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How to Prove Trademark Infringement

Anthony M. Verna, III, Esq.
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Trademark my name

How to Prove Trademark Infringement

Trademark law protects a trademark owner’s exclusive right to use a trademark when another’s use would likely cause consumer confusion about the source or origin of goods. Governed by the Lanham Act, establishing a violation involves demonstrating three key elements:

1. Valid and Legally Protectable Mark

  • Registered Mark: For marks registered under 15 U.S.C. § 1114, ownership is generally straightforward.
  • Unregistered Mark: For unregistered marks under 15 U.S.C. § 1125(a), the plaintiff must prove that the mark has acquired distinctiveness in the marketplace.

2. Ownership of the Mark

  • The plaintiff must show they own the mark. Ownership can be established through registration or by demonstrating common law rights through prior use in commerce.

3. Likelihood of Confusion 

The standard of a likelihood of confusion between two trademarks are the key factors of a claim of trademark infringement.

  • Similarity of Marks: The marks must be sufficiently similar to cause consumer confusion regarding the source of goods or services.
  • Relatedness of Goods/Services: Goods or services offered under the marks should be related enough that consumers might assume a common source.
  • Strength of the Mark: Stronger marks (fanciful, arbitrary, or suggestive) receive broader protection.
  • Evidence of Actual Confusion: Instances of consumer confusion provide strong evidence.
  • Marketing Channels: Similarity in marketing methods can increase the likelihood of confusion.
  • Intent of the Defendant: Evidence that the defendant intended to copy the plaintiff’s mark suggests an intent to cause confusion.
  • Consumer Care: The likelihood of confusion is higher if the average consumer of the goods or services is not expected to exercise a high degree of care.

Breaking Down the Elements

Use

  • Definition: The defendant’s use of the mark must be established. Not all uses constitute infringement; for example, “pop-up” ads or product placements may not be considered “use” under the Lanham Act.
  • Threshold Requirement: The plaintiff must prove the defendant used the mark in a way that violates the Lanham Act.

In Commerce

  • Interstate Commerce: The use must affect interstate commerce, as trademark law is based on Congress’s power to regulate interstate commerce.
  • Examples: Activities satisfying this requirement include interstate advertising, interstate movement of goods, or advertising in media with interstate reach.

Likelihood of Confusion

  • Direct Competition: If the products directly compete, courts usually find infringement if the marks are similar enough to cause confusion.
  • Non-Competing Goods: If the goods are unrelated, confusion is unlikely.
  • Related but Non-Competing Goods: The court uses a more complex analysis, such as the Lapp test (Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983)), considering factors like the strength of the mark, similarity, actual confusion, marketing channels, consumer care, intent, and potential market expansion.

Defenses

  • Equitable Defenses: Laches, estoppel, and unclean hands.
  • Fair Use: Commentary or criticism that incidentally involves the use of a trademark.
  • Collateral Use: Using a trademarked item as part of a more complex product to identify that component.

Remedies

  • Injunctive Relief: Prevents further infringement.
  • Damages: Including profits, actual damages, and possibly treble damages.
  • Attorney’s Fees: In “exceptional cases” under 15 U.S.C. § 1117.
  • Costs: Costs of litigation may be awarded.

Notable Legal Standards and Cases

  • Polaroid Factors: Used to assess likelihood of confusion.
  • A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.: Highlighted the standards for likelihood of confusion.
  • 1-800 Contacts, Inc. v. WhenU.com, Inc.: Discussed the “use” requirement.

A trademark infringement case is usually heard in federal court.  State court may hear cases when a trademark infringement lawsuit involves an unregistered mark, common law trademark, or service mark.  

 

​Is a Registered Trademark Necessary for a Trademark Infringement Claim?

No – but the unregistered mark, the common law trademark, must be in commercial use and must also be distinctive in order for trademark rights to exist.  

Now-Casting Economics, Ltd. v. Economic Alchemy LLC

United States District Court, S.D. New York, September 15, 2022

628 F.Supp.3d 501

Background:Now-Casting Economics, Ltd. (Plaintiff) brought a trademark infringement suit against Economic Alchemy LLC (Defendant). The dispute centered around the alleged unauthorized use of the term “now-casting,” which Plaintiff claimed as a trademark for its economic forecasting services.

 

Legal Issues:The key issues in the case were:

  1. Whether “now-casting” was a valid, protectable trademark.
  2. Whether Defendant’s use of the term caused a likelihood of confusion among consumers regarding the source of the services.

