Trademark Inringement - Berkeley Law

Trademark Inringement - Berkeley Law

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.

Our global computer support, including: hardware repair, software support, data recovery, virus removal, laptop repair, network service, and business support are available wherever and whenever you need them, especially if you need help RIGHT NOW!

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 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

Recently Viewed Presentations

  • Solar System - Astronomy

    Solar System - Astronomy

    (a) Two objects that have the same angular size may have different. linear sizes if they are at different distances from the observer. (b) For. an object of a given linear size, the angular size is smaller the farther. the...
  • PRESENTATI ON NAME Welcom e to W U!

    PRESENTATI ON NAME Welcom e to W U!

    Wilmington University started in 1968 as Wilmington College with a charter class of 194.. Became a University in 2007.. WU now enrolls over 14,750 students with 13 sites in DE, NJ, and MD.. Accredited by the Middle States Commission on...
  • Draw-A-Man Test

    Draw-A-Man Test

    -Upon Goodenough's request, he expanded and revised the Draw-A-Man test and built upon the theories behind it-Collected data from children of all cultural backgrounds, even children who had never seen a pencil or paper-Goodenough-Harris Draw-A-Person Test published in 1963-Children's Drawings...
  • CONTRACEPTION UPDATE 17 March 2016 Josephine Percival SRN

    CONTRACEPTION UPDATE 17 March 2016 Josephine Percival SRN

    25% with liver enzyme inducers (mostly carbamazepine and none with lamotrigine) No link with weight. Pregnancy rate . Overall 0.049 per 100 implants fitted. Method failure rate 0.01 per 100 implants. 11.6% of all in-treatment pregnancies were . ectopic.
  • CSE 245 Lecture Notes

    CSE 245 Lecture Notes

    Arial 宋体 Verdana Times New Roman Wingdings Book Antiqua WP MathA WP MathB English111 Vivace BT Profile Microsoft Equation 3.0 CSE 246: Computer Arithmetic Algorithms and Hardware Design Motivation Topics: Standard Standard Standard Standard Standard - Example Standard - Example...
  • Advances in predictive thermo-mechanical modelling for the JET

    Advances in predictive thermo-mechanical modelling for the JET

    Several tiles where found damaged with cracks and broken tie-rods during the last two shutdowns. Last high-power campaign has exposed weaknesses in divertor design requiring additional protection measures. In support to ITER, experiments at JET studied the impact of melting...
  • Art of Reading Smoke - Spirit Lake Fire Protection District

    Art of Reading Smoke - Spirit Lake Fire Protection District

    Art of Reading Smoke Last modified by: Roger Company: Hewlett-Packard ...
  • 22 -

    22 -

    VERY vanilla. O-4 SPOT ... Performance in milestone tours remains the primary consideration in next milestone screening. Selection to and subsequent superior performance at key post-milestone assignments is increasingly significant to follow on milestone screening.