Trademark in General

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Purpose and Scope

A trademark is a word, name, symbol, device or any combination thereof which is used to identify and distinguish goods of one person from goods manufactured or sold by others and to indicate the source of the goods, even if the source is unknown. 15 U.S.C. § 1127. Service marks identify services as opposed to goods. Trademarks and service marks must be generally distinctive.

Statutory Trademark Protection

1. 15 U.S.C. § 1114 prohibits using:

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” therewith when “such use is likely to cause confusion, or to cause mistake, or to deceive….

2. Section 43(a) of the Lanham Act (codified at 15 U.S.C. § 1125) prohibits the use of:

any word, term, name, symbol, or device … 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 the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (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.

Infringement

Trademark Ownership. A plaintiff must demonstrate ownership of a protectable mark. Ownership can arise from registration of the mark with the federal Patent and Trademark Office or from a history of use. In the latter situation, the plaintiff may need to demonstrate that the mark is inherently distinctive or that it has acquired secondary meaning. See, e.g., A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986).

Reasonable Likelihood of Confusion. The ultimate test under each code provision is whether the disputed use creates a reasonable likelihood of confusion in the marketplace as to source or origin of a good or service. See Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989). Likelihood of confusion is determined by applying a multifactor analysis taking into consideration several non-exclusive factors that vary somewhat between jurisdictions. The primary factors include: (1) strength of the mark; (2) market proximity of the goods involved; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) the defendant’s intent in selecting the mark; and (8) the likelihood of expansion of the product lines. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

Dastar Corp. v. Twentieth Century Fox Film Corp. et al., 539 U.S. 23 (2003). The Court held that Dastar, a corporation that used information in the public domain without giving credit to the original television production, did not violate Section 43(a) of the Lanham Act. Fox had exclusive television rights to a book and created a television series thereon but let the copyright to the series expire, leaving the series in the public domain. Fox later reacquired the television rights in the book and SFM Entertainment and New Line Home Video, Inc., in turn, acquired exclusive rights to distribute the series on video. Dastar released a video set, which it made from tapes of the original television series and sold as its own product. Respondents claimed that Dastar, in selling the videos, made a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which ... is likely to cause confusion ... as to the origin ... of [its] goods” in violation of section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a). The court found that “origin of goods” did not refer to the person or entity with whom the ideas contained in the video originated, but instead referred to the producer of the tangible product sold in the marketplace, in this instance Dastar’s videotapes. The court held that a favorable ruling on Respondents' claim based on the Lanham Act, which is intended to protect consumers from confusion, would be an inappropriate use of federal trademark law and would “create a species of mutant copyright law that limits the public’s federal right to copy and use." Id. at 2048 (internal quotations and citation omitted).

Fair Use of Trademarks and the First Amendment

Courts have taken care to ensure that Lanham Act restrictions do not intrude on First Amendment values. See, e.g., New Kids on the Block v. News America Publ’g, Inc., 971 F.2d 302, 307 (9th Cir. 1992). See also Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005) (“Congress left little doubt that it did not intend for trademark laws to impinge the rights of critics and commentators.”); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002) (trademark rights do not “entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view”); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) (upholding, on First Amendment grounds, the right of a dissatisfied customer to create a critical website using the company’s trademark); Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (holding that the Lanham Act cannot be invoked where, as in the case of noncommercial websites, there is no trademark use). See generally Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. REV. 960, 973 (1993); Robert Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 WIS. L.REV. 158, 195-96 (“Famous trademarks offer a particularly powerful means of conjuring up the image of their owners, and thus become an important, perhaps at times indispensable, part of the public vocabulary. Rules restricting the use of well-known trademarks may therefore restrict the communication of ideas.”).

See Fair Use Defenses for more information on fair use.

Remedies

  1. Injunctive relief is provided for under 15 U.S.C. § 1116.
  2. Recoverable damages include defendant’s profits, any damages sustained by plaintiff and the costs of the action. 15 U.S.C. § 1117.
  3. Attorney’s fees may be awarded to the prevailing party “in exceptional cases….” 15 U.S.C. § 1117.

Anti-Dilution

Federal Trademark Dilution Act

15 U.S.C. § 1125(c) provides a federal claim for dilution of a “famous” mark. To prevail under the Federal Trademark Dilution Act ("FTDA"), a plaintiff must demonstrate that: (1) the senior mark is famous; (2) the senior mark is distinctive; (3) the junior use is commercial; (4) the junior use began when the senior mark was famous; and (5) the junior use dilutes the distinctive quality of the senior mark. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999) (overruled on other grounds by Moseley v. V Secret Catalogue, Inc., 527 U.S. 418, 433 (2003)). In Moseley, the U.S. Supreme Court held that plaintiffs must demonstrate actual dilution as opposed to a likelihood of dilution. 527 U.S. 418, 433. However, the Trademark Dilution Revision Act of 2006 has since amended the FTDA and overturned Moseley by requiring only a likelihood of dilution for a successful claim. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 n.2 (9th cir. 2008); Trademark Dilution Revision Act, Pub.L. No. 109-312 § 2(1), 120 Stat. 1730 (2006). See the section below for more on the Trademark Dilution Revision Act.