Court’s Analysis:

  1. Validity of the Trademark:

    • The court examined whether “now-casting” was a descriptive term or had acquired distinctiveness (secondary meaning) sufficient for trademark protection.
    • The court found that “now-casting” was initially descriptive, referring to real-time economic forecasting. However, the plaintiff failed to provide sufficient evidence that the term had acquired secondary meaning uniquely identifying its services.

  2. Likelihood of Confusion:

    • The court applied the Polaroid factors to assess the likelihood of confusion, including:
      • Strength of the Mark: Since “now-casting” was found descriptive without secondary meaning, it was considered weak.
      • Similarity of the Marks: Both parties used the term “now-casting,” but the context and presentation differed.
      • Proximity of the Services: Both provided economic forecasting services, making this factor more significant.
      • Actual Confusion: Plaintiff did not provide concrete evidence of actual consumer confusion.
      • Defendant’s Intent: No evidence suggested that Defendant intended to deceive consumers.
      • Quality of Defendant’s Services: This factor was neutral.
      • Consumer Sophistication: Consumers of economic forecasting services are typically sophisticated, reducing the likelihood of confusion.

Court’s Decision:The court concluded that Plaintiff failed to demonstrate that “now-casting” was a valid trademark with acquired distinctiveness and that there was no sufficient likelihood of consumer confusion. As a result, the court ruled in favor of Economic Alchemy LLC, dismissing the trademark infringement claim.

Key Takeaways:

  • Descriptive terms must acquire secondary meaning to be protectable trademarks.
  • The strength of a mark significantly impacts the likelihood of confusion analysis.
  • Evidence of actual confusion and intent to deceive are critical in trademark infringement cases.

This case underscores the importance of proving both the validity of a trademark and the likelihood of consumer confusion in trademark infringement claims.

Jackpocket, Inc. v. Lottomatrix NY LLC

United States District Court, S.D. New York, December 7, 2022

645 F.Supp.3d 185

Trademark Infringement Issues:

Background:Jackpocket, Inc. (Plaintiff) filed a lawsuit against Lottomatrix NY LLC (Defendant), alleging trademark infringement. Plaintiff, which offers a mobile app for lottery ticket purchasing, claimed that Defendant’s use of a similar mark for its competing service caused consumer confusion.

Key Legal Issues:

  1. Validity and Ownership of the Trademark:

    • Plaintiff needed to prove that its trademark was valid and protectable, and that it owned the rights to the trademark.
    • The court found that Plaintiff’s trademark was both valid and legally protectable.

  2. Likelihood of Confusion:

    • The central issue was whether Defendant’s use of a similar mark was likely to cause confusion among consumers regarding the source of the services.

Court’s Analysis:

  1. Strength of the Plaintiff’s Mark:

    • The court determined that Plaintiff’s mark was suggestive and inherently distinctive, thus deserving a higher degree of protection.

  2. Similarity of the Marks:

    • The court found significant visual and phonetic similarities between the Plaintiff’s and Defendant’s marks, which could lead to consumer confusion.

  3. Proximity of the Services:

    • Both parties operated in the same industry, providing similar services (mobile lottery ticket purchasing), which increased the potential for consumer confusion.

  4. Evidence of Actual Confusion:

    • Plaintiff presented evidence of actual consumer confusion, which strongly supported the infringement claim.

  5. Defendant’s Intent:

    • The court considered whether the Defendant intended to capitalize on Plaintiff’s established reputation. Evidence suggested that Defendant was aware of Plaintiff’s mark and chose a similar one, indicating potential bad faith.

  6. Quality of the Defendant’s Services:

    • The quality of services offered by both parties was similar, which did not weigh heavily in the analysis.

  7. Consumer Sophistication:

    • The court noted that the consumers of mobile lottery services were not highly sophisticated, making confusion more likely.

Court’s Decision:The court ruled in favor of Jackpocket, Inc., finding that Lottomatrix NY LLC’s use of a similar mark constituted trademark infringement. The court issued an injunction preventing Lottomatrix NY LLC from using the infringing mark and awarded damages to the Plaintiff.

Key Takeaways:

  • A suggestive and inherently distinctive mark is entitled to a high level of protection, even if it is an unregistered mark and only a part of the common law.
  • Visual and phonetic similarities between marks, combined with similar services, strongly contribute to the likelihood of confusion.
  • Evidence of actual consumer confusion and potential bad faith intent are critical in supporting a trademark infringement claim.

 

A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.

United States Court of Appeals for the Third Circuit, 2000

237 F.3d 198

Trademark Infringement Issues:

Background:A&H Sportswear, Inc. (Plaintiff) brought a trademark infringement action against Victoria’s Secret Stores, Inc. (Defendant) concerning the use of the “Miracle Bra” mark. Plaintiff marketed swimwear under the “Miraclesuit” mark and alleged that Defendant’s use of “The Miracle Bra” for its swimwear caused consumer confusion and infringed on its trademark rights.

