What are the Requirements for a Trademark Claim Under the Lanham Act?
December 15, 2017
Any business that offers goods or services to the public uses names, phrases, logos, or designs to distinguish their products or services from those of their competitors. These elements are often known as the “brand” for a particular product or service. Trademark law protects the value of brands by preventing unauthorized use of a logo, phrase, or other mark in a way that could cause confusion. The Lanham Act, found in Chapter 22 of Title 15 of the U.S. Code, established national standards for trademark registration, and allows private lawsuits in cases of infringement.
How Does the Lanham Act Define “Trademark”?
The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” that a person or business either uses in commerce to distinguish their product or service from others or “has a bona fide intention to use in commerce” when they apply for registration. 15 U.S.C. § 1127. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is considered to be evidence “of the registrant's exclusive right to use the registered mark.” 15 U.S.C. § 1115(a).
What Sort of Acts Constitute Infringement?
Infringement of a registered mark includes the use of “any reproduction, counterfeit, copy, or colorable imitation” in order to sell or advertise goods or services, and which “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1).
The owner of an unregistered trademark may be able to assert a claim under the Lanham Act’s “likelihood of confusion” standard, which prohibits the use of the mark in a way that is likely to deceive or cause confusion about the nature or origin of a product or service. 15 U.S.C. § 1125(a)(1).
What Evidence Must a Plaintiff Provide?
For registered trademarks, a plaintiff must establish registration of the mark. If the trademark is not registered, the plaintiff must show that they have used the mark in commerce to designate particular goods or services.
Next, the plaintiff must produce evidence of unauthorized use of their mark in commerce by the defendant. Finally, they must show that the defendant’s use of the mark causes confusion or is likely to cause confusion.
What Defenses are Available to a Trademark Infringement Claim?
A defendant accused of infringing a registered trademark can offer several defenses under 15 U.S.C. § 1115(b), including:
- The trademark registration was fraudulent;
- The plaintiff abandoned the mark;
- The plaintiff gave the defendant permission to use the mark;
- The mark is merely descriptive of the product or service, and therefore not subject to Lanham Act protection; or
- The defendant was using the mark, without knowledge of the plaintiff’s use, before the date the mark was registered with the USPTO.
Most of these defenses also apply to alleged infringement of an unregistered trademark.
What are the Penalties or Damages for Trademark Infringement?
A plaintiff who proves all of the elements of trademark infringement or “likelihood of confusion” can recover as damages any profits received by the defendant as a result of their use of the mark, any actual damages suffered by the plaintiff, and the costs of the lawsuit. 15 U.S.C. § 1117(a). A court may award attorney’s fees to plaintiffs in “exceptional cases.” Intentional use of a counterfeit mark in certain circumstances can result in a damage award equal to three times the defendant’s profits. Courts may also order the destruction of infringing materials. 15 U.S.C. § 1118.
Update: The US Supreme Court held that a trademark infringement plaintiff need not show willfullness to obtain a profit remedy.
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