In considering whether a mark is famous, the FTDA provides a non-exclusive list of eight factors that courts may consider:

  1. the duration and extent of use of the mark;
  2. the duration and extent of advertising and publicity of the mark;
  3. the degree of inherent or acquired distinctiveness of the mark;
  4. the geographical extent of the relevant trading area;
  5. the channels of trade;
  6. the degree of consumer recognition of the mark;
  7. the nature and extent of similar third party use; and
  8. whether the mark is registered.

Cases Applying the Federal Trademark Dilution Act to Internet Uses

  1. Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F. Supp. 2d 496 (E.D. Va. 1999), aff ’d, 217 F.3d 843 (4th Cir. 2000). The court found for plaintiffs in a trademark infringement case, brought under Lanham Act § 43(a), based on defendant’s registration of four Internet domain names nearly identical to plaintiffs’ mark. However, the court rejected plaintiffs’ FTDA claim, finding that the mark “Washington Speaker’s Bureau” did not meet the high bar of fame required by the FTDA. See also Ford Motor Co. v. Great Domains.com Inc., 177 F. Supp. 2d 656 (E.D. Mich. 2001) (finding that mere registration of a domain name is insufficient to constitute a claim of dilution). The Washington holding was criticized in Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112 (D. Conn. 2002), where the court found that use of a trademark coupled with a generic term in a domain name could be confusingly similar even if the generic term placed the trademark in a different context than its normal use. See discussion in Chapter 4 (C)(5)(b)(3)(v).
  2. America Online, Inc. v. AT&T, 64 F. Supp. 2d 549 (E.D. Va. 1999). The court rejected plaintiff’s dilution claim, finding the phrase “You’ve Got Mail” generic and descriptive, and thus not protected under 15 U.S.C. § 1125(c). The Fourth Circuit affirmed in part but remanded on the issue of whether AOL’s “Buddy List” term was generic. America Online, Inc. v. AT&T, 243 F.3d 812 (4th Cir. 2001). This case was distinguished in U.S. Search, LLC v. U.S. Search.com Inc., 300 F.3d 517 (3d Cir. 2002), holding that the mere fact that the PTO had registered U.S. Search.com’s mark pursuant only to its function as a database search service did not create the presumption that the mark “U.S. SEARCH” was suggestive with regard to all functions, including U.S. Search, LLC’s function as an executive recruiting company. “That the PTO deemed DotCom’s mark to be suggestive simply has no bearing on whether LLC’s use of ‘U.S. Search’, in connection with different services … is suggestive as well." Id. at 525.
  3. Great Eastern Resort Corp. v. Virtual Resort Solutions, LLC, 189 F. Supp. 2d 469 (W.D. Va. 2002). In granting a preliminary injunction against Virtual Resort’s use of the domain name “massnutten.com,” the court determined that the name of Great Eastern’s resort area, “Massnutten,” was a protectable mark, even though it denoted a geographic location, because the term was so singularly associated with Great Eastern’s resort over the previous thirty years that it had acquired secondary meaning. Moreover, the court held that Virtual Resort’s use of the “massnutten.com” domain name was (1) not a fair use of the geographic term “Massnutten” because Virtual Resort’s Web site content almost exactly mimicked the content of Great Eastern’s Web site advertising the resort, and (2) not a “de facto” use under America Online, Inc. v. AT&T, see above, because the use of “Massnutten” denotes a geographic source and not a function as with the term “You’ve Got Mail.”
  4. Degidio v. West Group Corp., 191 F. Supp. 2d 904 (N.D. Ohio 2002). The court held that Degidio’s use of “Lawoffice.net” as a mark and as a domain name was not a protectable trademark because (1) the term was descriptive and not suggestive, and (2) the term had not acquired a secondary meaning because of the short period of use, limited advertising expenditures, limited number of customers, limited sales and general lack of any compelling evidence indicating that West Group knew of Degidio’s mark.
  5. Online Partners.Com, Inc. v. Atlanticnet Media Corp., 2000 U.S. Dist. LEXIS 783 (N.D. Cal. 2000). The court granted a permanent injunction against the operators of an adult-oriented Web site which had registered a domain name, Gaynet.com, that was confusingly similar to plaintiff’s and tended to tarnish the reputation of plaintiff’s previously established Web site Gay.net, which offered email and chat services.
