Trademark Infringement and Dilution Steve Baron March 2
Trademark Infringement and Dilution Steve Baron March 2, 2006 1
What is a trademark Infringement? Ø Senior user owns mark Ø Junior user begins to use the same or similar mark on the same or similar goods or services Ø Likelihood of confusion in market 2
Who is the law protecting? Ø Consumers l The public’s right not to be confused Ø Mark owners l l The right to develop brand awareness The right to prevent free-loaders from trading on the mark owner’s good will and reputation in the market place 3
What law applies Ø Federal Statutes l The Lanham Act • 15 U. S. C. §§ 1051 - 1127 Ø State Statutes l Counterfeit Trademark Act • 765 ILCS 1049 l http: //www. legis. state. il. us/legislation/ilcs/ch 765 act 1040. htm Ø Judicial Decisions 4
Lanham Act (1) Ø Any person who shall, without the consent of the registrant Ø (a) Ø use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or Ø 5
Lanham Act Ø (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles 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, 6
Lanham Act Ø shall be liable in a civil action by the registrant for the remedies hereinafter provided. l l l Injunction Defendant’s profits Plaintiff’s damages Costs Attorney’s fees (if infringement willful) 7
Likelihood of Confusion Factors Ø Similarity of the Marks Ø Similarity of the Products Ø Area and Manner of Concurrent Use Ø Degree of Care Exercised by Consumers Ø Strength of Plaintiff’s Mark Ø Actual Confusion Ø Intent of Defendants 8
Types of Confusion Ø Forward l Ø Reverse l Ø Big Junior saturates market and overwhelms Small Senior User Initial Interest l Ø Small Junior trades off of Big Senior User Confusion that creates an initial customer interest (e. g. meta-tags, domain names) Post-Sale l Confusion of someone other than purchaser 9
Anticybersquatting Consumer Protection Act (ACPA) Ø Enacted in 1999 Ø Addresses the problem of domain name hi -jackers 10
Liability Under ACPA Ø Bad faith intent to profit from mark Ø Register, traffic in or use a domain name that: 11
Liability Under ACPA (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; Ø (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or Ø (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36. Ø 12
“Bad Faith” Elements under ACPA Ø (1) trademark or other IP rights in domain name; Ø (2) domain name consists of legal name of person or name used to identify person; Ø (3) person's prior use of domain name in connection with offer of goods or services; Ø (4) person's noncommercial or fair use of the mark in site; 13
“Bad Faith” Elements under APCA (5) intent to divert consumers from the mark owner's online location to a site accessible under the domain name; Ø (6) offer to transfer domain name to the mark owner or any third party for financial gain without having used or intended to use domain name to offer goods or services; Ø (7) provision of false contact information when applying for the registration of the domain name; Ø 14
“Bad Faith” Elements under APCA (8) registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names; Ø (9) the extent to which the mark incorporated in the domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section. Ø 15
Trademark Dilution Ø Lessening of a famous mark to identify and distinguish goods and services Ø Irrespective of: l l Competition between owner of mark and other parties; or Likelihood of confusion, mistake or deception 16
Trademark Dilution Ø “Blurring” distinctiveness of mark Ø “Tarnishing” reputation of mark 17
KRAFT v. KING VELVEEDA 18
Google v. American Blinds 19
Google v. American Blinds Ø AMERICAN BLINDS ® et al. Ø Google offers “Ad. Words” l l Advertisers bid on keywords “Sponsored Links” Ø American Blinds sues for trademark infringement, dilution, injury to reputation Ø Court denies motion to dismiss and allows suit to proceed 20
Orange Bowl v. Front and Center Ø Orangebowlticket. net l l l Confusingly similar Fair use Bad faith registration and use 21
KP Permanent Make-Up Ø Plaintiff must prove likelihood of confusion Ø Defendant asserting fair use need not show no confusion Ø How much confusion is too much confusion? 22
Moseley v. V. Secret Catalogue Ø Plaintiff (Respondent) = Victoria Secret Ø Defendant (Petitioner) = Mosely Ø Facts: l l l P owns famous mark, VICTORIA’S SECRET D opens shop in Kentucky, VICTOR’S SECRET D changes name to “Victor’s Little Secret” • Sell’s intimate lingerie, adult films and novelties etc. 23
Moseley v. V. Secret Catalogue Ø P sues D for trademark infringement and trademark dilution Ø P loses infringement claim but wins dilution claim in lower court Ø Supreme Court grants cert to determine whether FTDA requires proof of actual dilution or whether likelihood of dilution is sufficient 24
Moseley v. V. Secret Catalogue Ø Who wins? l The Little Guy! Ø Supreme Court holds that Victoria Secret must submit proof of actual dilution and that there is insufficient evidence in the record to show actual dilution Ø Case reversed and remanded 25
Moseley v. V. Secret Catalogue Ø So, now what? l How to prove dilution? • Surveys, experts…? l Legislative intervention? 26
Quote of the Day Ø “Every law has a loophole” l Proverb, unknown author 27
- Slides: 27