Key Legal Issues:

  1. Validity and Ownership of the Trademark:

    • Plaintiff needed to establish that “Miraclesuit” was a valid, protectable trademark and that it owned the rights to the mark. This was done through the trademark registration of MIRACLESUIT (several registrations at the United States Patent and Trademark Office).
    • The court found that “Miraclesuit” was a valid, legally protectable trademark.

  2. Likelihood of Confusion:

    • The central issue was whether Defendant’s use of “The Miracle Bra” mark for swimwear was likely to cause confusion among consumers regarding the source of the products.

Court’s Analysis:

  1. Strength of the Plaintiff’s Mark:

    • The court determined that “Miraclesuit” was suggestive and inherently distinctive, providing it with a higher degree of protection.

  2. Similarity of the Marks:

    • The court found that “Miraclesuit” and “The Miracle Bra” were similar in that they shared the “Miracle” element, which could lead to confusion, especially since both were used in the context of swimwear.

  3. Proximity of the Products:

    • Both Plaintiff and Defendant sold similar products (swimwear), which increased the potential for consumer confusion.

  4. Evidence of Actual Confusion:

    • The court examined evidence of actual consumer confusion. However, the evidence presented by Plaintiff was limited and not highly persuasive.

  5. Defendant’s Intent:

    • There was no significant evidence suggesting that Defendant intended to create confusion or capitalize on Plaintiff’s established reputation.

  6. Marketing Channels and Target Audience:

    • Both parties used similar marketing channels and targeted similar consumer demographics, which heightened the risk of confusion.

  7. Consumer Sophistication:

    • The court noted that the consumers of swimwear were moderately sophisticated, which could potentially reduce the likelihood of confusion but was not decisive.

  8. Defendant’s Use of “Miracle” in Other Products:

    • Defendant’s extensive use of the “Miracle” element in other product lines (e.g., bras) contributed to the distinctiveness of its brand and somewhat diminished the likelihood of confusion with Plaintiff’s swimwear.

Court’s Decision:The court ultimately concluded that despite some similarities and overlapping marketing channels, the Plaintiff failed to demonstrate a significant likelihood of confusion among consumers. The court ruled in favor of Victoria’s Secret Stores, Inc., holding that there was no trademark infringement.

Key Takeaways:

  • A suggestive and inherently distinctive mark receives strong protection, but the likelihood of confusion must still be clearly demonstrated.
  • Similarity in marks, product proximity, and marketing channels are critical factors in assessing consumer confusion.
  • Evidence of actual confusion and intent to deceive are important but must be substantial and persuasive to succeed in a trademark infringement claim.

 

1-800 Contacts, Inc. v. WhenU.com, Inc.

United States Court of Appeals for the Second Circuit, 2005

414 F.3d 400

Trademark Infringement Issues:

Background:1-800 Contacts, Inc. (Plaintiff), a retailer of contact lenses, sued WhenU.com, Inc. (Defendant), an online advertising company, alleging trademark infringement. The Plaintiff argued that Defendant’s practice of displaying pop-up advertisements for competitors’ websites when users visited Plaintiff’s website constituted unauthorized use of its trademark.

Key Legal Issues:

  1. Use in Commerce:
    • The central issue was whether WhenU’s practice of displaying pop-up ads constituted a “use in commerce” of the Plaintiff’s trademark under the Lanham Act.

Court’s Analysis:

  1. Definition of “Use”:

    • The court examined the definition of “use” under the Lanham Act, which generally involves the display of a trademark on goods, containers, displays, or documents associated with the sale of goods or services.

  2. WhenU’s Practices:

    • WhenU created software that would trigger pop-up ads based on the URLs and keywords users entered into their browsers. However, WhenU did not display the Plaintiff’s trademark in the text of the pop-up ads themselves.
    • WhenU’s software operated by identifying the Plaintiff’s website URL but did not reproduce or display the Plaintiff’s trademark in the ads shown to users.

  3. No Display of Trademark:

    • The court determined that WhenU’s use of the Plaintiff’s URL to trigger pop-up ads did not constitute a “use in commerce” of the trademark because the trademark itself was not displayed or used to promote the goods or services.

  4. Likely Confusion:

    • Because the court found that WhenU’s actions did not constitute “use in commerce,” it did not need to extensively analyze the likelihood of confusion.
    • However, the court noted that consumers were unlikely to be confused about the source of the pop-up ads since they were clearly separate from the Plaintiff’s website and identified different entities.

