Trademark Inringement

Intro to IP – Prof Merges

3.19.2012

Trademark Infringement

• “Use in commerce”

• Infringement factors

• Pervasive role of the web

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AdWords is Google’s program through which advertisers purchase terms (or keywords). When entered as a search term, the keyword triggers the appearance of the advertiser’s ad and link. An advertiser’s purchase of a particular term causes the advertiser’s ad and link to be displayed on the user’s screen whenever a searcher launches a Google search based on the purchased search term.

[W]henever a searcher interested in purchasing furnace repair services from Company X launches a search of the term X (Company X’s trademark), an ad and link would appear on the searcher’s screen, inviting the searcher to the furnace repair services of X’s competitor, Company Y.

[W]henever a user launches a search for the term ‘‘Rescuecom,’’ seeking to be connected to Rescuecom’s website, the competitors’ advertisement and link will appear on the searcher’s screen. This practice allegedly allows Rescuecom’s competitors to deceive and divert users searching for Rescuecom’s website.

District Court: Google’s actions are not a ‘‘use in commerce’’ under the Lanham Act because the competitor’s advertisements triggered by Google’s programs did not exhibit Rescuecom’s trademark.

“Sections 32 and 43 of the Act, . . . , 15 U.S.C. §§1114 & 1125, inter alia, impose liability for unpermitted ‘‘use in commerce’’ of another’s mark which is ‘‘likely to cause confusion, or to cause mistake, or to deceive,’’ §1114, ‘‘as to the affiliation . . . or as to the origin, sponsorship or approval of his or her goods [or] services . . . by another person.’’ §1125(a)(1)(A).”

Lanham Act sec. 32 – 15 USC 1114

(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. Under subsection (b) of this section, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

-- 15 USC 1114(b)

Sec 43(a) – 15 USC 1125(a)

(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, [is liable in a civil action]

1-800 Contacts v. When U.com

• Pop-up ads

• District court: Injunction granted

• 2d Cir.: Was When-U “using” plaintiff’s TM “in a trademark sense”?

2 Related Issues

•When-U’s internal directory

• Display of pop-up ads on 1-800 Contact’s website

Directory listings

<init.list.><begin.dir.><term.list.001>AAA,AAAAlcon,AABacus,AAACarlsbad,AAADenver,AAAElmira,AAAFresno,AAAGeorgetown,AAAHoyas,AAAIthaca,AAAIona,AAAJacksonville,AAAKentucky,AAALosAngeles,AAALA,AAAAmazon,AAANevada,AAAOrlando, . . . .

Analysis

• “[WhenU] does not ‘place’ 1800 trademarks on any good or service . . .”

• “When U does not reproduce or display 1800’s [TM] at all . . .”

Web address vs. TM

• Locating a business vs. identifying a business

• What about identifying businesses in directory to potential clients?

– “We include 1-800-Contacts in our Directory listing” – is this a “use in commerce”?

Sale of keywords

• Google case

• How is the sale of keywords different?

• Is this “use in commerce”?

Use/Likelihood of Confusion

• Doctrinal argument

• Important issue: how does defendant’s action affect plaintiff’s protectable TM interest?

– Is TM law designed to broadly protect TM owner’s branding/business interests, or is it narrower than that?

Distinguishing 1-800 Contacts from Rescuecom

[H]ere what Google is recommending and selling to its advertisers is Rescuecom’s trademark. Second, in contrast with the facts of 1-800 where the defendant did not ‘‘use or display,’’ much less sell, trademarks as search terms to its advertisers, here Google displays, offers, and sells Rescuecom’s mark to Google’s advertising customers when selling its advertising services. – IPNTA 5th at 821

Product Placement

• Drugstore analogy; “shelf space wars”

• How similar to traditional product placement “wars” and tactics?

• 2d Cir: The key is “likelihood of confusion”

IPNTA 5th at 822

TM infringement requires an unauthorized use, which ‘‘is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, . . . or as to the origin, sponsorship, or approval of . . . goods [or] services.’’ See 15 U.S.C. §1125(a)

We have no idea whether Rescuecom can prove that Google’s use of Rescuecom’s trademark in its AdWords program causes likelihood of confusion or mistake.

AMF v. Sleekcraft

“Slick vs. Sleek”

• Competing goods

– Does a sale of defendant’s good replace a sale of plaintiff’s good?

– High Cross-Elasticity of demand

Related Goods

• No direct “replacement effect”

• But: goods are close enough that similar marks may cause some competitive harm

– Confusion/diversion/”blurring”

AMF/Sleekcraft Factors

1. the strength of the mark;2. proximity or relatedness of the goods3. similarity of the marks;4. evidence of actual confusion;5. the marketing channels used;6. degree of customer care in purchase;7. defendant's intent in selecting the mark;8. likelihood of expansion into other markets.

Strength of mark in infringement analysis

• Separate from invalidity analysis, e.g., Park n’ Fly

• Why relevant? Consumer associations again . . .

Similarity analysis

• “Sight, sound and meaning” test

KING vs. LION KINGFAR SIDE vs. DISTANT SIDECRAZY CAT v. KRAZY KAT

• Role of (1) differentiating factors, and (2) disclaimers

Who is this?

D’oh!

Role of Examples

• “The Distant Side ® Cartoon Series Is not related to and is not sponsored by, produced by or affiliated with the Far Side ® cartoons or Gary Lawson”

“The Distant Side ® Cartoon Series Is not related to and is not sponsored by, produced by or affiliated with the Far Side ® cartoons or Gary Lawson”

The Distant Side

AMF/Sleekcraft Factors

1. the strength of the mark;2. proximity or relatedness of the goods3. similarity of the marks;4. evidence of actual confusion;5. the marketing channels used;6. degree of customer care in purchase;7. defendant's intent in selecting the mark;8. likelihood of expansion into other markets.

Internet Era Doctrines

• Use in Commerce

• “Initial Interest Confusion”

Likelihood of Confusion

Binder v. Disability Group, Inc. 772 F.Supp.2d 1172 (C.D. Cal. 2011)

Both Parties agree that from March 26, 2006 to November 6, 2006 Defendants [Disability Group] used Plaintiffs' trademark in an advertising campaign through Google AdWords. Google AdWords allows advertisers to pay to place targeted “Sponsored Links” on the results page of a Google search. In order to have their ads appear on the search results page, Google advertisers select and bid on AdWords (purchased keywords) so that their ad might be displayed on the search results. Defendants used “Binder and Binder” as AdWords linked to their websites.

Holding

• We also find that potential clients suffered actual confusion regarding the mark. Although the survey conducted by Jessica Bowers may not have been ideal, we find that it is one piece of evidence among others, including witness testimony, that establishes actual confusion. – at 1176

Sixteen of the seventeen individuals polled under the survey believed that when they clicked on Defendants' website following their search, they were actually being brought to Binder and Binder's website. Fifteen out of seventeen thought that when filling out submission forms on Defendants' site, they were doing so on Binder and Binder's website or someone associated with them. – at 1177

Post Sales Confusion

• The brand and (non purchasing) third parties

• Shading over into dilution theory

• Broader commercial interest

– Consumer protection vs. producer property interest