1. Trademark Law1  Week 8 Chapter 6 – Infringement (cont.)

2. Trademark Law2 Review – Infringement  Sec. 1114(1)(a) Any person who shall, without the consent of the registrant... use in commerce any reproduction... or...imitation of a registered mark in connection with the sale, offering for sale... of any goods or services with which such use is likely to cause confusion... shall be liable in a civil action by the registrant

3. Trademark Law3 Review – Infringement  Prima Facie Element of TM Infringement Accused use will cause a likelihood of confusion  The test of infringement  factors used to determine likelihood of confusion  each circuit has their own test

4. Trademark Law4 Review - Sleekcraft Factors  AMF vs. Sleekcraft (9th Cir.) 1. Strength of Plaintiff’s Mark 2. Proximity of the goods 3. Similarity of marks 4. evidence of actual confusion 5. Marketing channels used 6. type of goods and degree of care likely exercised by the purchaser 7. Defendant’s intent in selecting the mark 8. Likelihood of expansion of the product lines

5. Trademark Law5 Review - Initial Interest Confusion Mobil Oil v. Pegasus Petroleum Corp. [424] Brookfield Communication v. West Coast Ent. Corp. 174 F.3d 1036 (9th Cir. 1999). Playboy Ent. V. Netscape (9 th Cir. 2004) Where’s the initial interest?

6. Trademark Law6 Contributory Infringement ... liability for trademark infringement can extend beyond those who actually mislabel goods with the mark of another. Even if a manufacturer does not directly control others in the chain of distribution, it can be held responsible for their infringing activities under certain circumstances.

7. Trademark Law7 Contributory Infringement  What’s the rule? See Inwood Labs If a mfg or distributor intentionally induces another to infringe a mark; or it continues to supply its product to one whom it knows, or has reason to know is engaging in trademark infringement, the mfg or distributor is contributorially responsible for any harm done as a result of the deceit.

8. Trademark Law8 Contributory Infringement  What if they’re not a mfg or a distributor  The “reason to know test” requires D understand what a reasonably prudent person would understand  there’s no affirmative duty to take precautions against the sale of counterfeits,  but D cannot be “willfully blind.” ...To be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate.

9. Trademark Law9 Contributory Infringement  What if it’s a service that’s being provided instead of a good? Lockheed Martin Corp. v. Network Solutions, Inc. (9th Cir. 1999) [470]

10. Trademark Law10 Vicarious Liability  AT&T v. Winback & Conserve Program, Inc, (3d Cir., 1994) [466]  … because section 43(a) parallels state tort law and is derived from tort common law, it is self-evident that application of at least some tort concepts of liability will “advance the goals of [the Lanham Act]

11. Trademark Law11 Vicarious Liability  A principal is not generally liable for physical torts committed by its independent contractor-agent, but a principal will be held liable for the independent contractor-agent’s misrepresentations “upon matters which the principal might reasonably expect would be the subject of representations, provided the other party has no notice that the representations are unauthorized.” Sanders v. Rowan, 484 A.2d at 1029 (quoting Restatement (Second) of Agency § 258).

12. Trademark Law12 Statutory Defenses / Incontestability  15 U.S.C. §1065 [Lanham Act § 15] After 5 years consecutive use, incontestable: unless  No ct. decision [to the contrary]  No proceeding involving the rights pending  An affidavit is filed w/ 1 year after the 5 years  Not generic name for the goods or services

13. Trademark Law13 Defenses to Incontestability 1. fraudulent acquisition of the mark 2. abandonment of the mark 3. use of the mark to misrepresent source 4. fair use defenses 5. limited territory defense 6. prior registration by defendant w/out abandonment 7. use of mark to violate anti-trust laws 8. equitable principles (laches, estopple, etc.) 9. functionality

14. Trademark Law14 Fair use defense  Section 33(b)(4) Permits use of descriptive mark to describe another’s good/service – as a descriptive term, but not as a mark “A user of a descriptive word may acquire the exclusive right to use that descriptive word as an identifier of the product or source” This, however does not justify barring others from using the words in good faith for descriptive purposes pertinent to their products.

15. Trademark Law15 Fair use defense  KP Permanent Make-Up v. Lasting Impression Split among circuits Use of MICRO COLORS mark

16. Trademark Law16 Sovereign Immunity  Is the TRCA a permissible abrogation of state sovereign immunity? No. States are sovereign The decision to waive [sovereign] immunity “is altogether voluntary on the part of the sovereign” States waived immunity in two cases  14 th Amendment and by consenting to suit  After Florida Prepaid States can’t be held liable for TM infringement unless they expressly waive their sovereign immunity

17. Trademark Law17 Next Week  Chapter 7 - False Designation of Origin Read: Pgs. 504-555