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LLM Law Outlines > Intellectual Property (IP) Law Outlines

Trademark Infringement Outline

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21, 22, 23. Trademark – Infringement, Defenses

Infringement: Trademark Use, Likelihood of Confusion, Dilution
Defenses: Abandonment, First Amendment

MML 976-1023; 15 U.S.C. §§ 1051, 1052, 1057(c)-(d), 1065, 1115, 1125(a)

MML 1023-43, 1066-73, 1082-99; 15 U.S.C. §§ 1115(b)(4), 1125(c), 1127

Federal Cause of Action

  1. § 32(1) Infringement of registered marks

    • Any person who shall, without the consent of the registrant –

    • (A) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

    • (B) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction . . . to labels, signs, prints, packages, . . . or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided

  2. § 43(a)(1)(A) Infringement of unregistered marks: Confusion as to source

  3. § 43(a)(1)(B) False advertising

    • (a) Civil action

    • (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -

      • (A) is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval or his or her goods, services, or commercial activities by another person, or [Confusion as to Source]

      • (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, [False Advertising]

    • shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

  4. § 43(c) Dilution

  5. § 43(d) Cybersquatting

    • Reserving .com and domain that belonged to someone else

Elements of trademark Infringement

  1. Valid trademark: distinctive mark used in commerce where you have priority

  2. D “used” the trademark

  3. D’s use occurred “in commerce”

  4. D’s use “in connection with sale, offering for sale, distribution, or advertising” of goods or services

  5. Likelihood of confusion

Trademark Liability Analysis

(1) Threshold Issue: Trademark Use

  • “Use in Commerce”

    • trademark owner must use a mark in commerce to establish rights in the mark

    • s.45 Lanham Act: “use in commerce” means bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark

    • mark shall be deemed to be in use in commerce

      • (1) on a goods when

        • (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

        • (B) goods are sold or transported in commerce, and

      • (2) on service when it is used or displayed in the sale or advertising of services and the services are rendered in commerce… and the person rending the services is engaged in commerce in connection with the services

  • Stop competitors that confuse consumer/ harm competition

  • What type of use qualify? Use/ associate the mark in any way?

    • If they didn’t use the trademark as a mark but to make money may not be sufficient

    • Using the trademark as comparison not harming in a trademark way

    • Low barrier to pass, but more of an issue in the context of the internet

  • 1-800 Contacts v (2nd Cir.) [0:30]

    • Facts: was a software company that developed and distributed a software application known as "SaveNow". The program contains a directory that match specific URLs or search terms that the user enters into their browser to categories of popup advertisements. When the user typed "" into their browser the SaveNow program would match this to the category "eye-care" and retrieve an ad for vision direct. Advertisers could not request or purchase keywords to trigger their ads.The display of a particular advertisement was controlled by the category associated with the website or keyword, rather than the website or keyword itself.

    • Plaintiff argued there was trademark use

      • Popup ads: by causing Vision Direct's advertisement to appear when plaintiff's website was accessed, defendants "are displaying plaintiff's mark ‘in the advertising of' . . . Vision Direct's services."

      • Internally: when WhenU used plaintiff's mark by including it in the directory to trigger advertisements for companies that compete with plaintiff.

    • Holding: Doesn’t count as it is a functional use and not seen by a consumer

      • WhenU did not "use" P’s registered trademark under the Lanham Act's definition

      • Functional use of URL

      • Not seen by consumer

      • No sale of specific keywords to advertisers; just categories

      • No display of 1-800 Contacts on the popup ad

  • Rescuecom Corp v Google, Inc. (2d Cir. 2009) Product Placement; internal use

    • Facts: Rescuecom Corp (P) argued that Google, Inc.’s (D) use of P’s trademark was a “use in commerce” infringed its trademark through Google’s recommendation and sell of P’s TM to Google’s advertisers (including P’s competitors) when a Google user initiated a search of the term “Rescuecom” trigger the appearance of their advertisements and links in a manner likely to cause confusion for the consumer

    • DC ruled in favour of Google: when the users search Rescuecom, would not display R’s trademark at any way apparent to the consumers 2nd Cir. reversed

    • Held for P: Google’s use of the "Rescuecom" trademark constituted a "use in commerce" under the Lanham Act.

