
thinking it had some connection with "Steinway", would consider it on that basis. The "Grotrian-Steinweg" name therefore would attract potential
customers based on the reputation built up by Steinway in this country for many years. The harm to Steinway in short is the likelihood that potential
piano purchasers will think that there is some connection between the Grotrian-Steinweg and Steinway pianos. Such initial confusion works an injury
to Steinway.” Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (footnotes and citations
omitted)
“While the Second Circuit has not ruled on trademark use in metatags and the search engine context, it has expressly rejected the initial interest
confusion theory prior to a determination of trademark ‘use’.” Thus, “‘use’ must be decided as a threshold matter, because while any number of
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
PRELIMINARY
INJUNCTION
STANDARD
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
activities may be in ‘in commerce’ or create a likelihood of confusion, no such activity is actionable under the Lanham Act absent the ‘use’ of a
trademark.” S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188, 201 (E.D.N.Y. 2007) (relying upon 1-800 Contacts, Inc. v.
WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005)).
"[I]n order to obtain a preliminary injunction, a party must demonstrate probability of irreparable harm in the absence of injunctive relief, and either a
likelihood that it will succeed on the merits of its claim, or a serious question going to the merits and a balance of hardships tipping decidedly in its
favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979) (per curiam); Bristol-Myers Squibb Co. v. McNeil-P.P.C.,
Inc., 973 F.2d 1033, 1038 (2d Cir. 1992). . . . In an action for trademark infringement, where a mark merits protection, a showing that a significant
number of consumers are likely to be confused about the source of the goods identified by the allegedly infringing mark is generally sufficient to
demonstrate both irreparable harm and a likelihood of success on the merits. Bristol-Myers, 973 F.2d at 1038; W. Publ'g Co. v. Rose Art Indus., Inc.,
910 F.2d 57, 59 (2d Cir. 1990).” Virgin Enters. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003)
“The doctrine of laches often prevents a senior user from challenging a junior user’s activities even in the same market. Where the junior user operates
in a market separate though related to that of the senior user, the senior user’s right to preempt is a very slender thread indeed and is easily lost due to
delay.” Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 216-17 (2d Cir. 2003) (internal citations and quotations omitted).
“The party asserting abandonment bears the burden of persuasion with respect to two facts: (1) non-use of the mark by the legal owner, and (2) lack of
intent by that owner to resume use of the mark in the reasonably foreseeable future. The prima facie evidence of abandonment (of nonuse of the mark
for 3 consecutive years) under the Lanham Act means “a rebuttable presumption of abandonment.” A presumption “imposes on the party against
whom it is directed the burden of going forward with evidence to rebut or to meet the presumption, but does not shift to such party the burden of proof
in the sense of the risk of non-persuasion, which remains throughout the trial upon the party on whom it was originally cast.” This presumption shifts
“the burden of production to the mark owner to come forward with evidence indicating that, despite three years of non-use, it intended to resume use
of the mark within a reasonably foreseeable time.” ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 147-48 (2d Cir. 2007) (internal quotations and citations
omitted).
Assessment of the fair use defense “requires analysis of whether a given use was (1) other than as a mark, (2) in a descriptive sense, and (3) in good
faith. In making these assessments, the court focuses on the actual or proposed uses themselves. JA Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d
Cir. 2009) (quoting EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir. 2000) (internal quotations
omitted).
The use of a trademark as a keyword is considered a “use in commerce” within the meaning of the Lanham Act. Rescuecom Corp. v. Google Inc.,
562 F.3d 123 (2d Cir. 2009) (explaining that courts have gone too far and missapplied 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d
Cir. 2005)).
There is contributory infringement of trademarks, such as when a drug manufacturer could be held liable for the infringing actions of pharmacists who
purchased its products if the pharmacists should mislabel its products or if it sold its products “to retailers whom they knew or had reason to know
were engaging in infringing practices.” This may also be applied to landlords. Polo Ralph Lauren Corp. v. Chinatown Gift Shop, 855 F. Supp. 648,
650 (S.D.N.Y. 1994) (Quoting Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982)). See also Getty Petroleum Corp. v. Island Transp. Corp.,
878 F.2d 650 (2d Cir. 1989). See Tiffany Inc. v. eBay, Inc., 600 F.3d 93, 103-109 (2d Cir. April 1, 2010) (contributory infringement applies to service
providers).
To establish a violation of the Trademark Dilution Act, 15 U.S.C. § 1125(c), a plaintiff must show that: (1) its mark is famous, (2) the defendant is
making commercial use of the mark in commerce, (3) the defendant’s use began after the mark became famous, and (4) the defendant’s use of the
mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services. Louis Vuitton Malletier v.
Dooney & Bourke, Inc., 454 F.3d 108, 118 (2d Cir. 2006); see also S&L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y.
2007.) See Fendi Adele S.R.L. v. Filene's Basement, Inc., 696 F. Supp. 2d 368, 390 (SDNY March 2010)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
DAMAGES
“Section 35(a) of the Lanham Act generally provides that a successful plaintiff under the act shall be entitled, "subject to the principles of equity, to
recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) costs of the action." 15 U.S.C. § 1117(a). Clearly, the statute's
invocation of equitable principles as guideposts in the assessment of monetary relief vests the district court with some degree of discretion in shaping
that relief. . . .
For example, it is well settled that in order for a Lanham Act plaintiff to receive an award of damages the plaintiff must prove either "'actual consumer
confusion or deception resulting from the violation,'" Getty Petroleum Corp. v. Island Transportation Corp., 878 F.2d 650, 655 (2d Cir. 1989)
(quoting PPX Enterprises, Inc. v. Audiofidelity Enterprises, Inc., 818 F.2d 266, 271 (2d Cir. 1987)), or that the defendant's actions were intentionally
deceptive thus giving rise to a rebuttable presumption of consumer confusion. See Resource Developers, Inc. v. Statue of Liberty-Ellis Island
Foundation, Inc., 926 F.2d 134, 140 (2d Cir. 1991); PPX Enterprises, 818 F.2d at 273. . . .
The rule in this circuit has been that an accounting for profits is normally available "only if the 'defendant is unjustly enriched, if the plaintiff sustained
damages from the infringement, or if the accounting is necessary to deter a willful infringer from doing so again.'" Burndy Corp. v. Teledyne
Industries, Inc., 748 F.2d 767, 772 (2d Cir. 1984) (quoting W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 664 (2d Cir. 1970)). Courts have
interpreted the rule to describe three categorically distinct rationales. See e.g., Cuisinarts, Inc. v. Robot-Coupe Intern. Corp., 580 F. Supp. 634, 637
(S.D.N.Y. 1984) ("These justifications are stated in the disjunctive. Any one will do.").
Thus, the fact that willfulness expressly defines the third rationale (deterrence) may suggest that the element of intentional misconduct is unnecessary
in order to require an accounting based upon a theory of unjust enrichment or damages. However, the broad language contained in Burndy Corp. and
W.E. Bassett Co. is in no way dispositive on this point. Indeed, a closer investigation into the law's historical development strongly supports our
present conclusion that, under any theory, a finding of defendant's willful deceptiveness is a prerequisite for awarding profits.. . .
Thus, a defendant who is liable in a trademark or trade dress infringement action may be deemed to hold its profits in constructive trust for the injured
plaintiff. However, this results only "when the defendant's sales 'were attributable to its infringing use' of the plaintiff's" mark, Burndy Corp., 748 F.2d
at 772 (quoting W.E. Bassett Co., 435 F.2d at 664), and when the infringing use was at the plaintiff's expense. Id. at 773. In other words, a defendant
becomes accountable for its profits when the plaintiff can show that, were it not for defendant's infringement, the defendant's sales would otherwise
have gone to the plaintiff. Id. at 772.
At bottom, this is simply another way of formulating the element of consumer confusion required to justify a damage award under the Lanham Act. As
such, it follows that a profits award, premised upon a theory of unjust enrichment, requires a showing of actual consumer confusion--or at least proof
of deceptive intent so as to raise the rebuttable presumption of consumer confusion. See Resource Developers, 926 F.2d at 140; PPX Enterprises, 818
F.2d at 273.
Moreover, the doctrine of constructive trust has traditionally been invoked to defeat those gains accrued by wrongdoers as a result of fraud. See
Latham v. Father Divine, 299 N.Y. 22, 26-27, 85 N.E.2d 168, 170 (1949) ("A constructive trust will be erected whenever necessary to satisfy the
demands of justice. . . . Its applicability is limited only by the inventiveness of men who find new ways to enrich themselves by grasping what should
not belong to them."); Restatement of Restitution, § 160 cmt. d (1937); cf Robert Stigwood Group Ltd. v. O'Reilly, 530 F.2d 1096, 1100-1101 & n.9
(2d Cir.), cert. denied, 429 U.S. 848, 50 L. Ed. 2d 121, 97 S. Ct. 135 (1976) (recognizing that imposition of a constructive trust over defendant's profits
may be an available remedy for willful copyright infringement).
The rationale underlying the Supreme Court's holding in Hamilton Shoe Co. reflects this purpose. There, the Court upheld a profits award for
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
trademark infringement where the "imitation of complainant's mark was fraudulent, [and] the profits included in the decree [were] confined to such as
accrued to the defendant through its persistence in the unlawful simulation. . . ." 240 U.S. at 261. Thus, it would seem that for the defendant's
enrichment to be "unjust" in terms of warranting an accounting, it must be the fruit of willful deception. See El Greco Leather Products Co. v. Shoe
World Inc., 726 F. Supp. 25, 29-30 (E.D.N.Y. 1989).
Historically, an award of defendant's profits has also served as a rough proxy measure of plaintiff's damages. Champion Plug Co. v. Sanders, 331 U.S.
125, 131, 91 L. Ed. 1386, 67 S. Ct. 1136 (1947); Mishawaka Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206, 86 L. Ed. 1381, 62 S. Ct. 1022 (1942);
[Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240 U.S. 251, 259, 60 L. Ed. 629, 36 S. Ct. 269 (1916)]; see also, Restatement (Third) of Unfair
Competition § 37 cmt. b (Tent. Draft No.3, 1991) ("Restatement"). Due to the inherent difficulty in isolating the causation behind diverted sales and
injured reputation, damages from trademark or trade dress infringement are often hard to establish.
Recognizing this, the Supreme Court has stated that, "infringement and damage having been found, the Act requires the trademark owner to prove only
the sales of articles bearing the infringing mark." Mishawaka Mfg. Co., 316 U.S. at 206.
Under this rule, profits from defendant's proven sales are awarded to the plaintiff unless the defendant can show "that the infringement had no
relationship" to those earnings. Id. This shifts the burden of proving economic injury off the innocent party, and places the hardship of disproving
economic gain onto the infringer. Of course, this "does not stand for the proposition that an accounting will be ordered merely because there has been
an infringement." Champion Plug Co., 331 U.S. at 131. Rather, in order to award profits there must first he "a basis for finding damage." Id.;
Mishawaka Mfg. Co., 316 U.S. at 206. While a plaintiff who seeks the defendant's profits may be relieved of certain evidentiary requirements
otherwise carried by those trying to prove damages, a plaintiff must nevertheless establish its general right to damages before defendant's profits are
recoverable.
Thus, under the "damage" theory of profits, a plaintiff typically has been required to show consumer confusion resulting from the infringement. Cf.
Perfect Fit Indus., Inc. v. Acme Quilting Co., 618 F.2d 950, 955 (2d Cir.), cert. denied, 459 U.S. 832, 74 L. Ed. 2d 71, 103 S. Ct. 73 (1980) (New
York law of unfair competition); G.H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499, 501 (2d Cir.), cert. denied, 323 U.S. 715, 65 S. Ct.
41, 89 L. Ed. 575 (1944) (L. Hand, J.). Whether a plaintiff also had to show willfully deceptive conduct on the part of the defendant is not so clear.
While some courts "rejected good faith as a defense to an accounting for profits," Burger King Corp. v. Mason, 855 F.2d 779, 781 (11th Cir. 1988)
(citing Wolfe v. National Lead Co., 272 F.2d 867, 871 (9th Cir. 1959), cert. denied, 362 U.S. 950, 4 L. Ed. 2d 868, 80 S. Ct. 860 (1960)), others have
concluded that a defendant's bad faith is the touchstone of accounting liability. Cf. Champion Plug Co., 331 U.S. at 131 (accounting was unavailable
where "there had been no showing of fraud or palming off"); Carl Zeiss Stiftung v. Veb Carl Zeiss Jena, 433 F.2d 686, 706-08 (2d Cir. 1970)
(discussing monetary awards which are inclusive of both damages and profits).
Deterrence: Finally, we have held that a court may award a defendant's profits solely upon a finding that the defendant fraudulently used the plaintiff's
mark. See Monsanto Chemical Co. v. Perfect Fit Mfg. Co., 349 F.2d 389, 396 (2d Cir. 1965), cert. denied, 383 U.S. 942, 86 S. Ct. 1195, 16 L. Ed. 2d
206 (1966). The rationale underlying this holding is not compensatory in nature, but rather seeks to protect the public at large. By awarding the profits
of a bad faith infringer to the rightful owner of a mark, we promote the secondary effect of deterring public fraud regarding the source and quality of
consumer goods and services. Id.; Bassett Co., 435 F.2d at 664.. . .
We agree with the position set forth in § 37 of the Restatement and therefore hold that, under § 35(a) of the Lanham Act, a plaintiff must prove that an
infringer acted with willful deception before the infringer's profits are recoverable by way of an accounting. Along with the Restatement's drafters, we
believe that this requirement is necessary to avoid the conceivably draconian impact that a profits remedy might have in some cases. While damages
directly measure the plaintiff's loss, defendant's profits measure the defendant's gain. Thus, an accounting may overcompensate for a plaintiff's actual
injury and create a windfall judgment at the defendant's expense. See Restatement, § 37 at cmt. e. Of course, this is not to be confused with plaintiff's
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
lost profits, which have been traditionally compensable as an element of plaintiff's damages.
