Section 1114 - United States Trademark Law Overview

Section 1114 - Remedies; infringement; innocent infringement by printers and publishers

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Trademark Act §1114 Infringement and Limitations on Remedies

§1114 Elements of Trademark Infringement:
1. Counterfeiting, copying, or imitation of a registered mark;
2. Its use or reproduction intended for use in commerce;
3. Lack of consent from the owner of the mark to use the mark in such a way; and
4. Confusion or mistake is likely to occur (or there is deception).
The likelihood of consumer confusion is the hallmark of trademark infringement.
- In assessing the likelihood of consumer confusion under any of the factor tests below, no single factor is determinative and the weight to be given them in any given case will necessarily differ.
  - The factors are merely a guideline. Not all of them will be applicable to every case and courts are not generally required to use them at all.

Polaroid Test - The Polaroid Test is a balancing test which was created by the Second Circuit for infringement assessments where use in relation to non-competing goods and services is involved, but it is applied by this Circuit to competing uses, as well. If similar marks have been used in commerce, the following factors are considered in determining whether or not there is the likelihood of confusion required for a finding of infringement under §1114 :

Strength of the marks in question

Degree of similarity between the marks

Proximity of the goods and/or services in the market place

Quality of the defendant's goods and/or services

Likelihood that the prior owner will "bridge the gap" in the marketplace

Actual confusion between the marks

Good faith of the defendant

Sophistication of the buyers of the respective goods and/or services

The Ninth and Sixth Circuits use the following factors in assessing likelihood of confusion for similar marks. The resemblance to the Polaroid factors is apparent:

The similarity of the marks
- Sight, sound and meaning are all considered.
  - Marks are considered as a whole.
- A well known component of composite mark may be determinative for the purposes of assessing similarity.
The relatedness or proximity of the goods and/or services
- Related, unrelated and somewhat related are the typical categories.
  - Goods and/or services are related if a reasonable purchaser would likely believe that they came from the same source.
The strength of the plaintiff's mark
- The continuum of distinctiveness is applied.
  - Secondary meaning is considered, if appropriate.
- The level of commercial recognition is also considered.
The marketing channels used
- This equates to how and when goods and/or services sold.
- The similarity or dissimilarity between the consumers of the parties' goods and/or services is also a consideration.
The degree of care likely to be exercised by purchasers in selecting goods and/or services
- The typical buyer exercising ordinary caution is the standard.
  - Potential sophistication of consumers may also need to be examined.
The defendant's intent in selecting its mark
- Intentional or knowing use of a similar or identical mark is the primary inquiry.
  - Whether or not there is a likelihood of confusion, however, will be determinative, regardless of level of intent found.
The evidence of actual confusion
- Evidence of past confusion or that such evidence should have existed in the circumstances alleged may be examined.
The likelihood of expansion in product lines
- Expansion in types of goods and/or services, as well as geographic expansion are considered.

Compare the "likelihood of confusion" factors created by the Federal Circuit for use in determining "confusing similarity" under §1052 in In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)

Again, with all of the above factor tests, no actual confusion need be found; a likelihood is all that is required.

Inwood Labs v. Ives Labs, 456 U.S. 844 (1982)

If a manufacturer or distributor intentionally induces another party to infringe a trademark or if it continues to supply a product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm claimed as a result of such conduct.

Limitations on Remedies for Infringement Generally:

If the infringer is merely a printer or innocent infringer, injunction against further reproduction is the only remedy.

If the infringer is merely a publisher or distributor, injunction against further publication/distribution is the only remedy.

Injunctions are not available where they would delay publication/distribution beyond established commercial deadlines.

Domain name registration authorities will not be subject to liability for monetary damages or, unless they have failed to comply with a court order, injunctive relief in relation to the registration, cancellation, transfer or disabling of or policy enforcement on domain names.
- A domain name registration authority has a right to recover monetary damages from and injunctive relief against a party who uses knowing material misrepresentation to obtain domain name registration.

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