Trademark Inringement
Intro to IP – Prof Merges
3.19.2012
Trademark Infringement
• “Use in commerce”
• Infringement factors
• Pervasive role of the web
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AdWords is Google’s program through
which advertisers purchase terms (or
keywords). When entered as a search
term, the keyword triggers the
appearance of the advertiser’s ad and
link. An advertiser’s purchase of a
particular term causes the advertiser’s
ad and link to be displayed on the user’s
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 X’s
trademark), an ad and link would
appear on the searcher’s screen,
inviting the searcher to the furnace
repair services of X’s competitor,
Company Y.
[W]henever a user launches a search
for the term ‘‘Rescuecom,’’ seeking
to be connected to Rescuecom’s
website, the competitors’
advertisement and link will appear
on the searcher’s screen. This
practice allegedly allows
Rescuecom’s competitors to deceive
and divert users searching for
Rescuecom’s website.
District Court: Google’s actions are
not a ‘‘use in commerce’’ under
the Lanham Act because the
competitor’s advertisements
triggered by Google’s programs
did not exhibit Rescuecom’s
trademark.
“Sections 32 and 43 of the Act, . . . , 15 U.S.C.
§§1114 & 1125, inter alia, impose
liability for unpermitted ‘‘use in
commerce’’ of another’s 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” plaintiff’s TM
“in a trademark sense”?
2 Related Issues
• When-U’s internal directory
• Display of pop-up ads on 1800 Contact’s website
Directory listings
<init.list.><begin.dir.><term.list.001>
AAA,AAAAlcon,AABacus,AAACarlsb
ad,AAADenver,AAAElmira,AAAFresn
o,AAAGeorgetown,AAAHoyas,AAAIt
haca,AAAIona,AAAJacksonville,AAA
Kentucky,AAALosAngeles,AAALA,AA
AAmazon,AAANevada,AAAOrlando,
....
Analysis
• “[WhenU] does not ‘place’ 1800
trademarks on any good or service .
. .”
• “When U does not reproduce or
display 1800’s [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”?
Use/Likelihood of Confusion
• Doctrinal argument
• Important issue: how does defendant’s
action affect plaintiff’s protectable TM
interest?
– Is TM law designed to broadly protect TM
owner’s branding/business interests, or is it
narrower than that?
Distinguishing 1-800 Contacts
from Rescuecom
[H]ere what Google is recommending and
selling to its advertisers is Rescuecom’s
trademark. Second, in contrast with the facts
of 1-800 where the defendant did not ‘‘use or
display,’’ much less sell, trademarks as search
terms to its advertisers, here Google displays,
offers, and sells Rescuecom’s mark to
Google’s advertising customers when selling
its advertising services. – IPNTA 5th at 821
Product Placement
• Drugstore analogy; “shelf space wars”
• How similar to traditional product placement
“wars” and tactics?
• 2d Cir: The key is “likelihood of confusion”
IPNTA 5th at 822
TM infringement requires an
unauthorized use, which ‘‘is likely to
cause confusion, or to cause
mistake, or to deceive as to the
affiliation, . . . or as to the origin,
sponsorship, or approval of . . .
goods [or] services.’’ See 15 U.S.C.
§1125(a)
We have no idea whether Rescuecom
can prove that Google’s use of
Rescuecom’s trademark in its
AdWords program causes likelihood
of confusion or mistake.
AMF v. Sleekcraft
“Slick vs. Sleek”
• Competing goods
– Does a sale of defendant’s good replace a sale of
plaintiff’s 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?
D’oh!
Role of Examples
• “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”
The Distant Side
“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”
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.
Internet Era Doctrines
• Use in Commerce
• “Initial Interest Confusion”
Likelihood of Confusion
Binder v. Disability Group, Inc. 772
F.Supp.2d 1172 (C.D. Cal. 2011)
Both Parties agree that from March 26, 2006 to
November 6, 2006 Defendants [Disability
Group] used Plaintiffs' trademark in an
advertising campaign through Google AdWords.
Google AdWords allows advertisers to pay to
place targeted “Sponsored Links” on the results
page of a Google search. In order to have their
ads appear on the search results page, Google
advertisers select and bid on AdWords
(purchased keywords) so that their ad might be
displayed on the search results. Defendants
used “Binder and Binder” as AdWords linked to
their websites.
Holding
• We also find that potential clients
suffered actual confusion regarding the
mark. Although the survey conducted
by Jessica Bowers may not have been
ideal, we find that it is one piece of
evidence among others, including
witness testimony, that establishes
actual confusion. – at 1176
Sixteen of the seventeen individuals
polled under the survey believed that
when they clicked on Defendants'
website following their search, they
were actually being brought to Binder
and Binder's website. Fifteen out of
seventeen thought that when filling out
submission forms on Defendants' site,
they were doing so on Binder and
Binder's website or someone associated
with them. – at 1177
Post Sales Confusion
• The brand and (non purchasing) third parties
• Shading over into dilution theory
• Broader commercial interest
– Consumer protection vs. producer property
interest