So as to limit what may be an undue windfall to the plaintiff, and prevent the potentially inequitable treatment of an "innocent" or "good faith"
infringer, most courts require proof of intentional misconduct before allowing a plaintiff to recover the defendant's profits. Id.; see also Alpo Petfoods,
Inc. v. Ralston Purina Co., 913 F.2d 958, 968 (D.C. Cir. 1990); Frisk's Restaurants, Inc. v. Elby's Big Boy, 849 F.2d 1012, 1015 (6th Cir. 1988);
Schroder v. Lolitio, 747 F.2d 801, 802 (1st Cir. 1984) (per curiam) (applying Rhode Island law). We underscore that in the absence of such a showing,
a plaintiff is not foreclosed from receiving monetary relief. Upon proof of actual consumer confusion, a plaintiff may still obtain damages--which, in
turn, may be inclusive of plaintiff's own lost profits. See Getty Petroleum Corp., 878 F.2d at 655.
George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1536-40 (2d Cir. 1992)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
3rd CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
The Third Circuit has identified an eleven-item, non-exhaustive list of factors relevant to the factual determination whether a term has acquired
secondary meaning:
(1) the extent of sales and advertising leading to buyer association;
(2) length of use;
(3) exclusivity of use;
(4) the fact of copying;
(5) customer surveys;
(6) customer testimony;
(7) the use of the mark in trade journals;
(8) the size of the company;
(9) the number of sales;
(10) the number of customers; and,
(11) actual confusion.
E.T. Browne Drug Co. v. Cococare Prods., 538 F.3d 185, 199 (3d Cir. 2008)
(1) strength of the mark;
(2) degree of similarity between the marks;
(3) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(4) length of time defendant has used the mark without actual confusion;
(5) intent of defendant in adopting the mark;
(6) evidence of actual confusion;
(7) whether the goods are marketed and advertised through the same trade channels;
(8) extent to which the targets of the parties' sales efforts are the same;
(9) relationship of the goods in the minds of the consumers because of the similarity of functions and
(10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market or that he is
likely to expand into that market list is not determinative and each factor must be weighed and balanced against one another
Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3rd Cir. 1983)
B. For competing goods, samefactors apply with modifications tofactors 7, 9 and 10 listed above in Lapp.
A.H. Sportswear, Inc. v. Victoria's Secret Stores., 237 F.3d 198 (3rd Cir.2000)
Initial interest confusion "is an independently sufficient theory that may be used to prove likelihood of confusion. Another type of confusion, alleged
in most Lanham Act cases, is point-of-sale confusion, which occurs or remains at the time of purchase. Whether a plaintiff alleges initial interest or
point-of-sale confusion or both, a district court should employ the factors we announced in Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983),
to decide whether there is likelihood of confusion. McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 357-58 (3d Cir. 2007)
Four factors are considered in determining whether to grant a preliminary injunction: (1) whether the movant has a reasonable probability of success
on the merits; (2) whether the movant will be irreparably harmed by denying the injunction; (3) whether there will be greater harm to the nonmoving
party if the injunction is granted; and (4) whether granting the injunction is in the public interest. Highmark, Inc. v. UPMC Health Plan, Inc., 276
F.3d 160, 170-71 (3d Cir. 2001).
(1) the likelihood that the moving party will succeed on the merits;
(2) the extent to which the moving party will suffer irreparable harm without injunctive relief;
(3) the extent to which the nonmoving party will suffer irreparable harm if the injunction is issued; and
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
DAMAGES
(4) the public interest.
Liberty Lincoln-Mercury, Inc. v. Ford Motor Co., 562 F.3d 553, 556 (3d Cir. 2009)
Laches consists of (1) inexcusable delay in instituting suit and (2) prejudice resulting to the defendant from such delay. Laches in effect works an
equitable estoppel barring all relief and requires a showing of both delay and prejudice. Where "'plaintiff sleeps on his rights for a period of time grater
than the applicable statute of limitations,' the burden of proof shifts to the plaintiff to prove the absence of such prejudice to the defendant as would bar
all relief." University of Pittsburgh v. Champion Prods. Inc., 686 F.2d 1040, 1045-49 (3d Cir. 1982).
(1)
inexcusable delay in bringing suit; and
(2)
prejudice to the defendant as a result of the delay.
Santana Prods. v. Bobrick Washroom Equip., Inc., 401 F.3d 123 (3d Cir. 2005)
"The Lanham Act expressly provides how ownership may be divested through abandonment, see 15 U.S.c. § 1127 ..." Abandonment must be
strictly proved. Doeblers' Pennsylvania Hybrids, Inc. v. Doebler, III, 442 F.3d 812,826 (3d Cir. 2006).
The Third Circuit departs from the Ninth Circuit's division offair use into two different types (nominative vs. classic fair use). Instead, in either
situation, the plaintiff must still prove likelihood of confusion, although there is a modified likelihood of confusion test for nominative fair use cases.
For nominative fair use cases, the plaintiff must (1) first prove that confusion is likely due to defendant's use of the mark ("because our traditional
likelihood of confusion test does not apply neatly to nominative fair use cases, we suggest eliminating those factors used to establish confusion in other
trademark infringement cases that do not 'fit' in the nominative use context") and, (2) to demonstrate fairness, the defendant must show (i) that the use
of the mark is necessary to describe both the plaintiffs product/service and the defendant's product/service; (ii) that the defendant uses only so much
of the plaintiffs mark as is necessary to describe plaintiffs product; and (iii) that the defendant's conduct or language reflect the true and accurate
relationship between plaintiff and defendant's products/services. Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 219-22 (3d Cir.
2005) (discussing KP Permanent Make-Up, Inc. v. Lasting Impression 1, Inc., 543 U.S. III (2004) (likelihood of confusion test should still be
considered when considering classic fair use)).
Participation in Google's AdWords program and incorporation of a mark in keyword meta tags constitutes trademark use under the Lanham Act. J.G.
Wentworth, S.S.c. L.P. v. Settlement Funding LLC, No. 06-0596,2007 WL 30115 (E.D.Pa. Jan. 4, 2007) (but the court ultimately found no actionable
likelihood of confusion).
Four factors are considered in determining whether to grant a preliminary injunction: (1) whether the movant has a reasonable probability of success
on the merits; (2) whether the movant will be irreparably harmed by denying the injunction; (3) whether there will be greater harm to the nonmoving
party if the injunction is granted; and (4) whether granting the injunction is in the public interest. Highmark, Inc. v. UPMC Health Plan, Inc., 276
F.3d 160, 170-71 (3d Cir. 2001).
To establish a violation under the Trademark Dilution Revision Act of 2006, a plaintiff must show that:
(l) its mark is famous;
(2) the defendant is making use of the mark in commerce;
(3) the defendant's use began after the mark became famous; (3) the defendant's use began after the plaintiffs mark became famous; and
(4) the defendant's use is likely to cause dilution by tarnishment or dilution by blurring.
"A mark is only famous for dilution purposes if the mark is widely recognized by the general consuming public of the United States. In other words, a
mark that is famous only in 'niche' markets is not protected under the FDRA." Haynes Int'l, Inc. v. Electralloy, No. 04- 197E, 2009 WL 789918
(W.D. Pa. March 24, 2009)
Plaintiff is entitled to, under the principles of equity and other applicable provisions of the Lanham Act, to recover defendant's profits, any damages
sustained by the plaintiff and the costs of the action Owner of the mark has the burden of proving that lost profits are attributable to unlawful use of the
mark. Willful infringement is an important factor when determining an accounting of profits is permissible Gucci America, Inc. v. Duffy's Inc., 354
F.3d 228 (3rd Cir. 2003) Willful infringement is not a prerequisite to an accounting of the infringer's profits.
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
Factors include, but are not limited to:
(1)
(2)
(3)
(4)
(5)
(6)
whether the defendant had the intent to confuse or deceive;
whether sales have been diverted;
the adequacy of other remedies;
any unreasonable delay by the plaintiff in asserting his rights;
the public interest in making the misconduct unprofitable; and
whether it is a case of palming off.
There is no requirement that the defendant's profits approximate the plaintiff's damages. 15 U.S.C.S. § 1117(a) permits a plaintiff to recover damages
subject to the principles of equity, defendant's profits, any damages sustained by the plaintiff, and the costs of the action. An accounting of the
infringer's profits is available if the defendant is unjustly enriched, if the plaintiff sustained damages, or if an accounting is necessary to deter
infringement. These rationales are stated disjunctively; any one will do.
Where records are inadequate to assess specific damages, yet plaintiff has been injured and liability is clear, it is enough if the evidence adduced is
sufficient to enable a court or jury to make a fair and reasonable approximation. The rule permitting estimated damages in the face of uncertainty as to
the amount of damages is sustained where, from the nature of the case, the extent of injury and the amount of damage are not capable of exact and
accurate proof.
FAMOUS MARK
Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir. 2005)
Under 15 U.S.C. § 1125(c)(2)(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, including the following:
(1) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third
parties.
(2) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(3) The extent of actual recognition of the mark.
This is a rigorous standard, as it extends protection only to highly distinctive marks that are well-known throughout the country.
Green v. Fornario, 486 F.3d 100, 105 (3d Cir. Pa. 2007)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
4th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
LACHES
1) advertising expenditures;
2) consumer studies linking the mark to a source;
3) sales success;
4) unsolicited media coverage;
5) attempts to plagiarize mark; 6) length and exclusivity of mark’s use
no single factor is determinative, above factors are all “relevant to the question of secondary meaning”
Perini Corp. v. Perini Construction, 915 F.2d 121 (4th Cir. 1990).
A. presumption of likelihood of confusion where the intentional copying is motivated by an “attempt to exploit the good will created by an already
registered trademark”
Amp, Inc. v. Foy, 540 F.2d 1181 (4th Cir. 1976). See also Osem Food Indus. v. Sherwood Foods Inc., 917 F.2d 161 (4th Cir. 1990) and Polo
Fashions, Inc. v. Craftex, Inc., 816 F.2d 145 (4th Cir. 1987)
B. No intent to exploit the good will, must prove without the benefit of the presumption through a series of factors in traditional likelihood of
confusion analysis such as
1) strength or distinctiveness of the mark;
2) similarity of the two marks;
3) similarity of the goods and services which the marks identify;
4) similarity of the facilities used by the parties in conducting their business;
5) similarity of the advertising used by the parties;
6) defendant’s intent in using the mark;
7) actual confusion;
8) the proximity of the products as they are actually sold;
9) probability that the senior owner will “bridge the gap” by entering the defendant’s market;
10) the quality of the defendant’s product in relationship to the quality of the senior mark and owner’s product;
11) sophistication of consumer
list is neither exhaustive nor exclusive, factors should be tailored to the factual circumstances of each case
Perini Corp. v. Perini Const., Inc, 915 F.2d 121 (4th Cir. 1990);
Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984)
The Fourth Circuit has not adopted the initial interest confusion theory. Instead, it follows “a very different mode of analysis, requiring courts to
determine whether a likelihood of confusion exists by ‘examining the allegedly infringing use in context in which it is seen by the ordinary
consumer.’” Lamparello v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005) (quoting Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 319 (4th
Cir. 1992).
1) likelihood of irreparable harm;
2) likelihood of harm to the defendant if required relief is granted;
3) likelihood that plaintiff will succeed on the merits and
4) public interest
Blackwelder Furniture Co. v. Seilig Mfg. Co., 550 F.2d 189, 196 (4th Cir. 1977)
1) whether the owner of the mark knew of the infringing use and
2) whether the owner’s delay in challenging the infringement was unexcusable or unreasonable;
3) whether the infringing user was unduly prejudiced by the trademark owner’s delay
Brittingham v. Jenkins, 914 F.2d 447, 456 (4th Cir. 1990)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
DAMAGES
Defense established by either:
1) Plaintiff’s non-use of the mark and 2) plaintiff’s lack of intent to resume use of the mark in the “reasonably foreseeable future”
or
If defendant can show that plaintiff has not used the mark in at least 3 consecutive years, this fact alone constitutes prima facie evidence of
abandonment” and creates a “presumption” or “mandatory inference of intent not to resume use.”
Emergency One, Inc., v. American Fireeagle Ltd., 228 F.3d 531, 536 (4th Cir. 2000)
Infringer or defendant must prove that the words are used in their ordinary meaning and not in a special, trademark meaning
Term is descriptive of and used fairly and in good faith to describe the goods or services to users
CHAR1\835410v1v. Silstar Corporation of America, 110 F.3d 234 (4th Cir. 1997)
Allowed as an affirmative defense despite a likelihood of confusion finding and burden to establish likelihood of confusion rests with plaintiff
KP Permanent Make Up, Inc. v. Lasting Impression I, Inc., 125 S.Ct 542 (2004)
Use of mark as keyword constitutes “use in commerce.” Advertisements that appear when a user searches on a trademark and reference such mark in
their headings or text may violate the Lanham Act. However, where such mark does not appear in the headings or text, then no likelihood of
confusion. Government Employees Insurance Co. v. Google, Inc., No. 1:04cv507, 2005 WL 1903128 (E.D. Va. 2005)
To be liable for contributory trademark infringement, a defendant must (1) intentionally induce another to infringe a trademark, or (2) continue to
supply a product to a third party with actual or constructive knowledge of the infringement. Size, Inc. v. Network Solutions, Inc., 255 F. Supp. 2d 568
(E.D. Va. 2003) (relying upon Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982)). Vicarious liability can occur if there is a principal-agent
relationship or if the defendant and the infringer exercise joint ownership and control over the infringing product. Government Employees Insurance
Co. v. Google, Inc., 330 F. Supp. 2d 700, 705 (E.D. Va. 2004)
To state a dilution claim under the Trademark Dilution Revision Act of 2006, a plaintiff must show:
(1) that the plaintiff owns a famous mark that is distinctive;
(2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark;
(3) that a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks; and
(4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
“In the context of blurring, distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling
power.” “In proving a dilution claim under the TDRA, the plaintiff need not show actual or likely confusion, the presence of competition, or actual
economic injury.” However, the TDRA also creates 3 defenses: (1) fair use (with exceptions); (2) news reporting and news commentary; and (3)
noncommercial use. While a parody is not automatically a complete defense to a claim of dilution by blurring where defendant uses the party as its
own trademark, the defendant’s use of a mark as a parody is still “relevant to the overall question of whether the defendant’s use is likely to impair the
famous mark’s distinctiveness.” Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264-67 (4th Cir. 2007).