  6. The Network Network v. CBS, Inc., 2000 U.S. Dist. LEXIS 4751 (C.D. Cal. 2000). The court granted declaratory relief to plaintiff and denied defendant’s trademark infringement and dilution claims under 15 U.S.C. §§ 1125(a) and (c). In denying defendant’s counterclaim under the Federal Trademark Dilution Act, the court noted that defendant’s disputed mark “TNN” (The Nashville Network) had not been famous in 1989 when plaintiff first began using it as a mark for its own company (The Network Network). Moreover, the court found that defendant would not experience dilution, as plaintiff had registered and been using the domain name “TNN.com” for four years without complaint from defendant.
  7. Victoria’s Cyber Secret LP v. V Secret Catalogue, 161 F. Supp. 2d 1339 (S.D. Fla. 2001). The federal court stated that the fact that the infringer’s domain names were to be used for “entertainment of a lascivious nature suitable only for adults” mandated a finding that the domain names created trademark dilution by tarnishing the original mark. Id. at 1355. Courts uniformly have held that the use of a famous trademark in a domain name used to purvey pornography constitutes dilution. See Ford Motor Co. v. Lapertosa, 126 F. Supp. 2d 463 (E.D. Mich. 2001); Hasbro Inc. v. Internet Entertainment Grp. Ltd., 40 U.S.P.Q.2d 1479 (W.D. Wash. 1996).
  8. Visa Int’l Serv. Ass’n v. JSL Corp., 2002 U.S. Dist. LEXIS 24779 (D. Nev. 2002). In a summary judgment motion, the court held that JSL’s registration and ownership of the domain name “evisa.com” diluted Visa’s long held trademark VISA due to (i) the incorporation of “visa” into JSL’s domain name, (ii) the likelihood that consumers would have to wade through hundreds of Web sites to get to Visa’s Web site if unregulated, and (iii) the inability of Visa to control its good name. In addition, the court held that JSL was liable under the Anti-Cybersquatting Consumer Protection Act as its earlier efforts to resell the “evisa.com” domain name constituted bad faith. See subsection C(5)(b) for a discussion of the Anti-Cybersquatting Consumer Protection Act.
  9. Key3Media Events, Inc. v. Convention Connection, Inc., 2002 U.S. Dist. LEXIS 4043 (D. Nev. 2002). The court held that Convention’s use of the domain names “comdex.com” and “lasvegascomdex.com,” Web sites aimed at providing travel and lodging arrangements for travelers to the Comdex computer convention run by Key3Media, infringed Key3Media’s registered trademark COMDEX because it created a likelihood of confusion and also dilution.
  10. Ty, Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), cert. denied, 538 U.S. 971 (2003). The court determined that the use of the terms “Beanie Babies” and “Beanies,” descriptive of the product manufactured by Ty, did not constitute trademark dilution when used in conjunction with a domain name and Web site content that was devoted to the after-market sale of Ty’s product. However, the court held that the use of the term “Other Beanies” in association with the sale of products not manufactured by Ty did constitute trademark dilution as it associated goodwill built up in Ty’s trademark with products not manufactured by Ty.
  11. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir.2004), cert. denied, 544 U.S. 974 (2005). On appeal by both parties, the Ninth Circuit affirmed in part, reversed in part, and remanded the district court ruling that granted Nissan Motor Co.’s (“Motor”) motion to permanently enjoin Nissan Computer Corp. (“Computer”) from placing advertisements on Computer’s websites. The court affirmed that Motor was entitled to summary judgment on trademark infringement for automobile-related advertisements on Computer’s websites, finding that Computer "traded on the goodwill of Nissan Motor by offering links to automobile-related websites." Id. at 1019. However, the court reversed the decision to enjoin Computer from placing links on its websites that contained disparaging comments about Motor. Id. at 1018. The court found this information to be non-commercial speech protected by the First Amendment that neither infringed Motor’s mark nor violated the FTDA despite its potentially negative impact on Motor’s commercial activities. Finally, the court held that there was an issue of fact as to whether the Nissan mark was famous as of 1991, when Computer commenced its operations. Id. at 1014. Thus the court remanded to the district court the question of whether Computer violated the FTDA.

Trademark Dilution Revision Act

The Trademark Dilution Revision Act ("TDRA") was signed into law on October 6, 2006, amending the FTDA. To succeed in a dilution claim, the TDRA requires a likelihood of dilution, rather than actual dilution as required in the FTDA. Trademark Dilution Revision Act, Pub.L. No. 109-312 § 2(1). The TDRA also reduces the universe of marks falling under its protection, requiring that marks be nationally well known to qualify. Id., § 2(2).

The TDRA expressly provides for protection against tarnishment, defined as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark;" and blurring defined as an "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." Id., §§ 2(1)(B) and (C).

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