Court’s Decision:The court ruled in favor of WhenU.com, Inc., finding that its practice of using URLs to trigger pop-up advertisements did not constitute trademark infringement because there was no “use in commerce” of the Plaintiff’s trademark under the Lanham Act.

Key Takeaways:

  • “Use in commerce” under the Lanham Act requires the display of the trademark on goods, containers, displays, or documents associated with the sale of goods or services.
  • Merely triggering advertisements based on URLs or keywords without displaying the trademark does not constitute “use in commerce.”
  • The likelihood of consumer confusion is not a central issue if the threshold requirement of “use in commerce” is not met.

 

Recovering Attorney Fees

15 U.S. Code § 1117 is the statute which discusses recovery for violating a trademark. Under 15 U.S. Code § 1117(a), the statute deals with the recovery of attorney fees. The statute reads, “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”

In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014),  the Supreme Court added clarity to what an “exceptional case” is. The Octane Court defined an “exceptional case” as one that stands out due to either 1 of 2 things:

  1. the strength of a party’s litigating position
    1. for this prong, courts should look at the facts of the case and the law which governs the issue
  2. the unreasonable manner in which the case was litigated
    1. To determine whether a case is ‘exceptional,’ lower courts should look at the totality of the circumstances on a case-by-case basis 

 

Georgia-Pacific Consumer Products v. Von Drehle

United States Court of Appeals for the Fourth Circuit, 2015

781 F.3d 710

Attorney’s Fees Issues:

Background:Georgia-Pacific Consumer Products (Plaintiff) brought a trademark infringement lawsuit against Von Drehle (Defendant) concerning the use of paper towel dispensers that Plaintiff had designed and marketed. After prevailing on the infringement claim, Plaintiff sought attorney’s fees under the Lanham Act.

Key Legal Issues:

  1. Entitlement to Attorney’s Fees:
    • The primary issue was whether the case qualified as “exceptional” under the Lanham Act, which would justify awarding attorney’s fees to the prevailing party.

Court’s Analysis:

  1. Standard for Awarding Attorney’s Fees:

    • The Lanham Act, specifically 15 U.S.C. § 1117(a), allows for the awarding of attorney’s fees in “exceptional cases.” The Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) provided a framework for determining what constitutes an “exceptional” case.
    • The Octane Fitness decision, though related to the Patent Act, was deemed applicable to the Lanham Act due to the identical language used in both statutes regarding the awarding of attorney’s fees.

  2. Exceptional Case Criteria:

    • The Octane Fitness standard considers a case “exceptional” based on the totality of the circumstances, including the strength of a party’s litigating position and the unreasonable manner in which the case was litigated.

  3. Application of Octane Fitness Standard:

    • The court acknowledged that the Octane Fitness standard should be applied when considering attorney’s fees under the Lanham Act.
    • Under this standard, a case may be deemed exceptional if it stands out from others with respect to the substantive strength of a party’s position or the manner in which the case was litigated.

  4. District Court’s Findings:

    • The district court initially awarded attorney’s fees to Georgia-Pacific, concluding that Von Drehle’s defenses were objectively unreasonable and that Von Drehle had engaged in unreasonable litigation tactics.

  5. Appeals Court Review:

    • The Fourth Circuit reviewed the district court’s decision to award attorney’s fees and evaluated whether the case met the Octane Fitness criteria for an “exceptional” case.
    • The appeals court found that the district court correctly applied the Octane Fitness standard and upheld the award of attorney’s fees to Georgia-Pacific.

Court’s Decision:The Fourth Circuit affirmed the district court’s award of attorney’s fees to Georgia-Pacific, concluding that the case was “exceptional” under the Octane Fitness standard due to the objectively unreasonable defenses and litigation conduct of Von Drehle.

Key Takeaways:

  • The Octane Fitness standard, applicable to both the Patent Act and the Lanham Act, provides that attorney’s fees may be awarded in “exceptional” cases based on the totality of the circumstances.
  • A case may be considered “exceptional” if it involves a significant discrepancy in the merits of the positions or if the litigation conduct of a party is unreasonable.
  • The Fourth Circuit affirmed the district court’s finding that Von Drehle’s defenses and litigation conduct rendered the case “exceptional,” justifying the award of attorney’s fees to the prevailing party, Georgia-Pacific.

Do you have questions about your brands or trademarks?  Ask us here at Verna Law, P.C., an intellectual property law firm.  Call us at 914-908-6757 or send us e-mail at anthony@vernalaw.com. 

 

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