Plaintiff must prove both the fact and the amount of damage.
Measure by direct injury to which plaintiff can prove in addition to lost profits plaintiff would have earned but for the trademark infringement
Monetary remedies include an award of defendant’s profits, any damages sustained by the plaintiff and costs of the action limited by equitable
considerations
Treble damages permitted in appropriate circumstances
Tommy Larsen v. Terk Techs Corp., 151 F.3d 140 (4th Cir. 1998)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
5th CIRCUIT
SECONDARY
MEANING
To establish secondary meaning, a plaintiff must present:
1) survey evidence (most “direct and persuasive evidence” of secondary meaning)
2) length and manner of the use of the mark;
3) nature and extent of advertising and promotion of the mark;
4) sales volume of the product and
5) instances of actual confusion
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
Survey evidence is the most direct and persuasive way to establish secondary meaning. Amazing Spares Inc vMetro Mini Storage 608 F3d 225, 248
(5th Cir 2010)
Pebble Beach Co. v. Tour 181 I. Ltd., 155 F.3d 526 (5th Cir. 1998); Test Masters Educ. Servs. v. Singh, Case No. 01-20659, 2002 U.S. App. LEXIS
28195, at *7-8 (“The holder of a descriptive mark has priority over another's use of a similar mark only in the area in which secondary meaning has
been established.”)
To establish likelihood of confusion, a plaintiff must present:
1) type of mark allegedly infringed;
2) similarity between the marks;
3)similarity of products or services;
4)identity of the retail outlets and purchasers;
5) identity of the advertising media used;
6) defendant’s intent and
7) any evidence of actual confusion
8) care exercised by potential purchasers
list of factors is non-exhaustive
Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009)
Note , if likelihood of confusion analysis is closely balanced, it is resolved in favor or senior user. Am. Century Proprietary Holdings v Am. Century
Cas. Co, 295 Fed Appx 630, 635 (5th Cir 2008)
Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)
No single factor is dispositive and standard does not require a positive finding on a majority of these
“digits of confusion” Conan Properties, Inc. v. Conan Pizza, Inc., 752 F.2d 145 (5th Cir. 1985).
Actionable under the Lanham Act in this circuit under Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)
- instead of actual confusion may establish initial interest confusion;
- gives junior user credibility during early stages of transaction; can bar senior user from consideration by consumer even though consumer is no
longer confused after initial encounter
- bring patrons to the door with initial interest who may stay or make a purchase thus defendant benefits (actual sale not required though )
To be awarded an injunction, a plaintiff must prove:
1) substantial likelihood of success on the merits;
2) substantial threat that plaintiff will suffer irreparable harm injury if the injunction is denied
3) threatened injury outweighs any damage that the injunction might cause defendants and
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
DAMAGES
4) the injunction will not disserve public interest
The Southern Company v Dauben 324 Fed Appx 309, 348 (5th Cir, 2009)
Sugar Busters LLC, v. Brennan, 177 F.3d 258 (5th Cir. 1999)
To assert a laches defense, the defendant must prove:
1) delay in asserting trademark rights;
2) lack of excuse for the delay and
3) undue prejudice to alleged infringer caused by the delay.
Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 489-90 (5th Cir. 2008)
Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 181, 205 (5th Cir. 1998)
Plaintiff must establish that the owner of the mark both: 1) discontinued use and
2) intended not to resume use.
Nonuse for two (2) consecutive years is prima facie evidence of abandonment.
Burden is on party claiming abandonment
Vais Arms Inc., v. George Vais, 383 F.3d 287 (5th Cir. 2004)
Party can assert Defense of good faith use to describe its goods or services, but only in actions involving descriptive terms and only when the term is
used in its descriptive sense rather than trademark sense.
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) but see KP Permanent Make-up Inc v Lasting impression I Inc 543 US
111, 116 (2004) Allowed as an affirmative defense despite a likelihood of confusion finding and burden to establish likelihood of confusion rests with
plaintiff .
The right of fair use is limited, however, only to such use as necessary to identify product or service and not be one that creates a likelihood of
confusion as to source, sponsorship, affiliation, or approval. Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 488 (5th Cir. 2008)
The Fifth Circuit Court has yet to address this issue. However, a Fifth Circuit District Court – Mary Kay, Inc. v. Weber, 601 F. Supp. 2d 839, 856
(N.D. Tex. 2009) – has accepted the holding of Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 499 (S.D.N.Y. 2008), which held that “the use of a
trademark in keywords and metatags, where the use is strictly internal and not communicated to the public, does not constitute ‘use’ under the Lanham
Act and thus does not support a Lanham Act claim.” Accordingly, “[the] internal use of the mark . . . as a key word to trigger the display of sponsored
links is not use of the mark in a trademark sense[.]” Tiffany Inc., 576 F. Supp. 2d at 500. As such, “[t]he critical question is whether the
advertisement suggests affiliation or endorsement.” Mary Kay, Inc., 601 F. Supp. 2d at 856.
To prove contributory infringement, Plaintiff must show that “the seller had constructive knowledge of the fact that its product was used to make
unauthorized copies of copyrighted material.” Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255, 262 (5th Cir. 1988). However, it must be noted
that a product does not constitute contributory infringement if the product is capable of substantial non-infringing uses..
Plaintiff must show that:
1) its mark is "famous and distinctive;"
2) that defendant adopted its mark after plaintiff’s had become "famous and distinctive;" and that defendant caused dilution of mark
Advantage Rent-A-Car v. Enterprise Rent-A-Car, 238 F.3d 378 (5th Cir. 2001); Alpha Kappa Alpha Sorority, Inc. v. Converse Inc., 175 Fed. Appx.
672, 682 (5th Cir. 2006); see also 15 U.S.C. § 1125(c)
Plaintiff need not prove actual economic harm. Moseley v. Secret Catalogue, 537 US 418 (2003) reviewing the FTDA required actual dilution and not
likelihood of dilution. FDTA was amended Oct 6, 2006 and entitles the owner of a famous mark to injunctive relief based upon “likely to cause
dilution” standard. 15 USC Sec 1125 (c) (1); Starbucks Corp v Wolfe’s Borough Coffee Inc 477 F 3d 765, 766 (2Cir 2007)
Plaintiff, subject to the principles of equity, is entitled to recover defendant’s profits, any damages sustained by the plaintiff and the costs of the action.
In exceptional cases, court may award attorney fees to prevailing party.
15 U.S.C. § 1117(a)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
List of factors in determining whether to grant an award of Defendant’s gross profits:
1) whether the defendant had the intent to confuse or deceive;
2) whether sales have been diverted
3) adequacy of other remedies
4) any unreasonable delay by plaintiff in asserting rights
5) the public interest in making the misconduct unprofitable and
6) whether it is a case of palming off
Blendo, Inc. v. Conagra Foods, Inc., 132 Fed. Appx. 520 (5th Cir. 2005); Rolex Watch USA, Inc., v. Robert Meece, 158 F.3d 816 (5th Cir. 1998)
Kiva Kitchen & Bath Inc v Capital Distrib 2007 US Dist LEXIS 70496 @7
The Act allows Defendants profits to be determined based upon gross sales made by Defendant. American Rice Inc v Producers Rice Mill Inc. 518
F3d 321 (5th Cir 2008)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
6th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
In order to establish secondary meaning, a plaintiff must present:
1) direct consumer testimony;
2) consumer surveys;
3) exclusivity, length and manner of use;
4) amount and manner of advertising;
5) amount of sales and number of customers;
6) established place in the market and
7) proof of intentional copying
Tumblebus Inc., v. Cranmer, 399 F.3d 754 (6th Cir. 2005)
To establish likelihood of confusion, a plaintiff must present:
1) strength of mark;
2) similarity between the marks;
3) relatedness of goods;
4) marketing channels used;
5) likely degree of purchaser care;
6) defendant’s intent in selecting the mark;
7) evidence of actual confusion and
8)likelihood of expansion of product line
Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619 (6th Cir. 2000). These factors need not be examined with “mathematical precision.”
If the parties compete directly, confusion is likely if the marks are sufficiently similar.
If the goods and services are somewhat related, but not competitive, then the likelihood of confusion will turn on other factors.
If the products are unrelated, confusion is highly unlikely.
Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 616 (6th Cir. 2003)
Actionable under the Lanham Act in this circuit under Audi AG v. D'Amato, 469 F.3d 534 (6th Cir. 2006)
- instead of actual confusion may establish initial interest confusion
- gives junior user credibility during early stages of transaction
-can bar senior user from consideration by consumer even though consumer is no longer confused after initial encounter
- bring patrons to the door with initial interest who may stay or make a purchase thus defendant benefits (actual sale not required though )
To be awarded an injunction, a plaintiff must prove:
1) strong likelihood of success on the merits;
2) whether movant would suffer irreparable injury without injunction;
3) issuance of injunction would cause substantial harm to others threatened injury outweighs any damage that the injunction might cause defendants
and
4) public interest served by issuance of injunction
Tumblebus Inc., v. Cranmer, 399 F.3d 754 (6th Cir. 2005)
Post-eBay: Dominic’s Rest. of Dayton, Inc. v. Mantia, 2009 U.S. Dist. LEXIS 59310 (S.D. Ohio June 24, 2009) (finding presumption of irreparable
harm where finding of likelihood of confusion or possible risk to reputation)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
PERMANENT
INJUNCTION
STANDARD
A plaintiff seeking a permanent injunction must demonstrate:
1) that it has suffered irreparable injury;
2) there is no adequate remedy at law;
3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
4) that it is in the public’s interest to issue the injunction.
Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006) citing eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
Post-eBay: Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 700 (W.D. Ky. 2010) (irreparable injury generally presumed
from a showing of success on the merits of a trademark infringement claim considering permanent injunctive relief)
To be asserted as a defense, laches requires:
1) lack of diligence by the party against whom defense is sought and
2) prejudice to party asserting it
GMC v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006); Induct-O-Matic Corp., v. Inductotherm Corp., 747 F.2d 358, 366 (6th Cir. 1984)
Plaintiff’s delay in asserting rights is reasonable as long as an analogous statute of limitations has not elapsed (for trademarks, look to injury to
personal property statutes) Elvis Presley Enterprises, Inc. v Elvisly Yours, Inc., 936 F.2d 889 (6th Cir. 1991)
Plaintiff must establish other party actively abandoned mark through non-use and intended to do so
or 3 years of non-consecutive use under statute
Kellogg Company v. Exxon Corporation, 209 F.3d 562 (6th Cir. 2000) for issue of abandonment. Other issues in case have received negative
treatment or been distinguished
Defense allows party to use a protected mark to describe aspect of their own goods, although Defendant must use mark in its descriptive sense and in
good faith.
Herman Miller Inc. v. Palazzetti Imps., & Exps., Inc., 270 F.3d 298 (6th Cir. 2001)
Allowed as an affirmative defense despite a likelihood of confusion finding and burden to establish likelihood of confusion rests with plaintiff
KP Permanent Make Up, Inc. v. Lasting Impression I, Inc., 125 S.Ct 542 (2004)
The Sixth Circuit Court has yet to identify a specific test for “internet keyword” infringement. However, the law is developing slowly at the district
level. For example, in Tdata Inc. v. Aircraft Tech. Publrs., 411 F. Supp. 2d 901 (S.D. Ohio 2006), the court used the standard eight factors test – (1)
the strength of the plaintiff's mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion (or initial-interest
confusion in this context); (5) marketing channels used; (6) likely degree of purchaser care; (7) the defendant's intent in selecting the mark; and (8)
likelihood of expansion of the product lines –to decide a “key word” case, but replaced the “actual confusion” with “initial-interest confusion.” Also,
in Johnny's Fine Foods, Inc. v. Johnny's Inc., 286 F. Supp. 2d 876 (M.D. Tenn. 2003), the court held: “The deceptive use of another company's
trademark as a metatag, in order to lure a surfer into a competitor's website constitutes impermissible trademark infringement. However, the fact that
the use of a mark in a domain name is likely to cause confusion does not automatically mean that its use as a metatag is likely to cause such confusion.
Rather, the Court must determine how likely it is that a potential consumer will be confused by retrieving a list containing both parties' websites after
searching for the keyword” Id. at 890.
To prove contributory infringement, a plaintiff must prove:
1) direct copyright infringement by a third-party;
2) knowledge by the defendant that the third-party was directly infringing; and
3) defendant's material contribution to the infringement."
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
DILUTION
DAMAGES
NCR Corp. v. Korala Assocs., 512 F.3d 807, 816 (6th Cir. 2008)
Note: “With respect to the element of knowledge, contributory liability requires that the secondary infringer 'know or have reason to know' of the
direct infringement.” Id. Moreover, “[s]econdary liability may be imposed on a defendant who does nothing more than encourage or induce another
to engage in copyright infringement because secondary liability is predicated on the common law doctrine that one who knowingly participates or
furthers a tortious act is jointly and severally liable with the prime tortfeasor.” Id.
