20. Trademark Infringement
Learning Objectives: Unit 20
Upon completion of this class, you should be able to:
- Explain the requirements of trademark infringement;
- Analyze infringement in a factual scenario.
Determining trademark infringement involves a multi-factor analysis to assess whether there is a likelihood of confusion between the trademark owner’s use of the mark and the accused infringer’s use. We will discuss the 8th Circuit’s multi-factor analysis; it is similar – although not identical – to those used in other circuits.
READING WITH PURPOSE
Before reading Kemp v. Bumble Bee Seafoods (8th Cir. 2005), you should reread 15 U.S.C. §§ 1114 & 1125(a), along with any relevant statutory definitions. As you read these materials, ask yourself the following questions:
- What is trademark infringement?
- How is trademark infringement analyzed?
- What are the reasons for structuring the infringement analysis this way?
- How would you analyze the infringement claim described in this news article: http://www.press-citizen.com/story/news/local/2014/12/25/renamed-restaurant/20892445?
- How would you analyze the infringement claim as between the below bottles of hot sauce? (The bottle on the left is from Trader Joe’s; the one on the right is made by Huy Fong Foods.)
15 U.S.C. §1114. Remedies; infringement; innocent infringement by printers and publishers (2005)
(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…
15 U.S. Code § 1125. False designations of origin, false descriptions, and dilution forbidden (2012)
(a) Civil Action
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, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act…
2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional …
