Trademark Inringement Intro to IP Prof Merges 3.17.2010 Trademark Infringement Use in commerce
Infringement factors Pervasive role of the web When you need computer repair or computer support, RESCUECOM is ready to provide you fast and flawless technology support, 24/7.
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1-800-RESCUE-PC (1-800-737-2837)1-800RESCUE-PC (1-800-737-2837) AdWords is Googles program through which advertisers purchase terms (or keywords). When entered as a search term, the keyword triggers the appearance of the
advertisers ad and link. An advertisers purchase of a particular term causes the advertisers ad and link to be displayed on the users screen whenever a searcher launches a Google search based on the purchased search term.
[W]henever a searcher interested in purchasing furnace repair services from Company X launches a search of the term X (Company Xs trademark), an ad and link would appear on the searchers
screen, inviting the searcher to the furnace repair services of Xs competitor, Company Y. [W]henever a user launches a search for the term Rescuecom, seeking to be
connected to Rescuecoms website, the competitors advertisement and link will appear on the searchers screen. This practice allegedly allows Rescuecoms competitors to deceive and divert users searching for Rescuecoms website.
District Court: Googles actions are not a use in commerce under the Lanham Act because the competitors advertisements triggered by Googles programs did
not exhibit Rescuecoms trademark. Sections 32 and 43 of the Act, . . . , 15 U.S.C. 1114 & 1125, inter alia, impose liability for unpermitted use in commerce of anothers mark which is
likely to cause confusion, or to cause mistake, or to deceive, 1114, as to the affiliation . . . or as to the origin, sponsorship or approval of his or her goods [or] services . . . by another person. 1125(a)(1)(A).
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] 1-800 Contacts v. When U.com Pop-up ads
District court: Injunction granted 2d Cir.: Was When-U using plaintiffs TM in a trademark sense? 2 Related Issues
When-Us internal directory Display of pop-up ads on 1800 Contacts website Directory listings AA A,AAAAlcon,AABacus,AAACarlsbad,AA
ADenver,AAAElmira,AAAFresno,AAAG eorgetown,AAAHoyas,AAAIthaca,AAAI ona,AAAJacksonville,AAAKentucky,AA ALosAngeles,AAALA,AAAAmazon,AAA Nevada,AAAOrlando, . . . .
Analysis [WhenU] does not place 1800 trademarks on any good or service . . . When U does not reproduce or display 1800s [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? Sale of keywords 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 defendants action affect plaintiffs protectable TM interest?
Is TM law designed to broadly protect TM owners branding/business interests, or is it narrower than that? We have no idea whether Rescuecom can prove that Googles use of Rescuecoms
trademark in its AdWords program causes likelihood of confusion or mistake. AMF v. Sleekcraft Slick vs. Sleek
Competing goods Does a sale of defendants good replace a sale of plaintiffs 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?
Doh! 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 and (non purchasing) third parties Shading over into dilution theory Broader commercial interest Consumer protection vs. producer property interest