The senior mark must be (1) famous; and (2) distinctive. Use of the junior mark must (3) be in commerce; (4) have begun subsequent to the senior
mark becoming famous; and (5) cause dilution of the distinctive quality of the senior mark. Audi AG v. D'Amato, 469 F.3d 534, 547 (6th Cir. 2006);
Kellogg Co. v. Toucan Golf, Inc., 337 F.3d 786 (6th Cir. 2003)
Ten factors in determining whether dilution has occurred are:
(1) distinctiveness; (2) similarity of the marks; (3) proximity of the products and the likelihood of bridging the gap; (4) interrelationship among the
distinctiveness of the senior mark, and the similarity of the junior mark, and the proximity of the products; (5) shared consumers and geographic
limitations; (6) sophistication of consumers; (7) actual confusion; (8) adjectival or referential quality of the junior use; (9) harm to the junior user and
delay by the senior user; and (10) the effect of [the] senior's prior laxity in protecting the mark. AutoZone, Inc. and Speedbar, Inc., TandyCorp., 373
F.3d 786 (6th Cir. 2004)
Subject to the principles of equity, plaintiff may recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the
action.
For assessing profits the plaintiff shall be required to prove defendant's sales only.
In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual
damages, not exceeding three times that amount.
The court in exceptional cases may award reasonable attorney fees to the prevailing party. Eagles, Ltd. v. Am. Eagle Found., 356 F.3d 724 (6th Cir.
2004). A case is not exceptional unless "the infringement was malicious, fraudulent, willful, or deliberate." Hindu Incense v. Meadows, 692 F.2d
1048, 1051 (6th Cir. 1982). To a prevailing defendant, "exceptional" case is one "where a plaintiff brings a suit that could fairly be described as
'oppressive.'" Balance Dynamics Corp. v. Schmitt Indus., Inc., 2000 U.S. App. LEXIS 3290, at *2 (6th Cir. Feb. 25, 2000)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
7th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
LACHES
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
The owner must show the consuming public accepts the word as the designation of a brand of the product.
Ty Inc. v. Perryman, 306 F.3d 509, 64 U.S.P.Q.2d 1689 (7th Cir. 2002)
The following factors are analyzed: (1) the similarity of the marks; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the
degree of care likely to be used by consumers; (5) the strength of the plaintiff’s mark; (6) whether any actual confusion exists; and (7) the defendant’s
intent to palm off its goods as those of the plaintiff.
Sullivan v. CBS Corp., 385 F.3d 772, 72 U.S.P.Q.2d 1586 (7th Cir. 2004)
Initial interest confusion occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the
goods before the sale is consummated.
Promatek Indus. LTD v. Equitrac Corp., 300 F.3d 808, 63 U.S.P.Q.2d 2018 (7th Cir. 2002)
The party seeking the preliminary injunction has the burden of demonstrating that it has a reasonable likelihood of success on the merits of its
underlying claim, that it has no adequate remedy at law, and that it will suffer irreparable harm without the preliminary injunction. To determine
whether a party has a reasonable likelihood of success on the merits, the court must assess whether that party has a greater than negligible chance of
winning. If the party seeking the preliminary injunction meets those burdens, the court then must consider any irreparable harm the preliminary
injunction might impose upon the party against which the injunction is sought and whether the preliminary injunction would harm or foster the public
interest.
AM Gen. Corp. v. DaimlerChrysler Corp., 311 F.3d 796, 65 U.S.P.Q.2d 1001 (7th Cir. 2002).
For laches to apply, the defendant must show that the plaintiff had actual or constructive notice of the defendant’s use of an allegedly infringing mark,
that the plaintiff inexcusably delayed in taking action with respect to the defendant’s use, and that the defendant would be prejudiced by allowing the
plaintiff to assert its right at this time.
Chattanoga Manufacturing, Inc. v. Nike, Inc., 301 F.3d 789, 792-93, 64 U.S.P.Q.2d 1140 (7th Cir. 2002).
Because trademark rights derive from the use of a mark in commerce and not from the mere registration of the mark, the owner of a mark will lose his
exclusive rights if he fails to actually use it. A mark is deemed to thus “abandoned” when its use has been discontinued with intent not to resume such
use. Two years of nonuse create a prima facie case of abandonment, which may be rebutted by evidence explaining the nonuse or demonstrating the
lack of an intent not to resume use.
Sands, Taylor & Wood v. Quaker Oats Co., 978 F.2d 947, 954-55, 24 U.S.P.Q.2d 1001 (7th Cir. 1992) citing 15 U.S.C. § 1127, certiorari denied, 507
U.S. 1042 (1992).
To prevail on the fair use defense, defendants must show that:
1. the use is a non-trademark use;
2. the word or phrase is descriptive of its goods or services;
3. they used the phrase “fairly and in good faith” only to describe their goods or services.
Packman v. Chicago Tribune Co., 267 F.3d 628, 639, 60 U.S.P.Q.2d 1245 (7th Cir. 2001).
Placing a competitor’s trademark in a metatag creates a likelihood of confusion. Although consumers may not be confused when they reach a
competitor’s website, there is nevertheless initial interest confusion. That consumers who are misled are only briefly confused is of little or no
consequence. That confusion as to the source of a product or service is eventually dispelled does not eliminate the trademark infringement which has
already occurred. Using another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store. Customers
believing they are entering the first store rather than the second are still likely to mill around before they leave.
Promatke Indus., LTD v. Equitrace Corp., 300 F.3d 808, 812-13, 63 U.S.P.Q.2d 2018 (7th Cir. 2002).
Use of Plaintiff’s metatag is evidence of Defendant’s intent under a likelihood of confusion analysis, and it creates a risk of confusion, but it is not
evidence of actual confusion.
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 465, 56 U.S.P.Q.2d 1942 (7th Cir. 2000).
Modern search engines make little if any use of metatags. Regardless, diverted customers could still purchase the trademark holder’s goods, negating
any likelihood of consumer confusion.
Std. Process, Inc. v. Banks, 554 F. Supp. 2d 866, 870-71 (E.D. Wis. 2008).
SECONDARY
LIABILITY
Using Plaintiff’s trade name as a metatag was fair use because it simply described the contents of Defendant’s website.
Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029, 1039-40 (N.D. Ill. 2001).
If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or
has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result
of the deceit.
“Willful blindness” on the part of a contributory infringer is equivalent to actual knowledge of infringing conduct. For a Defendant to have been
willfully blind, the Defendant must suspect wrongdoing and deliberately fail to investigate; mere negligence or simple failure to take precautions is
insufficient.
Liability for vicarious trademark infringement requires a finding that the defendant and the infringer have an apparent or actual partnership, have
authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.
Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 21 U.S.P.Q.2d 1764 (7th Cir. 1992).
An individual is vicariously liable for trademark infringement when that individual had: (1) the right and ability to supervise the activity; and (2) an
obvious and direct financial interest in the exploitation of materials.
To be liable for contributory trademark infringement, an individual corporate officer must be a moving, active conscious force behind infringement.
To prove contributory infringement a Plaintiff must demonstrate that a Defendant: (1) intentionally induced a third party to infringe the plaintiff’s
mark; or (2) supplied a product to a third party with actual or constructive knowledge that the product was being used to directly infringe the mark.
Microsoft Corp. v. Ram Distrib., LLC, 625 F. Supp. 2d 674, 684 (E.D. Wis. 2008).
DILUTION
DAMAGES
STANDARD
The Defendant’s failure to make reseller agree that it will not infringe does not constitute contributory infringement.
David Berg and Co. v. Gatto Int’l Trading Co., 884 F.2d 306, 12 U.S.P.Q.2d 1116 (7th Cir. 1989).
Plaintiff must prove:
1. that the mark is famous;
2. that the Defendant adopted the mark after the mark became famous;
3. the infringer diluted the mark; and
4. the defendant’s use is commercial and in commerce.
AM Gen. Corp. v. Daimlerchrysler Corp., 311 F.3d 796, 65 U.S.P.Q.2d 1001 (7th Cir. 2002).
To recover damages, Plaintiff must show that the violation caused actual confusion among his customers and, as a result, he suffered actual injury, i.e.,
a loss of sales, profits, or present value (goodwill).
Zelinski v. Columbia 300, Inc., 335 F.3d 633, 639, 67 U.S.P.Q.2d 1446 (7th Cir. 2003); Web Printing Controls Co. v. Oxy-Dry Corp., 906 F.2d 1202,
1206, 15 U.S.P.Q.2d 1562 (7th Cir. 1990).
The Plaintiff shall be entitled, subject to the principles of equity, to recover (1) Defendant’s profits, (2) any damages sustained by the Plaintiff, and (3)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
the costs of the action.
In assessing profits the Plaintiff shall be required to prove Defendant’s sales only; Defendant must prove all elements of cost or deduction claimed. In
assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages,
not exceeding three times such amount.
Disgorgement of defendant’s profits is most appropriate if damages are otherwise nominal and/or an award of Plaintiff’s actual damages will not deter
Defendant’s conduct. The Act specifically provides that enhancement is only available to ensure that the Plaintiff receive compensation.
FEE SHIFTING
Attorney’s fees are appropriate in “exceptional cases,” where Defendant’s conduct is malicious, fraudulent, deliberate or willful, and is firmly
committed to the district court’s discretion.
BASF Corp. v. Old World Trading Co., 41 F.3d 1081, 1092 (7th Cir. 1994).
It is enough to justify an award of attorney's fees if the party seeking it can show that his opponent's claim or defense was objectively unreasonable.
An objectively unreasonable claim or defense is one that a rational litigant would pursue it only because it would impose disproportionate costs on his
opponent, in other words, only because it was extortionate in character if not necessarily in provable intention.
Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958, 965, 96 U.S.P.Q.2d 2017 (7th Cir. 2010)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
8th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
LACHES
In order to establish secondary meaning, the user of a mark must show that by long and exclusive use in the sale of the goods or services, the mark has
become so associated in the public mind with such goods or services that the mark serves to identify the source of the goods and to distinguish them
from those of others.
B&B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir. 2009)
In determining whether there is secondary meaning, "the chief inquiry is whether in the consumer's mind the mark has become associated with a
particular source."
Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d 810, 819, 67 U.S.P.Q.2d 1410 (8th Cir. 2003)
The court evaluates:
1) the strength of the owner's mark;
2) the similarity of the owner's mark and the alleged infringer's mark;
3) the degree to which the products compete with each other;
4) the alleged infringer's intent to confuse the public;
5) the degree of care reasonably expected of potential customers; and
6) evidence of actual confusion.
Roederer v. J. Garcia Carrion, S.A., 569 F.3d 855, 860 (8th Cir. 2009)
The ultimate determination of whether confusion is likely is not to be mechanically determined through rigid application of the factors. No one factor
controls, and because the inquiry is inherently case-specific, different factors may be entitled to more weight in different cases.
Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049, 73 U.S.P.Q.2d 2002 (8th Cir. 2005)
“We decline Sensient's invitation to adopt the "initial interest confusion" doctrine in this case because, even if the doctrine applied generally in this
circuit, it would not apply in this case. Under the doctrine, courts look to factors such as product relatedness and the level of care exercised by
customers to determine whether initial interest confusion exists. Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 296 (3d Cir.
2001). Here, although the products are similar, the parties agree the customers are sophisticated and exercise a relatively high degree of care in making
their purchasing decisions. This sophistication makes it less likely customers will experience initial confusion, ultimately resulting in a benefit to the
alleged infringer. Id. at 296-97. As a result, the district court correctly rejected the application of the doctrine under these facts.”
Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 766 (8th Cir. 2010)
The court considers
1) the probability of the movant's success on the merits;
2) the threat of irreparable harm to the movant;
3) the balance between this harm and the injury that granting the injunction will inflict on the non-movant; and
4) whether the issuance of the preliminary injunction is in the public interest.
Coyne’s & Co., Inc. v. Enesco, LLC, 553 F.3d 1128, 1131 (8th Cir. 2009)
A defendant must demonstrate the presence of three elements in order to successfully assert laches as a defense:
1) a delay in asserting a right or a claim;
2) that the delay was not excusable; and
3) that there was undue prejudice to the party against whom the claim is asserted
In addition, in trademark cases, courts consider two additional factors:
1) the doctrine of progressive encroachment (the time of delay is to be measured not from when the plaintiff first learned of the potentially infringing
mark, but from when such infringement became actionable and provable); and
2) notice to the defendant of the plaintiff’s objections to the potentially infringing mark
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
Roederer v. J. Garcia Carrion, S.A., 569 F.3d 855, 859 (8th Cir. 2009)
ABANDONMENT
FAIR USE
USE OF INTERNET
KEYWORDS
SECONDARY
LIABILITY
DILUTION
DAMAGES
Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is
asserted.
Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999)
A registered mark is deemed abandoned “when its use has been discontinued with intent not to resume such use” or when an owner causes the mark to
“lose its significance as a mark.”
Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ's Church, 634 F.3d 1005, 1010 (8th Cir. 2011).
Court adopted Exxon Corp. v. Humble Exploration Co., Inc., 695 F.2d 96, 102-03 (5th Cir.1983): There is a difference between intent not to
abandon or relinquish and intent to resume use in that an owner may not wish to abandon its mark but may have no intent to resume its use.... An
"intent to resume" requires the trademark owner to have plans to resume commercial use of the mark. Stopping at an "intent not to abandon" tolerates
an owner's protecting a mark with neither commercial use nor plans to resume commercial use.
Hiland Potato Chip Co. v. Culbro Snack Foods, Inc., 720 F.2d 981, 984, 222 U.S.P.Q. 790 (8th Cir. 1983)
The factors for fair use are:
1) use of the registered term or device is otherwise than as a trade or service mark;
2) the term or device is descriptive of the defendant's goods or services; and
3) the defendant is using the term or device fairly and in good faith only to describe to users those goods and services.
Rainforest Cafe, Inc. v. Amazon, Inc., 86 F.Supp.2d 886, 906 (D. Minn. 1999)
Faegre & Benson: Defendant permitted to use Plaintiff’s trademark in metatags when Defendant’s website provided criticism of Plaintiff. “Based on
the fair use defense under the Lanham Act, [Defendant] can legally use Faegre’s marks in his metatags in the descriptive sense, particularly if he
employs a disclaimer on his web pages; however, he is not permitted to use Faegre’s marks in his metatags in order to divert internet users from
Faegre’s web site.”
