Trademark and Unfair Comp.

Boston College Law School

February 27, 2008

Likelihood of Confusion

Causes of Action

• Trademark Causes of Action– Infringement– Dilution– False Advertising– Cybersquatting

Infringement

• Lanham Act §32(1) (15 U.S.C. §1114):– 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 … shall be liable in a civil action by the registrant for the remedies hereinafter provided.

Infringement

• Initial Questions– Issue of fact or issue of law?– Who must be confused?– How much confusion must there be?– Confused as to what?

Infringement

• Types of confusion– Product (e.g. Mike shoes)– Source (e.g. Nike mittens)– Sponsorship (e.g. Nike on soup can)– Initial interest (e.g. “buy Nike’s here”)– Reverse confusion

Polaroid v. Polarad287 F.2d 492 (2d Cir. 1961)

• Polaroid Factors– (1) Strength of plaintiff’s mark

– (2) Degree of similarity of marks

– (3) Proximity of products or services

– (4) Likelihood of plaintiff bridging the gap

– (5) Evidence of actual confusion

– (6) Defendant’s good faith

– (7) Quality of defendant’s products

– (8) Sophistication of buyers

Examples of Mark Similarity• Sight

– Squirt v. Quirst (soft drinks)

– Cartier v. Cattier (cosmetics)

– Tornado v. Vornado (appliances)

• Sound– Cygon v. Phygon (insecticide)

– Huggies v. Dougies (diapers)

– Bonamine v. Dramamine (drugs)

• Meaning– Cyclone v. Tornado (link fencing)

– Pledge v. Promise (furniture polish)

– Mountain King v. Alpine Emperor (christmas trees)

E&G Gallo v. Gallo Nero

Banfi v. Kendall-Jackson

HypotheticalAMF

“SLICKCRAFT”Nescher

“SLEEKCRAFT”

• Recreational boats

• Used for waterskiing, fishing, etc

• Local retail boat stores

• $50 million annual sales

• Power boats

• Used for racing, etc.

• Local retail boat stores

• $6 million annual sales

Trade Dress Infringement

• Lanham Act §43(a) (15 U.S.C. §1125(a)):– (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 … which --

• (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such

person or with another person … shall be liable in a civil action ….

Best Cellars v. Grape Finds

Best Cellars v. Grape Finds

Best Cellars v. Wine Made Simple

Private Labels

Problem

Administrative Details

• Next Assignment– VI.A.3 – Types of Confusion– VI.A.4 – Trademark Use