      • Google’s use was not internal + not the same as product placement

      • Mark shall be deemed to be “use in commerce” on services when it is used or displayed in the sale or advertising of services and services are rendered in commerce

    • Court rejected Google’s arguments:

      1. Inclusion of a trademark in an internal computer directory cannot constitute trademark use [because it is not communicated to the public]

        • Court: but Google’s recommendation and sale of P’s mark to it’s advertising customers are not internal uses Google’s use causes confusion to consumers

        • Distinguished from 1-800 case:

          • In 1-800, ads were displayed in a different window and did not affect the end-user's ability to access the plaintiff's website

          • Here, Google used P’s TM to Google’s advertising customers when selling its advertising services.

          • Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses (c.f. Internal directory in WhenU - 1-800did not imply that use of a trademark in a software program's internal directory precludes a finding of trademark use.)

          • Court: if we allow such use, operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion

      2. its use of R’s TM is same as a retail vendor who uses product placement to allow one vendor to benefit from a competitors’ name recognition:

        • Product placement: When a store-brand generic product is placed next to a trademarked product to induce a customer who specifically sought out the trademarked product to consider the typically less expensive, generic brand as an alternative not deceptive no liability

        • But deceptive plan of product placement designed to confuse consumers would result in liability under the Lanham Act

        • Court: here, Google creates a likelihood of consumer confusion as to trademarks searcher likely to believe mistakenly that the different name appeared is affiliated with the brand name sought in the search


  • The Lanham Act provides causes of action for infringement of registered and unregistered marks. (§§ 32(1), 43(a)(1)(A))

  • Elements of infringement: Valid trademark; Use of trademark by defendant; Defendant’s use occurred in commerce; Defendant’s use was in connection with sale, offering for sale, distribution, or advertising of goods or services; Likelihood of confusion

  • Trademark use online: use of a trademark in an internal software program doesn’t insulate a defendant from a charge of infringement if the mark is used externally. (Rescuecom)

(2) Likelihood of Confusion

  • (i) confusion-based infringement

  • (ii) dilution

  • (iii) extension by contract (franchising and merchandising)

  • (iv) domain names and cybersquatting

  • (v) indirect liability

  • (vi) false advertising

(i) Confusion-Based Infringement

General multi-factor “likelihood of confusion” test

  • AMF Inc. v Sleekcraft Boats (9th Cir. 1979)

    • Facts: AMF and Nescher both manufacture recreational boats. AMF uses the mark “Slickcraft” used since 1968 (boats for racing) and Nescher uses “Sleekcraft” AMF allege infringement

    • DC held: AMF’s trademark was valid but not infringed for unlikely confusion

    • Held for AMF: factors relevant to likelihood of confusion

      • Suggests likelihood of confusion case remanded to DC

      • No one factor predominate, all are considered

      1. Strength of the mark

        • Distinctiveness: stronger secondary meaning/ consumer associate the company with the mark, the stronger the strength of the mark; stronger linguistic link between the product and the name (descriptive marks are protected but on the lower end), the stronger the strength

        • Counter: the more the consumers know the mark, the less possibility that they would be confused

        • Slickcraft is a suggestive mark for boats (not too distinctive) weak mark entitled to restricted range of protection only infringement if marks are quite similar + goods closely related

      2. Proximity of the goods

        • The more likely the public is to make association between the producers of the related goods the less similarity in the mark is required to find likelihood of confusion the less similarity between the marks will suffice when the goods are complementary

        • Sold to the same class of purchasers

        • Here, non-competing, but similar in use and function: extremely close in this case, both for water skiing and speedy cruises

      3. Similarity of the marks important

        • To a consumer

        • Tested on 3 levels: sight, sound, meaning here, found all 3 to be similar

        1. Sight: though names appear dissimilar when viewed in conjunction with the logo, but the logo is often absent in advertisements

        2. Sound: similar - difference is only in a small part of a syllable

        3. Meaning: similar - closeness in meaning substantiate a claim of similarity of trademarks

          • Disclaimers can be effective in reducing likelihood of confusion if consumers are likely to notice them

      4. Evidence of actual confusion important

        • Confusion in both trade and in the mind of the buying public

        • Present confusion is persuasive proof that future confusion is likely, but may be discounted if unclear or insubstantial

        • Standard: reasonably prudent purchaser of the products

        • [Note: difficult to find, esp. if infringement is challenged early enough and there may not be very many of confused consumers court generally allow results of consumer surveys as evidence of actual confusion – but expensive]