Faegre & Benson, LLP v. Purdy, 367 F.Supp.2d 1238, 1246-47, 75 U.S.P.Q.2d 1342 (D. Minn. 2005)
No Eighth Circuit appellate case on Fair Use
“A defendant’s use of a plaintiff’s trademarks in his metatags for the purpose of diverting internet traffic away from the plaintiff’s website and onto
the defendant’s website can constitute trademark infringement . . . .”
Gregerson v. Vilana Financial, Inc., 2007 WL 2509718 at *5, Case No. 06-1164 (D. Minn. 2007)
To show contributory infringement, Plaintiff must show that Defendant either:
1) intentionally induced a primary infringer to infringe, or
2) continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied (this
includes three elements: A) actual infringement; B) knowledge of the infringement; and C) continued supply of the product after acquiring knowledge
of the infringement)
Georgia-Pacific Consumer Prod. LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 63774 at * 8 (W.D. Ark. 2009), aff’d 621 F.3d 771 (8th Cir.
2010) .
The judicial consensus is that "famous" is a rigorous standard. Dilution is a cause of action invented and reserved for a select class of marks--those
marks with such powerful consumer associations that even non-competing uses can impinge their value.
Dilution by blurring “does not require proof of competition or likelihood of confusion.” Proof of actual dilution, however, is required. “[W]here the
marks at issue are not identical, the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish
actionable dilution.”
Everest Capital, Ltd. v. Everest Funds Mgmt., LLC, 393 F.3d 755, 763, 73 U.S.P.Q.2d 1580 (8th Cir. 2005)
The Lanham Act does not permit the award of monetary relief as a penalty.
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
If a registered owner proves willful, deliberate infringement or deception, an accounting of profits may be based upon
1) unjust enrichment,
2) damages, or
3) deterrence of a willful infringer. No monetary relief should be awarded if an injunction will satisfy the equities.
Minnesota Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1247, 33 U.S.P.Q.2d 1140 (8th Cir. 1994); the 1999 amendment to Section
1117(a) of the Lanham Act limited Minnesota Pet Breeders to requiring willfulness only in cases of dilution of famous marks. Recovery for false
advertising does not require willfulness. Wildlife Research Center, Inc. v. Robinson Outdoors, Inc., 409 F. Supp.2d 1131, 1136 (D. Minn. 2005)
Court awarded attorney’s fees under the Minnesota Deceptive Trade Practices Act, which provided for an award of fees when the infringement was
knowingly and willfully deceptive. The court held this standard was in accord with “exceptional cases,” and upheld the award of attorney’s fees.
A plaintiff may recover as damages for infringement:
1) the defendant’s profits;
2) any damages sustained by the plaintiff; and
3) the costs of the action
Tonka Corp. v. Tonk-A-Phone, Inc., 805 F.2d 793, 794, 231 U.S.P.Q. 872 (8th Cir. 1986)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
9th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
INITIAL INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
In determining whether a mark has obtained secondary meaning, courts consider: 1) whether actual purchasers of the product bearing the mark
associate the mark with the producer; 2) the degree and manner of advertising under the mark; 3) the length and manner of use of the mark; and 4)
whether use of the mark has been exclusive.
Miller v. Glenn Miller Productions, Inc., 454 F.3d 975, 991 (9th Cir.2006).
Determining secondary meaning requires an analysis of at least 7 factors: 1) direct consumer testimony; 2) survey evidence; 3) exclusivity, manner,
and length of use of a mark; 4) amount and manner of advertising; 5) amount of sales and number of customers; 6) established place in the market; and
7) proof of intentional copying by the defendant.
Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir.2004)
The (non-exclusive) factors are:
1) the strength of the mark;
2) proximity or relatedness of the goods;
3) the similarity of the marks;
4) evidence of actual confusion;
5) the marketing channels used;
6) the degree of care customers are likely to exercise in purchasing the goods;
7) the defendant's intent in selecting the mark; and
8) the likelihood of expansion into other markets. Although these factors are all appropriate for consideration in determining whether likelihood of
confusion exists, not all of the factors are of equal importance or applicable in every case.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (2005); see also AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th
Cir.1979) (setting out and discussing above factors, sometimes referred to as the “Sleekcraft Factors”).
Initial interest confusion is customer confusion that creates initial interest in a competitor's product. Although dispelled before an actual sale occurs,
initial interest confusion impermissibly capitalizes on the goodwill associated with a mark and is therefore actionable trademark infringement.
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th Cir.2004) (unlabeled banner advertisements linked to
plaintiff’s mark were likely to cause initial interest confusion).
Because the sine qua non of trademark infringement is consumer confusion, to establish initial interest confusion, the owner of the mark must
demonstrate likely consumer confusion, not merely consumer diversion.
Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir.2011) (holding that initial interest confusion was not
likely where Internet search engines segregated and labeled sponsored links).
Preliminary injunction is appropriate where plaintiffs demonstrate either: (1) likelihood of success on merits and possibility of irreparable injury; or (2)
that serious questions going to merits were raised and balance of hardships tips sharply in their favor.
Southwest Voter Registration Educ. Project v. Shelley, 344 F.3d 914, 917 (9th Cir.2003)
The moving party must show either (1) a combination of probable success on the merits and the possibility of irreparable injury, or (2) that serious
questions are raised and the balance of hardships tips sharply in favor of the moving party. These standards are not separate tests but the outer reaches
of a single continuum.
Stuhlbarg Intern. Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832, 839-40 (9th Cir.2001)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
LACHES
ABANDONMENT
Six factors are evaluated to determine if Plaintiff’s claim is barred by laches:
1) strength and value of trademark rights asserted;
2) plaintiff's diligence in enforcing mark;
3) harm to senior user if relief denied;
4) good faith ignorance by junior user;
5) competition between senior and junior users; and
6) extent of harm suffered by junior user because of senior user's delay.
Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1101-02 (2004); see also Tillamook Country Smoker, Inc. v. Tillamook County
Creamery Ass'n., 465 F.3d 1102, 1109-10 (2006) (discussing second and fourth of the above factors).
Abandonment:
Under the Lanham Act's abandonment provision, “use” of a trademark defeats an allegation of abandonment when: the use includes placement on
goods sold or transported in commerce; is bona fide; is made in the ordinary course of trade; and is not made merely to reserve a right in a mark.
If there is continued use of trademark, a prospective intent to abandon the mark or business does not decide the issue of abandonment.
Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 936-37 (9th Cir.2006).
A mark is abandoned when its use has been discontinued with intent not to resume such use. Nonuse for 3 consecutive years shall be prima facie
evidence of abandonment.
Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 820 (9th Cir.1996).
Naked Licensing:
Uncontrolled or naked licensing may result in the trademark ceasing to function as a symbol of quality and controlled source. Consequently, where the
licensor fails to exercise adequate quality control over the licensee, a court may find that the trademark owner has abandoned the trademark, in which
case the owner would be estopped from asserting rights to the trademark. Such abandonment is purely an involuntary forfeiture of trademark rights, for
it need not be shown that the trademark owner had any subjective intent to abandon the mark..
See FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 515-16 (9th Cir.2010); Barcamerica Intern. USA Trust v. Tyfield Importers, Inc., 289
F.3d 589, 595-96 (2002).
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
FAIR USE
The scope of the fair use defense varies with the descriptive purity of the defendant's use of the mark and whether there are other words available to do
the describing.
Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025, 1041-42 (9th Cir.2010)
Among the relevant factors for consideration by the jury in determining the fairness of the use in a trademark infringement case are the degree of likely
confusion, the strength of the trademark, the descriptive nature of the term for the product or service being offered by the competitor and the
availability of alternate descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the
times and contexts in which the competitor has used the term.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 609 (9th Cir.2005).
“Classic Fair Use” - Defendant must show: 1) defendant's use of the term is not as a trademark or service mark; 2) defendant uses the term fairly and in
good faith; and 3) defendant uses the term only to describe its goods or services. The classic fair use defense is not available if there is likelihood of
confusion as to the origin of the product.
Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151-52 (9th Cir.2002).
USE OF INTERNET
KEYWORDS
“Nominative Fair Use” - Requirements for defense: 1) plaintiff's product or service in question must be one not readily identifiable without use of the
trademark; 2) only so much of the mark or marks may be used as is reasonably necessary to identify plaintiff's product or service; and 3) defendant
must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. The test for likelihood of
confusion is inapplicable when dealing with nominative fair use.
Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir.2002)
Alleged infringer's use of competitor's registered trademark, as search engine keyword, triggering display of advertisement of alleged infringer's own
products for sale on Internet website, would not likely cause initial interest confusion to consumers in violation of Lanham Act.
Alleged infringer's use of competitor's registered trademark, as search engine keyword, constituted “use in commerce,” within meaning of Lanham
Act's trademark infringement provision.
Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir.2011) (holding that initial interest confusion was not
likely where Internet search engines segregated and labeled sponsored links).
Internet search engine operators' practice of “keying” unlabeled banner advertisements to search terms was not protected “nominative use” of
trademarked search terms; inclusion of trademarked terms in topical list was not necessary in order for “keyed ad” concept to function.
Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th Cir.2004)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
SECONDARY
LIABILITY
Generally:
To establish contributory or vicarious copyright infringement, or “secondary copyright infringement,” plaintiff must first demonstrate direct
infringement.
MDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F.3d 928, 937 (9th Cir.2010).
Contributory Trademark Infringement:
To be liable for contributory trademark infringement, a defendant must have (1) “intentionally induced” the primary infringer to infringe, or (2)
continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied.
Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 807 (2007) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 855 (1982)).
When the alleged direct infringer supplies a service rather than a product, under the second prong of this test, the court must “consider the extent of
control exercised by the defendant over the third party's means of infringement.” For liability to attach, there must be “[d]irect control and monitoring
of the instrumentality used by a third party to infringe the plaintiff's mark.”
Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 807 (2007) (citing Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984
(9th Cir.1999)).
Vicarious Trademark Infringement:
Vicarious liability for trademark infringement requires “a finding that the defendant and the infringer have an apparent or actual partnership, have
authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.”
Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 807 (9th Cir.2007) (citing Hard Rock Café Licensing Corp. v. Concession Servs., Inc.,
955 F.2d 1143, 1150 (7th Cir.1992)).
To state a claim for vicarious copyright infringement, a plaintiff must allege that the defendant has (1) the right and ability to supervise the infringing
conduct and (2) a direct financial interest in the infringing activity.
Dream Games of Arizona, Inc. v. PC Onsite, 561 F.3d 983, 995 (9th Cir.2009); see also Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788,
802 (9th Cir.2007).
Whereas contributory copyright infringement is based on tort-law principles of enterprise liability and imputed intent, vicarious infringement's roots lie
in the agency principles of respondeat superior.
Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 802 (9th Cir.2007)..
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
AESTHETIC
FUNCTIONALITY
DILUTION
If the alleged significant non-trademark function of a product feature is essential to the use or purpose of the article or affects its cost or quality the
feature is functional and not protected; in the case of a claim of aesthetic functionality, an alternative test inquires whether protection of the feature as a
trademark would impose a significant non-reputation-related competitive disadvantage.
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1072 (9th Cir.2006) (citing TrafFix Devices, Inc. v. Marketing Displays,
Inc. 532 U.S. 23, 28 (2001) (holding that manufacturers' trademarks were not aesthetic functional features of key chains and license plate covers sold
by alleged infringer, entitling the marks to trademark protection)
Compare Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062 (9th Cir.2006) (holding that manufacturers' trademarks were not
aesthetic functional features of key chains and license plate covers sold by alleged infringer, entitling the marks to trademark protection) with
Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 636 F.3d 1115 (9th Cir.2011) (holding that “Betty Boop” name and cartoon character image on
competitor's merchandise did not infringe any of licensor's trademarks).
A plaintiff must show that (1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant's use
began after the mark became famous; and (4) the defendant's use of the mark is likely to cause dilution by blurring or dilution by tarnishment
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1171 (9th Cir. 2011) (citing the Trademark Dilution Revision Act, 15 U.S.C.
§ 1125(c)(1)); see also Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir.2008).
Plaintiff asserting trademark dilution claim under Trademark Dilution Revision Act (TDRA) need not establish that junior mark is identical, nearly
identical, or substantially similar to senior mark in order to obtain injunctive relief, but rather need only show, based on above statutory factors,
including degree of similarity, that junior mark is likely to impair famous mark's distinctiveness.
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1171 (9th Cir. 2011); but see Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628,
634 (9th Cir.2008) (holding that for a plaintiff to establish that the mark is being used in commerce on a trademark dilution claim, the mark used by the
alleged diluter must be identical, or nearly identical, to the protected mark).
DAMAGES
The Lanham Act does not require a showing of competition or likelihood of confusion to succeed on a trademark dilution claim.
Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir.2008).
Intent of trademark infringer is relevant evidence on issue of awarding profits and damages, and amount of award.
Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1405 (9th Cir.1993)
Under damages provision of Lanham Act, district court has discretion to fashion relief, including monetary relief, based on totality of circumstances.
Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1146 (9th Cir.1996); see also, e.g., adidas-America, Inc. v. Payless Shoesource, Inc. 546
F.Supp.2d 1029 (D.Or. 2008) (district court judge granted remittitur reducing award of defendant’s profits from $137 million to $19 million).
Attorney’s fees are appropriate if the infringement is malicious, fraudulent, deliberate, or willful.
Gracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir.2000).
Where trademark infringement is deliberate and willful, a remedy no greater than an injunction “slights” the public.
Playboy Enterprises, Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 1274 (9th Cir.1982).
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
10th CIRCUIT
SECONDARY
MEANING
"Secondary meaning exists only if most consumers have come to think of the word as not descriptive at all but as the name of the product [or service]."
