Trademark Infringement under Section 32(1) of the Lanham Act - South Florida Litigation and Arbitration Attorney

Trademark Infringement under Section 32(1) of the Lanham Act - South Florida Mediation, Litigation and Arbitration Attorney:

Section 32(1) of the Lanham Act protects trademark owners against the use in commerce of "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." 15 U.S.C. § 1114(1)(a). To prevail on a trademark infringement claim under Section 32(1), a plaintiff must show that: (1) its mark is valid; and (2) the defendant's use of the contested mark is likely to cause confusion. A certificate of registration provided by the U.S. Patent and Trademark Office ("PTO") is prima facie evidence of the validity of the registered mark. 15 U.S.C. § 1057(b).

One of the main issues in a trademark infringement claim is whether Defendant's use of the Plaintiff's trademarks is likely to cause confusion. In assessing whether a likelihood of consumer confusion exists, courts consider the following seven factors: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties' retail outlets (trade channels) and customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual confusion. The type of mark and actual confusion are the most important factors. Courts usually consider each of the factors set forth below.

a. The Type of Mark: There are four categories of marks, listed in order from weak to strong: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary. Id. The stronger the mark, the greater the scope of protection accorded to it; the weaker the mark, the less trademark protection it receives. The categories are based on the relationship between the name and the service or good it describes:

(1): Generic marks are the weakest and not entitled to protection-they refer to a class of which an individual service is a member (e.g., "liquor store" used in connection with the sale of liquor).

(2): Descriptive marks describe a characteristic or quality of an article or service (e.g., "vision center" denoting a place where glasses are sold).

(3): Suggestive terms suggest characteristics of the goods and services and require an effort of the imagination by the consumer in order to be understood as descriptive. For instance, "penguin" would be suggestive of refrigerators.

(4): An arbitrary mark is a word or phrase that bears no relationship to the product.

Various courts have also held that the degree to which third parties make use of the mark is important in gauging the strength of a mark. The less that third parties use the mark, the stronger it is, and the more protection it deserves. Finally, if a mark is 'incontestable,' that is, if it has been registered for five years with the [PTO], its holder has filed the affidavit required by 15 U.S.C. § 1065(3) with the [PTO], and the [PTO] has accordingly declared the mark 'incontestable,' then the mark's incontestability serves to enhance its strength.

b. Similarity of Mark: In assessing the similarity of the marks, the Court generally compare the marks and consider the overall impressions that the marks create, including the sound, appearance, and manner in which they are used.

c. Similarity of the Products the Marks Represent: The third factor requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.

d. Similarity of the Parties' Retail Outlets (Trade Channels) and Customers: The fourth factor takes into consideration where, how, and to whom the parties' products are sold. Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong. The parties' outlets and customer bases need not be identical, but some degree of overlap should be present.

e. Similarity of Advertising Media:

f. Defendants' Intent: The fifth factor relates to whether or not the Defendant adopted the marks with the intention of deriving a benefit from the Plaintiff's business reputation. This fact alone may be enough to justify the inference that there is confusing similarity. Indeed, a likelihood of confusion can be found as a matter of law if the Defendant intended to derive benefit from the Plaintiff's trademark.

g. Actual Confusion: Evidence of actual confusion is the best evidence of a likelihood of confusion. An example of actual confusion would be the fact that the Plaintiff had received complaints from customers who have been defrauded into purchasing products and services which they believed to be products and services of the Plaintiff.

Please keep in mind that the above information is being provided for educational purposes only.  It is not designed to be complete in all material respects.  Each case rises and falls on its own facts.  If you are considering instituting a trademark infringement action or have been named as a defendant, in such an action, please contact us for your initial free consultation.