Trademark and Unfair Comp.
Boston College Law School
February 25, 2009
Likelihood of Confusion
Causes of Action
• Trademark Causes of Action
–
–
–
–
Infringement
Dilution
False Advertising
Cybersquatting
Infringement
• Lanham Act §32(1) (15 U.S.C. §1114):
– 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 … shall be
liable in a civil action by the registrant for the remedies
hereinafter provided.
Infringement
• Initial Questions
–
–
–
–
Issue of fact or issue of law?
Who must be confused?
How much confusion must there be?
Confused as to what?
Infringement
• Types of confusion
–
–
–
–
–
Product (e.g. Mike shoes)
Source (e.g. Nike mittens)
Sponsorship (e.g. Nike on soup can)
Initial interest (e.g. “buy Nike’s here”)
Reverse confusion
Polaroid v. Polarad
287 F.2d 492 (2d Cir. 1961)
• Polaroid Factors
–
–
–
–
–
–
–
–
(1) Strength of plaintiff’s mark
(2) Degree of similarity of marks
(3) Proximity of products or services
(4) Likelihood of plaintiff bridging the gap
(5) Evidence of actual confusion
(6) Defendant’s good faith
(7) Quality of defendant’s products
(8) Sophistication of buyers
Examples of Mark Similarity
• Sight
– Squirt v. Quirst (soft drinks)
– Cartier v. Cattier (cosmetics)
– Tornado v. Vornado (appliances)
• Sound
– Cygon v. Phygon (insecticide)
– Huggies v. Dougies (diapers)
– Bonamine v. Dramamine (drugs)
• Meaning
– Cyclone v. Tornado (link fencing)
– Pledge v. Promise (furniture polish)
– Mountain King v. Alpine Emperor (christmas trees)
E&G Gallo v. Gallo Nero
Banfi v. Kendall-Jackson
Hypothetical
Nescher
“SLEEKCRAFT”
AMF
“SLICKCRAFT”
•
•
•
•
Recreational boats
Used for waterskiing, fishing, etc
Local retail boat stores
$50 million annual sales
•
•
•
•
Power boats
Used for racing, etc.
Local retail boat stores
$6 million annual sales
Trade Dress Infringement
• Lanham Act §43(a) (15 U.S.C. §1125(a)):
– (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 … which -• (A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such
person or with another person … shall be liable in a civil
action ….
Best Cellars v. Grape Finds
Best Cellars v. Grape Finds
Best Cellars v. Wine Made Simple
Private Labels
Problem
Administrative Details
• Next Assignment
– VI.A.3 – Types of Confusion
– VI.A.4 – Trademark Use
• Schedule Adjustments
– No class Wednesday, March 11