[Packman v. Chicago Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001)] (internal quotations omitted). A plaintiff may establish secondary meaning
"through the use of direct evidence, such as consumer surveys or testimony from consumers." Flynn v. AK Peters, Ltd., 377 F.3d 13, 20 (1st Cir.
2004). A plaintiff may also ‘establish secondary meaning for a name by presenting circumstantial evidence regarding: (1) the length and manner of its
use, (2) the nature and extent of advertising and promotion of the mark and (3) the efforts made in the direction of promoting a conscious connection,
in the public's mind, between the name or mark and a particular product or venture.’ Id. (internal quotations omitted).”
Donchez v. Coors Brewing Co., 392 F.3d 1211, 1218 (10th Cir. 2004). “Sales volume . . . may indicate secondary meaning when presented in
conjunction with other evidence.” Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 978 (10th Cir. 2002). Evidence of intentional copying is also
relevant evidence. Id.
“A mark has acquired secondary meaning ‘if because of association with a particular product or firm over a period of time [it] has come to stand in the
minds of the public as a name or identification for that product or firm . . . .’ Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 499 (2d
Cir. 1962); accord Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978).”
Marker Int'l v. De Bruler, 844 F.2d 763, 764 (10th Cir. 1988)
"To acquire secondary meaning, a descriptive mark must ‘”have been used so long and so exclusively by one producer with reference to his' goods or
articles 'that, in that trade and to that branch of the purchasing public, [the mark has] come to mean that the article' is 'his product.’" Bardahl Oil Co. v.
Atomic Oil Co. of Oklahoma, 351 F.2d 148, 150 (10th Cir. 1965), cert. denied, 382 U.S. 1010, 86 S. Ct. 619, 15 L. Ed. 2d 526, 148 U.S.P.Q. (BNA)
771 (1966)."
J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1470 (10th Cir. 1985)
"The court further found that the grill design was a suggestive symbol combined with a device, and thus inherently distinctive, so that no showing of
secondary meaning was required. n7 The court found that consumers were likely to be confused by Duracraft's use of a similar grill, and granted
Vornado an injunction but no damages on the section 43(a) claim.
LIKELIHOOD OF
CONFUSION
- - Footnotes - n7 Vornado insists in its brief that the district court made an alternative finding of secondary meaning, but what the court actually found was just an
association between the grill design and Vornado, not that the primary significance of the design in the consumer's mind was as a brand identifier,
rather than as a grill type. Some of our previous cases may have led Vornado to believe that mere association is sufficient. See, e.g., Marker Int'l v.
DeBruler, 844 F.2d 763, 764 (10th Cir. 1988) (stating that a mark has acquired secondary meaning if because of long association with a product or
firm it has come to stand for that product or firm in the minds of the public). But the Supreme Court has made clear that the test is the more stringent
"primary significance" standard. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 83 L. Ed. 73, 59 S. Ct. 109 (1938) (holding that plaintiff
company could not monopolize name "shredded wheat" because it had shown only an association in consumers' minds of the name with the company,
not that the term's primary significance to the consuming public was the producer, and not the product). For other cases also citing the "primary
significance" test, see Qualitex Co. v. Jacobson Prods. Co., 131 L. Ed. 2d 248, 115 S. Ct. 1300, 1303 (1995); Two Pesos, Inc. v. Taco Cabana, Inc.,
120 L. Ed. 2d 615, 112 S. Ct. 2753, 2756 n.4 (1992); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 72 L. Ed. 2d 606, 102 S. Ct. 2182
(1982)."
Vornado Air Circulation Sys. v. Duracraft Corp., 58 F.3d 1498, 1501-02 (10th Cir. 1995) (footnote omitted)
“ In determining whether a likelihood of confusion exists between two marks, this court considers the following nonexhaustive factors: (1) the degree
of similarity between the marks; (2) the intent of the alleged infringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of products
and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. See King of the
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
Mountain Sports[, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089-90 (10th Cir. 1999)]. These factors are interrelated and no one factor is dispositive.
Id. at 1090.” Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002). “Parody is another factor to consider in determining the
likelihood of confusion and casts several of the above-cited six factors in a different light.” Utah Lighthouse Ministry v. Found. for Apologetic Info.
and Res., 527 F.3d 1045, 1055 (10th Cir. 2008).
“Evidence of actual confusion is not necessary to show a likelihood of confusion, but it is the ‘best evidence of a likelihood of confusion in the
marketplace.’ Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir. 1958).” Utah Lighthouse Ministry v. Found. for Apologetic Info. and
Res., 527 F.3d 1045, 1055 (10th Cir. 2008).
INITIAL
INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
STANDARD
See, e.g., Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527, 1530 (10th Cir. 1994) (discussing factors). Some of these factors
may prove more relevant than others, depending on the facts of each case; moreover, other cases may demand consideration of factors not mentioned
here. Jordache [Enterprises v. Hogg Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir. 1987)]. No one factor is dispositive, and the final determination of
likelihood of confusion must be based on consideration of all relevant factors. Beer Nuts, [Inc. v. Clover Club Foods Co., 805 F.2d 920, 924 (10th
Cir. 1986)]. In every case, however, the key inquiry is whether the consumer is "likely to be deceived or confused by the similarity of the marks." Two
Pesos, [Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992).]” Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d
550, 554, 46 U.S.P.Q.2D (BNA) 1481, 1483 (10th Cir. 1998).
“Initial interest confusion results when a consumer seeks a particular trademark holder’s product and instead is lured to the product of a competitor by
the competitor's use of the same or a similar mark. See Buckman, 183 A.L.R. Fed. 553. Even though the consumer eventually may realize that the
product is not the one originally sought, he or she may stay with the competitor. Id. In that way, the competitor has captured the trademark holder's
potential visitors or customers. Id.”
Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238-39 (10th Cir 2006); Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 872 (10th Cir
2008) (“Initial interest confusion is a ‘bait and switch’ tactic that permits a competitor to lure consumers away from a service provider by passing off
services as those of the provider, notwithstanding that the confusion is dispelled by the time of sale.”).
“A district court may issue a preliminary injunction if the moving party establishes:
1) substantial likelihood that the movant will eventually prevail on the merits;
2) a showing that the movant will suffer irreparable injury unless the injunction issues;
3) proof that the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and
4) a showing that the injunction, if issued, would not be adverse to the public interest.
Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir. 1980). This is applied in a trademark case in Beltronics USA, Inc. v. Midwest Inventory Dist., LLC,
562 F.3d 1067, 1070 (10th Cir. 2009).
Preliminary injunctions are reviewed by the Court of Appeals for an abuse of discretion. Pac. Frontier v. Pleasant Grove City, 414 F.3d 1221, 1231
(10th Cir. 2005).
LACHES
n.2: “In Otero [Savings & Loan Association v. Federal Reserve Bank, 665 F.2d 275, 278 (10th Cir. 1981)], this court stated that the Tenth Circuit has
adopted the liberal definition of the "probability of success" requirement." When the other three requirements for a preliminary injunction are satisfied,
'it will ordinarily be enough that the plaintiff has raised questions going to the merits so serious, substantial, difficult and doubtful, as to make them a
fair ground for litigation and thus for more deliberate investigation.'" Id. (quoting Continental Oil Co. v. Frontier Refining Co., 338 F.2d 780, 782
(10th Cir. 1964)).”
Hartford House, Ltd. v. Hallmark Cars, Inc., 846 F.2d 1268, 1270-71 (10th Cir. 1988)
“"In order to prove the affirmative defense of laches, the defendant must demonstrate that there has been an unreasonable delay in asserting the claim
and that the defendant was materially prejudiced by that delay." Hutchinson v. Pfeil, 105 F.3d 562, 564 (10th Cir.), cert. denied, 522 U.S. 914, 139 L.
Ed. 2d 230, 118 S. Ct. 298 (1997). "Generally speaking, the relevant delay is the period from when the plaintiff knew (or should have known) of the
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
allegedly infringing conduct, until the initiation of the lawsuit in which the defendant seeks to counterpose the laches defense." Danjaq LLC v. Sony
Corp., 263 F.3d 942, 952 (9th Cir. 2001).”
Jacobsen v. Deseret Book Co., 287 F.3d 936, 949 (10th Cir. 2002)
ABANDONMENT
FAIR USE
USE OF
INTERNET
KEYWORDS
DILUTION
DAMAGES
“Acquiescence is an affirmative defense that requires a "finding of conduct on the plaintiff's part that amounted to an assurance to the defendant,
express or implied, that plaintiff would not assert his trademark rights against the defendant" (Kellogg Co v. Exxon Corp., 209 F.3d 562, 569 (6th Cir.
2000), quoting language originating in Sweetheart Plastics, Inc. v. Detroit Forming, Inc., 743 F.2d 1039, 1046 (4th Cir. 1984)). Acquiescence
requires proof even more demanding than a showing (which would suffice for a laches defense) that the party seeking to enforce its trademark rights
has unreasonably delayed pursuing litigation and, as a result, has materially prejudiced the alleged infringer (Kellogg, id.).”
Creative Gifts, Inc. v. UFO, 235 F.3d 540, 547-48 (10th Cir. 2000)
“Because naked licensing if established is treated as an abandonment of the trademark, which triggers the loss of trademark rights against the world,
anyone attempting to show such abandonment via naked licensing faces a stringent burden of proof.” Creative Gifts, Inc. v. UFO, 235 F.3d 540, 548
(10th Cir. 2000) (citations omitted).
98 bottles of a product sold per year is sufficient use to constitute non-abandonment. Bishop v. Equinox Int’l Corp., 154 F.3d 1220, 1221-22 (10th
Cir. 1998)
“[A] website that critiques the product and uses the product’s trademark as the website’s domain name may be a fair use. . . . Because [defendant’s]
parody offers an indirect critique and lacks an overt commercial purpose, it is similar to these consumer commentaries, and under the circumstances of
this case, constitutes fair use.” Utah Lighthouse Ministry v. Found. For Apologetic Info and Res., 527 F.3d 1045, 1058 (10th Cir. 2008).
The Tenth Circuit appears to have adopted, without analysis, the position that the use of a trademark as a keyword constitutes trademark use:
“In this case, as noted above, Defendants used Plaintiffs’ trademarks on Defendants’ Web sites. Defendants also placed Plaintiffs’ trademarks in the
metatags of Defendants’ Web Sites. Further, Defendants paid Overture.com to list Defendants in a preferred position whenever a computer user
searched for Plaintiffs’ trademarks.”
Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239 (10th Cir. 2006).
“A plaintiff may prove actual dilution ‘through circumstantial evidence--the obvious case is one where the junior and senior marks are identical.’”
GMC v. Urban Gorilla, LLC, 500 F.3d 1222 (10th Cir. 2007) (quoting Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003)). The Urban
Gorilla court appears to be applying § 43(c) as modified by the Trademark Dilution Revision Act of 2006.
“Although damages may be awarded for a violation of section 43(a), the award is distinguishable from injunctive relief, because plaintiff bears a
greater burden of proof of entitlement. Likelihood of confusion is insufficient; to recover damages plaintiff must prove it has been damaged by actual
consumer confusion or deception resulting from the violation. Schutt Mfg. Co.[v. Riddell, Inc.], 673 F.2d [202,] 206 [(7th Cir. 1982)],; see also
Quabaug Rubber Co. [v. Fabiano Shoe Co.,], 567 F.2d [154,] 161-62 [(1st Cir. 1977). Actual consumer confusion may be shown by direct evidence,
a diversion of sales or direct testimony from the public, or by circumstantial evidence such as consumer surveys. PPX Enters. Inc. v. Audiofidelity
Enters., Inc., 818 F.2d 266, 271 (2d Cir. 1987); Schutt Mfg. Co., 673 F.2d at 206-07; Bangor Punta Operations, Inc. v. Universal Marine Co., 543
F.2d 1107, 1110 (5th Cir. 1976).
Although the quantum of damages, as distinguished from entitlement, must be demonstrated with specificity, courts may engage in "some degree of
speculation in computing the amount of damages, particularly when the inability to compute them is attributable to the defendant's wrongdoing.
PPX Enters. Inc., 818 F.2d at 271 (citations omitted) (quoting Burndy Corp., 748 F.2d at 771).”
Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 525, 4 U.S.P.Q.2d 1497, 1507 (10th Cir. 1987)
“Monetary recovery for a violation of trademark rights is governed by 15 U.S.C. § 1117.”
“"The infringer's use of the markholder's property to make a profit results in unjust enrichment that may properly be remedied through an award of
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
profits, "even if the defendant and plaintiff are not in direct competition." Maltina Corp. [v. Cawy Bottling Co.], 613 F.2d [582,] 585 [(5th Cir.
1980)]. But see George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537-38 (2d Cir. 1992)(analyzing theory of unjust enrichment and concluding
that award of profits under this theory requires proof of actual consumer confusion or willfully deceptive infringement). This theory of unjust
enrichment has long been the rule in this Circuit. In Blue Bell Co. v. Frontier Refining Co., 213 F.2d 354 (10th Cir. 1954), we stated:
Out of the welter of confusion occasioned by the judicial effort to fashion a remedy which would satisfy both legal and equitable concepts of
appropriate relief for patent and trade-mark infringements, the courts have now settled on the theory that a trade-mark infringer is liable as a trustee for
profits accruing from his illegal acts, even through the owner of the mark was not doing business in the consuming market where the infringement
occurred.
213 F.2d at 362-63.
Additionally, several of our sister circuits have recognized that an award of profits may be proper, absent a showing of actual damage, as a deterrent to
willful infringement. See, e.g., George Basch Co., 968 F.2d at 1539-40 (requiring proof of willfully deceptive infringement); Burger King Corp. v.
Mason, 855 F.2d 779, 781 (11th Cir. 1988) (requiring proof of deliberate infringement); Playboy Enters., Inc. v. Baccarat Clothing Co., 692 F.2d
1272, 1274-75 (9th Cir. 1982) (requiring proof of deliberate infringement).
Notwithstanding the existence of these theories of recovery, we recognize that a finding of actual damage remains an important factor in determining
whether an award of profits is appropriate. See George Basch Co., 968 F.2d at 1539, 1541; Texas Pig Stands, Inc. v. Hard Rock Cafe Int'l, Inc., 951
F.2d 684, 695 (5th Cir. 1992). More importantly, we are mindful that an award of profits requires a showing that defendant's actions were willful or in
bad faith. See [Int’l Star Class Yacht Racing Ass'n v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d Cir. 1996)] ; ALPO Petfoods, Inc. v.
Ralston Purina Co., 286 U.S. App. D.C. 192, 913 F.2d 958, 968 (D.C. Cir. 1990); Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903, 921
(Fed. Cir. 1984); see also Restatement (Third) of Unfair Competition § 37(1)(a) (1995)(premising award of profits on showing that "the actor engaged
in the conduct with the intention of causing confusion or deception"). Requiring a showing of willfulness before profits are awarded is an appropriate
limitation in light of the equitable considerations underlying the monetary recovery provisions of the Lanham Act. As the court in George Basch Co.
stated:
While damages directly measure the plaintiff's loss, defendant's profits measure the defendant's gain. Thus, an accounting may overcompensate for a
plaintiff's actual injury and create a windfall judgment at the defendant's expense.
968 F.2d at 1540; see also ALPO Petfoods, Inc., 913 F.2d at 969 (concluding that "deterrence is too weak and too easily invoked a justification for the
severe and often cumbersome remedy of a profits award," and therefore "deterrence alone cannot justify such an award")."
Bishop v. Equinox Int'l Corp., 154 F.3d 1220, 1222-23 (10th Cir. 1998)
“There are three articulated justifications for awarding a portion of a defendant's profits to an injured plaintiff, only two of which are at issue in this
case: prevention of unjust enrichment and deterrence of willful infringement. See [Bishop v. Equinox International Corp., 154 F.3d 1220, 1223 (10th
Cir. 1998) ("Bishop I")] The third justification, actual to the Estate, is not at issue in this case because the record clearly indicates that the Estate
suffered no actual as a result of Equinox's infringing actions. See [Estate of Bishop v. Equinox Int'l Corp., No. 96-C-006-E, slip op. at 2-3 (N.D.
Okla. Sept. 23, 1999) (unpublished order) ("Bishop II")] In regard to the unjust enrichment theory of recovery, we have stated that a plaintiff may
recover a portion of a defendant's profits even where the plaintiff was not actually injured by the defendant's unfair use of the disputed trademark. See
Bishop I, 154 F.3d at 1223. "The infringer's use of the marketholder's property to make a profit results in unjust enrichment that may properly be
remedied through an award of profits, 'even if the defendant and plaintiff are not in direct competition.'" Id. (quoting Maltina Corp. v. Cawy Bottling
Co., 613 F.2d 582, 585 (5th Cir. 1980) (emphasis added)). This is because, as we have previously noted, "the courts have now settled on the theory that
a [trademark] infringer is liable as a trustee for profits accruing from his illegal acts, even though the owner of the mark was not doing business in the
consuming market where the infringement occurred." Blue Bell Co. v. Frontier Refining Co., 213 F.2d 354, 363 (10th Cir. 1954).
In regard to the deterrence of willful infringement rationale for awarding a portion of a defendant's profits, we have recognized that "several of our
sister circuits have recognized that an award of profits may be proper, absent a showing of actual damage, as a deterrent to willful infringement,"
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
Bishop I, 154 F.3d at 1223 (citing cases from the Second, Ninth and Eleventh Circuit Courts of Appeals) (emphasis added), and we have implied that
we would similarly accept this rationale for awarding profits in a trademark infringement case. See id. at 1223-24. While we have stated that trademark
infringement "may properly be remedied through an award of profits," id. at 1223 (emphasis added), so that unjust enrichment of the defendant may be
avoided or so that the defendant will be deterred from future wrongdoing, we have never stated that a plaintiff must necessarily be so compensated
whenever a defendant wrongfully appropriates the plaintiff's trademarked property to make a profit. See id. To the contrary, we have emphasized: "An
accounting of profits is not automatically granted upon a showing of infringement. Rather, the propriety of such relief is determined by equitable
considerations. Consequently, the district court has wide discretion to fashion an appropriate remedy." Id. at 1222 (citations omitted); see also Lindy
Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1405 (9th Cir. 1993) (stating that an accounting of profits will be granted only in light of equitable
considerations). In short, we have acknowledged that a showing of actual damages is not required to recover a portion of an infringing defendant's
profits in a trademark action, and that plaintiffs in such cases may recover the defendants' profits based upon the alternative theories of the prevention
of unjust enrichment and the deterrence of willful infringement. We have also instructed the district courts to fashion equitable remedies to meet the
individual needs of each case, carefully weighing the equities on both sides of the scale to determine whether, in that district court's judgment and
within its wide discretion, the plaintiff may receive a portion of the infringing defendant's profits.”
Estate of Bishop v. Equinox Int'l Corp., 256 F.3d 1050, 1054-55 (10th Cir. 2001).
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
11th CIRCUIT
SECONDARY
MEANING
LIKELIHOOD OF
CONFUSION
Secondary meaning is the connection in the consumer's mind between the mark and the provider of the service.” This definition is dicta, in a trade
dress infringement case, in which the court upheld the district court’s find of inherent distinctiveness, and so did not address the secondary meaning
issue. AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 n. 14, 1 U.S.P.Q.2d 1161 (11th Cir. 1986)
“Absent consumer survey evidence, four factors can be considered in determining whether a particular mark has acquired a secondary meaning:
1) The length and manner of its use;
2) the nature and extent of advertising and promotion;
3) the efforts made by the plaintiff to promote a conscious connection in the public's mind between the name and the plaintiff's . . . business; and
4) the extent to which the public actually identifies the name with the plaintiff's [service].” Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513, 224
U.S.P.Q. 552, 555 (11th Cir. 1984); St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1208-09 (11th Cir. 2009).
The likelihood of confusion for purposes of trademarks and service marks is assessed by examining seven factors:
(1) distinctiveness of the mark alleged to have been infringed;
(2) similarity of the infringed and infringing marks;
(3) similarity between the goods or services offered under the two marks;
(4) similarity of the actual sales methods used by the two parties, such as their sales outlets and customer base;
(5) similarity of advertising methods;
(6) intent of the alleged infringer to misappropriate the proprietor's good will; and
(7) existence and extent of actual confusion in the consuming
St. Luke's Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1209 (11th Cir. 2009).
PRELIMINARY
INJUNCTION
STANDARD
LACHES
“Though likelihood of confusion is a question of fact, it may be decided as a matter of law." Dan Tana v. Dantannas’s, 611 F.3d 767, 775 (11th Cir.
2010); 2010 U.S. App. Lexis 14514 (11th Cir.), (C.A. 11, Jul. 15, 2010) Case No. 09-15123
“A party seeking a preliminary injunction for trademark infringement must establish four elements:
1) substantial likelihood of success on the merits;
2) that it would be irreparably harmed if injunctive relief were denied;
3) that the threatened injury to the trademark owner outweighs the whatever damage the injunction may cause to the alleged infringer;
4) that the injunction, if issued, would not be adverse to the public interest. See id. It is well established in this circuit that "[a] preliminary injunction is
an extraordinary and drastic remedy not to be granted unless the movant clearly established the 'burden of persuasion'" as to all four elements.
Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000) (en banc) (internal citation omitted).
Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1300 (11th Cir. 2001)
“The equitable defense of estoppel by laches may be applied to bar claims for trade dress or trademark infringement brought under the Lanham Act.
Conagra, Inc. v. Singleton, 743 F.2d 1508, 1517 (11th Cir.1984). Though the doctrine is an equitable doctrine that should be applied flexibly, a
defendant must demonstrate the presence of three elements in order to successfully assert laches as a defense: (1) a delay in asserting a right or a claim;
(2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted. AmBrit, Inc. v. Kraft, Inc.,
812 F.2d 1531, 1545 (11th Cir. 1986); Kason Indus. v. Component Hardware Group, 120 F.3d 1199, 1203 (11th Cir. 1997)
Kason Indus. v. Component Hardware Group, 120 F.3d 1199, 1203 (11th Cir. 1997)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
“The test for laches or estoppel is flexible, requiring a careful examination of both the delay and the prejudice caused by that delay. See Citibank, N.A.
v. Citibanc Group, Inc., [724 F.2d 1540, 1545 (11th Cir. 1984)]. In addition, a court determining whether the doctrine of laches estops the plaintiff
from asserting its rights also must consider the public's interest in the trademark as a definite designation of a single source of the goods. Thus,
although a defendant suffers some prejudice, the public interest in avoiding confusion might outweigh that prejudice. See James Burrough Ltd. v.
Sign of the Beefeater, Inc., 572 F.2d 574, 578 (7th Cir. 1978).
“The defense of acquiescence requires proof of three elements: (1) That petitioner actively represented that it would not assert a right or a claim; (2)
that the delay between the active representation and assertion of the right or claim was not excusable; and (3) that the delay caused the registrant undue
prejudice.” Coach House Rest. Inc. v. Coach and Six Rest., Inc., 934 F.2d 1551, 1558, 19 USPQ2d 1401 (11th Cir. 1991) (footnote omitted)
“Acquiescence is an equitable defense that denotes active consent by a senior user to another's use of the mark. Coach House Rest. Inc. v. Coach and
Six Rest., Inc., 934 F.2d 1551, 1558 (11th Cir. 1991) The defense requires proof of three elements:
1) the senior user actively represented that it would not assert a right or a claim;
2) the delay between the active representation and assertion of the right or claim was not excusable; and
3) the delay caused the defendant undue prejudice. Id.
Ordinarily, an acquiescence defense estops a senior user from asserting rights against a party for the use of the mark to which the senior user
consented. See SunAmerica [v. Sun Life Assurance Co., 24 U.S.P.Q.2d 1505, 1511 (11th Cir. 1992) (hereinafter "SunAmerica I ")], infra p. 1374
(Birch, J., concurring); Coach House, 934 F.2d at 1564. Additionally, the existence of acquiescence creates a legal duty on the part of the senior user
to respect the junior user's mark and to avoid creating confusion with it. SunAmerica I, 24 U.S.P.Q.2D (BNA) at 1511, infra p. 1374 (Birch, J.,
concurring). Insofar as the senior user's and junior user's rights and duties respecting one another are concerned, acquiescence causes both users' marks
to "stand in parity." Id. at 1512, infra p. 1375. “After acquiescence, the senior user and junior user must treat one another's marks with equal dignity."
Id. at 1511, infra p. 1374.
ABANDONMENT
FAIR USE
However, the defense of acquiescence is not absolute. Upon a showing that "inevitable confusion" arises from the continued dual use of the marks, a
senior user's claim may be revived from estoppel. Id. at 1510, infra pp. 1372-73; Coach House, 934 F.2d at 1564; Iodent Chem. v. Dart Drug Corp.,
207 U.S.P.Q. 602, 607 (T.T.A.B. 1980). As we explained in Coach House, the purpose of such a revival is to vindicate the public interest in avoiding
inevitable confusion in the marketplace: "Although [the senior user] has acquiesced in use of their logo by the [junior user], the public interest in
preventing confusion around the marketplace is paramount to any inequity caused the [junior user]. Consequently, if there is an inevitability of
confusion, [the senior user's] law suit may be revived from estoppel." Coach House, 934 F.2d at 1564.”
SunAmerica Corp. v. Sun Life Assurance Co. of Can., 77 F.3d 1325, 1334 (11th Cir. 1996) (footnote omitted)
“A putative trademark infringer…must prove two separate elements to interpose the defense of abandonment successfully: that the plaintiff has ceased
using the mark in dispute, 7 and that he has done so with an intent not to resume its use.” Cumulus Media, Inc. v. Clear Channel Communs., Inc.,
304 F.3d 1167, 1173-74 (11th Cir. 2002).
In a case of an alleged violation of §43(a), the plaintiff could not prevent the defendant from selling course study guides which identify the course by
the plaintiff’s course numbering system. “Mere reference to U.F.’s course numbering system by [defendant] on its corresponding study guides was
within its competitive rights.”
th
SECONDARY
LIABILITY
Univ. of Florida v. KPB, Inc., 89 F.3d 773, 777 n.9, 39 U.S.P.Q.2d 1603 (11 Cir. 1996)
“Contributory copyright infringement refers to the (1) intentional inducement, (2) causation or material contribution to another's infringing conduct.”
BUC Int'l Corp. v. Int'l Yacht Council Ltd., 489 F.3d 1129, 1139 (11th Cir. 2007) (footnote 19) (emphasis added.) “Liability for vicarious copyright
infringement arises when (1) the defendant profits directly from the infringement and (2) has a right and ability to supervise the direct infringer, even if
the defendant initially lacks knowledge of the infringement.” Id. (emphasis added.)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
DILUTION
DAMAGES
No cases found.
“Under the Lanham Act, a successful party "subject to the principles of equity" may recover: "(1) defendant's the infringer's profits; (2) any damages
sustained by the plaintiff, and (3) the costs of the action." 15 U.S.C. § 1117 (a). See Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182 (11th
Cir. 1994). To recover costs under the Lanham Act, therefore, a plaintiff need not establish that the alleged infringer acted maliciously, fraudulently,
deliberately, or willfully.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1205 (111th Cir. 2001)
"The damage provision of the Lanham Act entitles a trademark holder to recover, among other things, the profits earned by a defendant from
n1
infringement of the mark. 15 U.S.C.A. § 1117. The Act confers upon the district court a wide scope of discretion to determine the proper relief due
an injured party. See, e.g., Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 121 (9th Cir.), cert. denied, 391 U.S. 966, 88 S. Ct.
