Trademark Case Law
Elements of Trademark Infringement under Section 1114 of the Lanham Act
To establish liability for trademark infringement under section 1114, the trademark registrant must show: (1) that it owns a valid, protectable trademark; (2) that the defendant used the mark in commerce and without the registrant’s consent; and (3) there was a likelihood of consumer confusion. Too, Inc. v. TJX Cos., 229 F. Supp. 2d 825, 829 (S.D.Ohio 2002), citing, Microsoft Corp. v. Grey Computer, 910 F.Supp. 1077, 1086-88 (D.Md. 1995). The registrant does not need to prove intent under this section. Id., citing, Procter & Gamble Co. v. Quality King Distribs., 123 F. Supp. 2d 108, 112 (E.D.N.Y.2000).
If you suspect that someone is infringing upon your trademark, you can petition the court for injunctive relief while a lawsuit against them is pending. When ruling on a motion for a preliminary injunction, a Court must consider and balance four factors: “(1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury without the injunction; (3) whether issuance of the injunction would cause substantial harm to others; and (4) whether the public interest would be served by issuance of the injunction.” PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243, 249 (6th Cir. 2003), citing, Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998). These four considerations are factors to be balanced, not prerequisites that must be met. Frisch’s Restaurant, Inc. v. Shoney’s Inc., 759 F.2d 1261, 1263 (6th Cir. 1985), citing, In re DeLorean Motors Co., 755 F.2d 1223, 1229 (6th Cir. 1985).
The touchstone of both a trademark claim under section 1114 and an unfair competition claim under section 1125 is whether the defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties. Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center, 109 F.3d 275, 280 (6th Cir. 1997); Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1123 (6th Cir. 1996) (the same factors are considered under section 1125(a) as are considered under section 1114).Under the first of the three factors listed above, determining whether a “likelihood of confusion” exists, a Court must consider eight factors: (1) strength of the plaintiff’s mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) intent of the defendant in selecting the mark; and (8) likelihood of expansion of the product lines. Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.1982).
These factors “imply no mathematical precision, and a plaintiff need not show that all, or even most, of the factors listed are present in any particular case to be successful.” PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243, 249-50 (6th Cir. 2003), quoting, Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988). The ultimate question is “whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.” Daddy’s Junky Music Stores, 109 F.3d at 280.
Injunctive Relief for Trademark Violations
The purpose of Trademarks is to protect the consumer from confusion as to the source of goods (or services, if we are considering a servicemark). Consumers have an interest in knowing that they are in an actual McDonald’s restaurant if they enter a fast food joint with prominent golden arches.
In order to determine whether a word is entitled to trademark protection, a court must first determine which of four categories that word falls into:
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1) generic or common descriptive;
2) merely descriptive;
3) suggestive; or
4) arbitrary or fanciful. Miller Brewing Co. v. Heilman (C.A.7, 1977) 561 F.2d 75 at 79.
A generic or common descriptive term, such as “chair,” is not entitled to trademark protection under any circumstances, while suggestive terms, such as “True Grip,” and arbitrary or fanciful terms, such as “Exxon,” are entitled to trademark protection without the need to show that they have a secondary meaning. Heilman at 79. Words that are merely descriptive, such as a family name, are entitled to trademark protection only if it is shown that they have acquired a secondary meaning. Heilman at 79.
A word has a secondary meaning when “the primary significance of the term in the minds of the consuming public is not the product but the producer.” Pizzazz Pizza & Restaurant v. Taco Bell Corp. (N.D. Ohio 1986), 642 F.Supp. 88 at 92.
Courts have recognized five factors to examine in order to determine whether a word has acquired a secondary meaning:
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1) the amount and manner of advertising;
2) the volume of sales;
3) length and manner of use;
4) direct consumer testimony and; 5) consumer surveys. Pizzazz at 92.
But just because your trademark is entitled to protection, the analysis does not end there. What type of protection you are entitled to is a very important question. Many trademark or servicemark owners are not simply content to sit back and sue a penniless charlatan passing off his stuff as theirs and wait years for a court to award damages which are uncollectable. Rather, they seek an injunction from the court. An injunction is an order from the court telling a person that they may not do certain things. The advantage of an injunction is that the Court can back up its order with jail time if the defendant does not comply. The Court can even order law enforcement officers to seize goods which violate the order or shut down providers of services which violate its orders.
In the case of trademark law, the owner of the mark will be interested in getting a preliminary injunction against the allegedly improper use of the mark while the litigation is pending, thus ensuring itself that if it wins the case in the end, it will not have suffered any further damages from the defendant’s improper use.
But to get such an injunction, the trademark owner must show that there is a likelihood of confusion between the trademarked products. Likelihood of confusion is determined by eight factors:
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1. strength of the plaintiff’s mark;
2. relatedness of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. defendant’s intent in selecting the mark;
8. likelihood of expansion of the product lines. Frisch’s Restaurants, Inc. v. Elby’s Big Boy (1982), 670 F.2d 642 at 648.