        • Here: insignificant

      5. Marketing channels used

        • No evidence that both lines were sold together except at boat shows, but similar and parallel use of normal marketing channels

        • Each sells through authorised retail dealers in diverse localities, same sales and advertising method employed, identical price range, general class of boat purchasers exposed to the products overlap (though different submarkets)

      6. Type of goods and degree of care likely to be exercised by purchaser

        • Both produce high quality, expensive goods, boats are purchased only after thoughtful, careful evaluation of the product and the performance the purchaser expects

        • Standard: typical buyer exercising ordinary caution

          • Though wholly indifferent may be excluded

          • Standard includes the ignorant and the credulous

        • When goods are expensive, buyer can be expected to exercise greater care in his purchases [but depends on the buyers]

        • Trademarks are unimportant to average boat buyer – boats are not the type of purchase made only on general impression

        • Little harm to P’s reputation when D’s products is of equal quality though P cannot control D’s product’s quality

      7. D’s intent in selecting the mark; and important

        • D’s good faith intent matters because D would use the mark to confuse consumers; hurts D to have a bad intent [no evidence of intent to confuse]

        • D was unaware of P’s use of the Slickcraft mark when D adopted its name after notification of purported infringement, D designed a distinctive logo

      8. Likelihood of expansion of the product lines

        • Strong possibility that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing

        • When goods are closely related, any expansion is likely to result in direct competition

        • If both parties are diversifying their model lines strong potential that one or both parties will enter into and compete in each other’s submarket

  • Note: each circuit has its own multi-factor test, though largely overlap

  • Tylenol PM v Excedrin PM (2nd Cir):

    • Court sometimes focused on similarity, sometimes on differences

    1. Strength of the mark: “PM” refers to night time usage not generic but descriptive

      • No secondary meaning for Tylenol, but the trade dress has secondary meaning

      • “PM” suggesting something about the product (commonly used amongst these type of medication)

    2. Proximity of the goods: yes

    3. Similarity of the marks: “PM”, blue box, trade dress was strongly similar, create similar overall impression

    4. Actual confusion: P provided evidence, but DC found no actual confusion

    5. Marketing channels: similar, low sophistication of customer, despite being medication, it was cheap

    6. Goods; purchaser care

    7. Defendant’s intent

    8. Likelihood of expansion: similar product, but no

    • Standard: reasonably prudent consumers, need not have a ton of consumers to be confused, 10-15% is enough, not a high threshold

  • Incontestability: when strength of mark is weak only relevant for validity and not for infringement. Even if descriptive + no secondary meaning contestable but no likelihood of confusion.

Types of Confusion actionable under the Lanham Act

  1. Source of confusion

  2. Confusion as to sponsorship

  3. Initial interest

  4. Post-sale

  5. Reverse confusion

(a) Confusion as to Source

  • Can arise when the infringer is offering differing goods than those sold by a trademark owner

  • Court recognise that identical or even similar trademarks can sometimes cause confusion as to the source of the products even in the absence of direct product competition

  • Trademark owner may be hurt by this confusion:

    • (1) quality of the infringer’s product is inferior, causing consumers to blame the trademark owner and stop buying their products (though rare);

    • (2) trademark owner may wish to expand into that market, then confusion between the products will result

  • Non-competitive Goods History:

    • 19th cen. Competing Good doctrine:

      • 1905 Act: use on goods of the “same descriptive [class]”

    • Related Goods Doctrine (expanded): ordinary buyer would be likely to think there was some connection or sponsorship

      • Pancake batter and syrup don’t compete, but may create confusion

      • Aunt Jemina Mills v. Rigney, 247 F 407 (2d Cir), cert denied, 245 US 772 (1918) (enjoining defendant’s use of Aunt Jemima name on pancake batter)

    • 1946 Act: eliminates “goods of the same description ‘class’ encompasses origin, sponsorship, approval and connection

(b) Confusion as to Sponsorship P.996

  • Promotional Goods: e.g. Olympic logo on soup can consumer may think Olympic sponsored and suggest endorsed the product may harm trademark owner

  • Infringement test: do Consumers perceive sponsorships

    • Consumer perception can affect scope of TM protection

    • Accessing the similarity of marks through lens of actual consumer feedback loop if something is within scope of trademark protection and people stop doing it may change how people perceive things consumer would get confused as they are not used to seeing it

  • Whether there is harm to the trademark holder

    • Consumers don’t have to be confused at all as long as some class of people are confused in a way that “present a significant risk to the sales, goodwill, or reputation of the trademark owner”