2037, 20 L. Ed. 2d 879 (1968).
n1 When a violation of any right of the registrant of a mark . . . shall have been established ... the plaintiff shall be entitled, subject to the provisions of
sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action. The court shall assess such profits and damages. . . . In assessing profits the plaintiff shall be required to prove
defendant's sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according
to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find
that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the
court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstance shall constitute compensation and
not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party. 15 U.S.C.A. § 1117.
The statute provides that a damage award may be adjusted if the profits prove to be inadequate or excessive. This remedial accommodation clearly
commits considerable discretion to the trial judge. Review of the trial court's exercise of its discretion is under the abuse of discretion standard,
wherein the decision will not to be disturbed, unless, upon a weighing of relevant factors, there is a definite and firm conviction that the court below
committed a clear error of judgment. See Bandag, Inc. v. Al Bolser's Tire Stores, 750 F.2d 903, 917 (Fed. Cir. 1984); Playboy Enterprises, Inc. v.
Baccarat Clothing Co., 692 F.2d 1272, 1275 (9th Cir. 1982).
The law in this Circuit is well settled that a plaintiff need not demonstrate actual damage to obtain an award reflecting an infringer's profits under § 35
of the Lanham Act, 15 U.S.C.A. § 1117. Wesco Mfg., Inc. v. Tropical Attractions of Palm Beach, Inc., 833 F.2d 1484, 1487 (11th Cir. 1987). An
accounting for profits has been determined by this Court to further the congressional purpose by making infringement unprofitable, and is justified
because it deprives the defendant of unjust enrichment and provides a deterrent to similar activity in the future. Maltina Corp. v. Cawy Bottling Co.,
Inc., 613 F.2d 582, 585 (5th Cir. 1980); Maier Brewing Co., 390 F.2d at 121 (citing S.Rep. No. 1333, 79th Cong., 2d Sess. 1-2 (1946)).
Nor is an award of profits based on either unjust enrichment or deterrence dependent upon a higher showing of culpability on the part of defendant,
who is purposely using the trademark. In Wolfe v. National Lead Co., 272 F.2d 867 (9th Cir. 1959), cert. denied, 362 U.S. 950, 80 S. Ct. 860, 4 L. Ed.
2d 868 (1960), overruled in part on other grounds, Maier Brewing Co. v. Fleischmann Distilling Corp., 359 F.2d 156, 165 (9th Cir. 1966), the Ninth
Circuit rejected good faith as a defense to an accounting for profits. There the trademark infringer contended that he should not be held accountable for
the profits he earned after he consulted an attorney who advised him that he was not in infringement. The Ninth Circuit, in rejecting this claim, noted
that the defendant had full knowledge of the facts and [plaintiff's] claim of infringement. Whether he believed himself to be within the law or not, he
was knowingly and deliberately cashing in upon the good will of appellee. This is such an infringement as will justify an accounting of profits. 272
F.2d at 871. Wolfe has been cited with approval by this Court in John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 978 (11th Cir. 1983).”
Burger King Corp. v. Mason, 855 F.2d 779, 780-81 (11th Cir. 1988) (footnotes omitted)
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
TTAB AND FEDERAL CIRCUIT
[Federal Circuit note: “In deciding non-patent issues, such as trademark, trade dress and other unfair competition issues under § 43(a) of the Lanham Act, this Court applies
regional circuit law.” Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359, 50 U.S.P.Q.2D (BNA) 1672, 1675 (Fed. Cir. 1999) (en banc in relevant part); Atari,
Inc. v. JS&A Group, Inc., 747 F.2d 1422, 1439, 223 U.S.P.Q. IBNA) 1074, 1087 (Fed. Cir. 1984) (en banc) (recognizing the “freedom of the district courts to follow the
guidance of their particular circuits in all but the substantive law fields assigned exclusively to this court”). ]
SECONDARY
MEANING
“A mark is merely descriptive if it "consists merely of words descriptive of the qualities, ingredients or characteristics of" the goods or services related
to the mark. Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 543, 64 L. Ed. 705, 40 S. Ct. 414, 1920 Dec. Comm'r Pat. 471 (1920).
Thus, a mark is merely descriptive if it immediately conveys knowledge of a quality or characteristic of the product. [In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001).] A mark may be merely descriptive even if it does not describe the "full scope and extent" of the
applicant's goods or services. Id. Descriptive marks can qualify for registration on the Principal Register if they acquire secondary meaning, i.e.,
distinctiveness. See 15 U.S.C. § 1052(f) (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992).”
In re Oppendahl & Larson LLP, 373 F.3d 1171, 1173-74 (Fed. Cir. 2004)
n.4 “Secondary meaning is used generally to indicate that a mark or dress "has come through use to be uniquely associated with a specific source."
Restatement (Third) of Unfair Competition § 13, Comment e (Tent. Draft No. 2, Mar. 23, 1990). "To establish secondary meaning, a manufacturer
must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the
product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n.11, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982).” 505 U.S. at
766.
"Marks which are merely descriptive of a product are not inherently distinctive. When used to describe a product, they do not inherently identify a
particular source, and hence cannot be protected. However, descriptive marks may acquire the distinctiveness which will allow them to be protected
under the Act. Section 2 of the Lanham Act provides that a descriptive mark that otherwise could not be registered under the Act may be registered if it
"has become distinctive of the applicant's goods in commerce." §§ 2(e), (f), 15 U.S.C. § § 1052(e), (f). See [Park ' N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U.S. 189, 194, 196, 83 L. Ed. 2d 582, 105 S. Ct. 658 (1985),] This acquired distinctiveness is generally called "secondary meaning." See
ibid.; Inwood Laboratories, supra, at 851, n.11; Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 83 L. Ed. 73, 59 S. Ct. 109 (1938). The
concept of secondary meaning has been applied to actions under § 43(a). See, e. g., University of Georgia Athletic Assn. v. Laite, 756 F.2d 1535
(CA11 1985); [Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 215-216 (CA2 1985).]
LIKELIHOOD OF
CONFUSION
The general rule regarding distinctiveness is clear: An identifying mark is distinctive and capable of being protected if it either (1) is inherently
distinctive or (2) has acquired distinctiveness through secondary meaning. Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a
(Tent. Draft No. 2, Mar. 23, 1990). Cf. Park ' N Fly, supra, at 194.
Two Pesos v. Taco Cabana, 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)
“In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered:
1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior
mark is in use.
3) The similarity or dissimilarity of established, likely-to-continue trade channels.
4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5) The fame of the prior mark (sales, advertising, length of use).
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
6) The number and nature of similar marks in use on similar goods.
7) The nature and extent of any actual confusion.
8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
10) The market interface between applicant and the owner of a prior mark:
(a) A mere "consent" to register or use.
(b) Agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party.
(c) Assignment of mark, application, registration and good will of the related business.
(d) Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
12) The extent of potential confusion, i.e., whether de minimis or substantial.
13) Any other established fact probative of the effect of use.”
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973)
Not all 13 factors articulated in Du Pont and discussed in In re Majestic may be relevant or of equal weight in a particular case and anyone factor may
control
In ex parte cases before the TTAB, factors 1, 2, 3, 4, 6 and 10 are considered most relevant. See Trademark Manual of Examining Procedure (TMEP)
Section 1207.01
INITIAL
INTEREST
CONFUSION
PRELIMINARY
INJUNCTION
LACHES
ABANDONMENT
Some factors like “actual confusion” (Du Pont factor # 7) are afforded little if any weight, in ex parte proceedings. In re National Novice Hockey
League Inc., stands for the proposition that in ex parte proceedings, there is no opportunity to hear from registrant regarding instances of actual
confusion and evidentiary record may only include the mark, application, specimen and description of goods and services.
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re E.I. DuPont Denemours & Co., 476 F.2d 1357; 177 USPQ 563
(CCPA 1973)
In re National Novice Hockey League, Inc., 1984 TTAB Lexis 141; 222 U.S.P.Q. 638 (TTAB 1984)
N/A – Theory of initial interest confusion is not recognized by the TTAB.
See brief discussion by the TTAB in United States Conference of Catholic Bishops v. Media Research Center, 2005 TTAB Lexis 177 (not citable).
According to case and long standing principles, “mere possibility” of confusion is not enough nor are “theoretical possibilities of confusion, deception,
or mistake” or “de minimis situations,” quoting Witco Chemical Company, Inc. v. Whitfield Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43
(CCPA 1969).
Federal Circuit applies law of regional circuit. Payless Shoesource, Inc. v. Reebok In'tl, Ltd., 998 F.2d 985, 987-988 (Fed. Cir. 1993)
N/A – The TTAB decides and determines the right to register a mark. The TTAB is not authorized to decide and determine the right to use or to stop
using a mark. 15 USCS § 1067
Federal Circuit applies law of regional circuit. Payless Shoesource, Inc. v. Reebok In'tl, Ltd., 998 F.2d 985, 987-988 (Fed. Cir. 1993)
1) Unreasonable delay in asserting one’s rights against another
2) Material prejudice to party raising laches defense as a result of the delay
Passage of time is not enough, burden of proof is on party asserting defense, with a trademark opposition or cancellation proceeding, this defense must
be tied to a party's registration of a mark and not the use of the mark
Aquion Partners Limited Partnership v. Envirogard Products Limited, 43 U.S.P.Q.2d 1371 (TTAB 1997)
2 ways to abandon mark under 15 U.S.C. § 1127:
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
FAIR USE
1) nonuse for 3 consecutive years is prima facie evidence of abandonment
2) Use of mark has been discontinued without an intent to resume use
In 1996, period of use for prima facie case of abandonment was increased from 2 to 3 years. Therefore, note that Imperial Tobacco discusses 2
consecutive years of nonuse instead of 3 for establishing a prima facie case of abandonment.
Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990)
N/A – Defense does not apply at the TTAB. Under 15 USCS § 1115 b(4), only available in a civil infringement action involving the use of a registered
mark and not registrability
In an infringement action, defendant’s use of mark must be made fairly and in good faith to describe the goods to the users of the goods.
Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1986 TTAB LEXIS 173; 1 U.S.P.Q.2D (BNA) 1445
USE OF
INTERNET
KEYWORDS
SECONDARY
LIABILITY
Federal Circuit applies law of regional circuit. Cortland Line Co. v. Orvis Co., 203 F.3d 1351, 1361 (Fed. Cir. 2000)
The use of keywords for internet searches is a “use in commerce within the meaning of the Lanham Act.
Rescuecom Corp. v. Google Inc., 562 F.3d 123, 90 U.S.P.Q.2d 1287, C.A.2 (N.Y.), April 03, 2009 (NO. 06-4881-CV)
Contributory Trademark Infringement:
To be liable for contributory trademark infringement, a defendant must have (1) “intentionally induced” the primary infringer to infringe, or (2)
continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied. Perfect 10,
Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 83 U.S.P.Q.2d 1144 (2007); citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214
U.S.P.Q. 1 (1982).
When the alleged direct infringer supplies a service rather than a product, under the second prong of this test, the court must “consider the extent of
control exercised by the defendant over the third party's means of infringement.” Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 83
U.S.P.Q.2d 1144 (2007); citing Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir.1999). For liability to attach, there
must be “[d]irect control and monitoring of the instrumentality used by a third party to infringe the plaintiff's mark.”
Vicarious Trademark Infringement:
DILUTION
Vicarious liability for trademark infringement requires “a finding that the defendant and the infringer have an apparent or actual partnership, have
authority to bind one another in transactions with third parties or exercise joint ownership or control over the infringing product.” Perfect 10, Inc. v.
Visa Intern. Service Ass'n, 494 F.3d 788, 83 U.S.P.Q.2d 1144 (2007); citing Hard Rock Café Licensing Corp. v. Concession Servs., Inc., 955 F.2d
1143, 1150 (7th Cir.1992)
Party asserting dilution claim must establish the following:
1) Own a mark that is “truly famous” among the general public
2) “Truly famous” nature of mark must be achieved prior to filing date of application that is being opposed or the application filing date of the
registration that party wishes to cancel
3) Mark must be distinctive and more distinctive than acquired distinctiveness or secondary meaning standard under Section 2(f)
4). Marks must be identical or at least substantially similar
5) Must establish blurring
Instead of actual dilution, TTAB applies a likelihood of confusion analysis to intent to use applications or marks currently not in use. Unclear whether
actual dilution or likelihood of dilution would apply in situations involving marks that are being used.
According to the holding in The Toro Company, and unlike standard likelihood of confusion analysis, the respective marks for dilution claims must be
AIPLA TRADEMARK LITIGATION COMMITTEE
LEGAL STANDARDS OF THE FEDERAL CIRCUIT COURTS – 2011 UPDATE
“essentially the same” or identical.
Blurring occurs when one viewing the new mark concludes that famous mark is now “associated with a new product or service or to associate the
famous mark with its owner less strongly or exclusively.” Concept is discussed in The NASDAQ Stock Market, Inc. v. Antartica, S.R.L.
The Toro Company v. ToroHead, Inc., 61 USPQ2d 1164 (TTAB 2001)
The NASDAQ Stock Market,Inc. v. Antartica,S.R.L., 69 USPQ2d 1718 (TTAB 2003)
The Board may look to all relevant facts in determining whether applicant's trademark will blur the distinctiveness of opposer's mark. The Lanham Act
provides the following guidance: 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 between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(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) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
7-Eleven, Inc. v. Lawrence I. Wechsler, 2007 TTAB LEXIS 58 (Trademark Trial & App. Bd. May 15, 2007), 83 U.S.P.Q.2D (BNA) 1715
DAMAGES
2449102_1
Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark
which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may, upon payment of the prescribed fee, file an
opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12
of this Act of the mark sought to be registered.
First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Group, Inc., 476 F.3d 867, 870 (Fed. Cir. 2007)
N/A – The TTAB does not hold any party in contempt, or award attorney’s fees, other expenses or damages to any party.
Central Mfg. Inc., v. Third Millenium Technology Inc., 61 USPQ 2d 1210 (TTAB 2001)
See also 37 CFR 2.127(f)