Trademark Inringement Intro to IP Prof Merges 3

Trademark Inringement Intro to IP – Prof Merges 3. 19. 09

Trademark Infringement • “Use in commerce” • Infringement factors • Pervasive role of the web

1 -800 Contacts v. When U. com • Pop-up ads • District court: Injunction granted • 2 d Cir. : Was When-U “using” plaintiff’s TM “in a trademark sense”?

2 Related Issues • When-U’s internal directory • Display of pop-up ads on 1800 Contact’s website

Lanham Act sec. 32 – 15 USC 1114 (1) 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 on or 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, 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,

. . . shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) of this section, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. -- 15 USC 1114(b)

Sec 43(a) – 15 USC 1125(a) (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, [is liable in a civil action]

Directory listings <init. list. ><begin. dir. ><term. list. 001> AAA, AAAAlcon, AABacus, AAACarlsb ad, AAADenver, AAAElmira, AAAFresn o, AAAGeorgetown, AAAHoyas, AAAIt haca, AAAIona, AAAJacksonville, AAA Kentucky, AAALos. Angeles, AAALA, AA AAmazon, AAANevada, AAAOrlando, . .

Analysis • “[When. U] does not ‘place’ 1800 trademarks on any good or service. . . ” – p. 719 • “When U does not reproduce or display 1800’s [TM] at all. . . ”

Web address vs. TM • Locating a business vs. identifying a business • What about identifying businesses in directory to potential clients? – “We include 1 -800 -Contacts in our Directory listing” – is this a “use in commerce”?

Who makes “use in commerce” of a mark? 1 -800 -Mercedes case

Sale of keywords • Geico/Google case • How is the sale of keywords different? • Is this “use in commerce”?

Pop up Ads • Drugstore analogy • How similar to traditional product placement “wars” and tactics? • Reciprocal interaction between “real space” and “cyberspace”

Use/Likelihood of Confusion • Doctrinal argument • Important issue: how does defendant’s action affect plaintiff’s protectable TM interest? – Is TM law designed to broadly protect TM owner’s branding/business interests, or is it narrower than that?

AMF v. Sleekcraft

“Slick vs. Sleek” • Competing goods – Does a sale of defendant’s good replace a sale of plaintiff’s good? – High Cross-Elasticity of demand

Related Goods • No direct “replacement effect” • But: goods are close enough that similar marks may cause some competitive harm – Confusion/diversion/”blurring”

AMF/Sleekcraft Factors 1. 2. 3. 4. 5. 6. 7. 8. the strength of the mark; proximity or relatedness of the goods similarity of the marks; evidence of actual confusion; the marketing channels used; degree of customer care in purchase; defendant's intent in selecting the mark; likelihood of expansion into other markets.

Strength of mark in infringement analysis • Separate from invalidity analysis, e. g. , Park n’ Fly • Why relevant? Consumer associations again. . .

Similarity analysis • “Sight, sound and meaning” test KING vs. LION KING FAR SIDE vs. DISTANT SIDE CRAZY CAT v. KRAZY KAT • Role of (1) differentiating factors, and (2) disclaimers

Who is this?

D’oh!

Example • “The Distant Side ® Cartoon Series Is not related to and is not sponsored by, produced by or affiliated with the Far Side ® cartoons or Gary Lawson

Internet Era Doctrines • Use in Commerce • “Initial Interest Confusion”

Margreth Barrett, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses "In the Manner of a Mark, " 43 Wake Forest L. Rev. 893 (2008)

Post Sales Confusion • The brand (non purchasing) third parties • Shading over into dilution theory • Broader commercial interest – Consumer protection vs. producer property interest