    • Consumer are not confused as to whether they are buying from the trademark holder e.g. consumers seeing ford logo on baseball cap would not think the cap is made by ford

    • Deviate from traditional trademark values more on rights,

  • (1) Franchising: once franchising has become widespread, we can no longer assume that the trademark indicates the maker of goods licensing, sponsorship and affiliation become more important in a franchised world, and designation of actual source less important

  • (2) Merchandising: when trademark becomes the subject of the transaction consumer buying the product because of the mark (c.f. previously the logo was only to identify the goodwill behind the product, e.g. car buyer not buying the mark, but the car)

  • Board of Supervisors for Louisiana State University v Smack Apparel Co. (5th Cir. 2008)

    • Facts: 4 universities alleged that Smack (D) violated Lanham Act and infringed their trademark by selling t-shirts with the schools’ color schemes and other identifying indicia referencing the games of the schools’ football teams DC held for P Cir. affirmed

    • Held for Ps: D’s use of P’s color schemes and other identifying indicia creates a likelihood of confusion as to the source, affiliation, or sponsorship of the t-shirts

      1. Protectable trademark and secondary meaning

        • Well known color schemes Color scheme on product indicates Ps as sponsor/ source of the goods

          • Ps have been using their color combinations since the late 1800s, appear on all manner of material, featured on merchandise, esp. school sports teams apparels

          • Ps sold licensed products generated millions of dollars with color schemes and identifying marks

          • Advertising: Ps advertise with their school colors in almost every conceivable manner, referenced in newspaper and magazines

        • D’s intentional use of colors: D admitted it had incorporated the color schemes into its shirts to refer to the Universities and call them to the mind of the consumer D itself believed the color schemes had secondary meaning that could influence consumers

      2. Likelihood of confusion analysis

        • (1) type/strength of mark: P’s marks are strong likely to confuse

          • Stronger the mark, greater the likelihood that consumers will be confused by competing uses of the mark

          • Used for 100+ yrs strong

        • (2) similarity of the marks: striking similarity likely to confuse

          • Similar in look, sound and meaning, contained very similar colors schemes, words and images

        • (3) similarity of the products/ services likely to confuse

          • Reject D’s argument that its t-shirts differed from P’s products because the use of irreverent phases/ slang language, because D’s use of such phrases and language was a misuse of the Universities’ good will in its marks

        • (4) identity of retail outlets and purchasers likely to confuse

          • Ps often sold wholesale to the same retailers who purchase D’s products

        • (5) identity of advertising media minimally proving likely to confuse

          • D used P’s color schemes, logos and designs in advertising its shirts at the same/ similar venues as those used by P

          • P participated in the same trade shows as P and displayed its shirts at the trade shows (but not significant advertising channel)

          • D doesn’t sell to public nor advertise

        • (6) D’s intent to profit from P’s reputation likely to confuse

          • D admitted that it is no coincidence that D’s shirt incorporated the color schemes of P’s and he designed the shirts to make people think of the particular school that each shirt targeted but not trying to confuse source

          • Court rejected, but didn’t discuss distinction between shirt intents to make consumers to think of the schools, or if the shirt is sponsored/ made by Ps held in favor of Ps

          • Most people not buying from website, disclaimer on web is insignificant

        • (7) actual confusion likely to confuse

          • Evidence that consumers have been actually confused in identifying D’s use of a mark as that of the P

        • (8) degree of care exercise by potential purchasers likely to confuse

          • DC held t-shirts are relatively inexpensive impulse items, not purchased with high degree of care

          • Where items are less expensive, buyer may take les care in selecting the time increasing risk of confusion

      • Whether a consumer cares about official sponsorship is a different question form whether that consumer would likely believe the product is officially sponsored Court only focused on measuring the likelihood of confusion

(c) Reverse Confusion

  • Large co. may adopt mark of smaller trademark owner risk that the public will associate the mark not with its true owner but with the infringer (who spent great deal of $ to advertise it)

  • Reverse confusion is trademark infringement, size of companies doesn’t matter companies have periodically been forced to halt or even retract major advertising campaigns

  • When junior user is a larger company that appropriates mark of a smaller one

  • E.g. Big O Tires (smaller company) used the term “Big Foot” for their tires Good Year later adopted the term and spent $ on advertising public associate the mark with the junior user generally considered as actionable

(d) Timing of Confusion

  • Initial interest confusion

    • Confusing consumers initially to attract them to a product, and dispelled before purchase

    • E.g. Steinway v. Steinweg: court finds actionable to trademark infringement though purchaser would realise before purchasing initial interest confusion affected B’s search and arguably influenced her purchasing decision

    • As internet has become more widely used less attraction to initial interest confusion

    • Domain name, e.g. (4th Cir. 2001)

      • thought it is “people for ethical treatment of animals” turns out to be “people eating tasty animals” court found infringement

      • initial interest confusion using someone else mark to draw their attention, may still buy it after knowing it is not the same product court: but doesn’t matter, already affected their purchase

      • no parody because connection not simultaneous

      • use with good/ services where hindering consumer access to TM owner and/or include links

    • Multi Time Machine, Inc. v, Inc. (9th Cir. 2015) P.1011

      • Facts: Customer search on Amazon for a watch manufactured by P since Amazon doesn’t sell that watch, it produces a list, with photos, of other brands of similar style watches, identified by brand names P alleged D’s search results creates a likelihood of confusion but since no evidence of ay actual confusion + other brands are clearly identified by name DC held for D Cir affirmed

      • Held for D: D’s search results page clearly labels the name and manufacturer of each product offered for sale + includes photos no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products

      • Test: whether a reasonably prudent consumer in the market place is likely to be consumed as to the origin of the goods

(1) Who is the relevant reasonable consumer?

  • Nature of goods and type of a typical consumer exercising ordinary caution

  • Less likelihood of confusion where buyers exercise care and precision in their purchase, e.g. for expensive/ sophisticated items

  • Here: watches are expensive relevant consumer is reasonably prudent consumer accustomed to shopping online

(2) What would he reasonably believe based on what he saw on the screen

  • Clear enough labeling and appearance of the products

  • Here: Products so clearly labeled by Amazon (with product’s name and manufacturer in large, bright, bold letters, and photos)

  • Unreasonable to suppose that the reasonably prudent consumer accustomed to shopping online would be confused about the source of the goods so Amazon can show other things that is related to the search result

  • To establish likelihood of confusion, P must show that confusion is likely, not just possible

  • Note: not applying Sleekcraft test for analyzing whether 2 competing brands’ marks are sufficiently similar to cause consumer confusion.

    • Here, it is the design of search result page offering competing mark and products that confuses consumers

    • But court still evaluated remaining Sleekcraft factors (which are neutral/ unimportant in this circumstance)

      • Actual confusion: no evidence of actual consumer confusion

      • Defendant’s intent: D clearly labelled each product to prevent possible confusion about the source of the product

  • Dissent: jurors, and not judge should decide what labeling may confuse shoppers/ likelihood of initial interest confusion

  • Prof: court is making it more difficult to establish initial interest confusion

(e) Post-sale confusion P.1021

  • Non purchaser, but third parties mistake the source of the purchased product (i.e. when seeing a person wearing counterfeit)

  • Court: constitute trademark infringement, should be protected under Trademark Law: trademark owner invested time and money, would harm the exclusivity of a luxury good

  • Scholars: shouldn’t be protected, as buyer wasn’t confused, putting money in hands of luxury company that wants to protect status of their goods

Test of trademark infringement: Likelihood of confusion

  • Likelihood

    • “probable”; not merely possible

    • Actual confusion not required

    • Appreciable # of “reasonably prudent purchasers”

      • Expected to exercise appropriate degree of care, caution, and power of perception in view of market choice

      • Includes potential customers and investors

  • Confusion

    • Confusion as to

      • Source (including revenue)

      • Sponsorship

      • Affiliation

    • Extent and Timing

      • 15% = “strong evidence” LOC

      • Initial interest confusion

      • Post-sale confusion

      • “call to mind” is not confusion


  • Likelihood of confusion is assessed by a multi-factor standard (Sleekcraft):

    1. Strength of the mark

    2. Proximity of the goods

    3. Similarity of the marks

    4. Evidence of actual confusion

    5. Marketing channels used

    6. Type of goods and degree of care likely to be exercised by the consumer

    7. Defendant’s intent

    8. Likelihood of expansion of product lines

  • Many types of possible confusion: analyze whether actionable and desirability of actionability

    1. Sponsorship

      • Can give broad rights to material that is the subject of purchase, rather than just (or instead of being) an indicator of source...

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