Lanham Act: §§ 1114(1) and 1125(a) (trademark infringement); and § 1125(c) | mrisch | August 09, 2012

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Lanham Act: §§ 1114(1) and 1125(a) (trademark infringement); and § 1125(c)

by mrisch
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§1114. Remedies; infringement; innocent infringment by printers and publishers

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(1)

Any person who shall, without the consent of the registrant--

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(a)

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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

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(b)

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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) hereof, 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.

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As used in this paragraph, the term "any person" includes the United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, or other persons acting for the United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.

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[...]

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§1125. False designations of origin and false descriptions forbidden

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(a)

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Civil action.

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(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, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B)
in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

(2)

As used in this subsection, the term "any person" includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.

(3)

In a civil action for trade dress infringement under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.
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[...]
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c)

Remedies for dilution of famous marks.

(1)

The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to--
(A)
the degree of inherent or acquired distinctiveness of the mark;
(B)
the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C)
the duration and extent of advertising and publicity of the mark;
(D)
the geographical extent of the trading area in which the mark is used;
(E)
the channels of trade for the goods or services with which the mark is used;
(F)
the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;
(G)
the nature and extent of use of the same or similar marks by third parties; and
(H)
whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(2)

In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief as set forth in section 34 [15 USC 1116] unless the person against whom the injunction is sought willfully intended to trade on the owner's reputation or to cause dilution of the famous mark. If such willful intent is proven, the owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36 [15 USC § §1117(a), 1118], subject to the discretion of the court and the principles of equity.

(3)

The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution of the distinctiveness of a mark, label, or form of advertisement.

(4)

The following shall not be actionable under this section:
(A)
Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B)
Noncommercial use of a mark.
(C)
All forms of news reporting and news commentary.

 

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Annotated Text Information

July 11, 2014

trademark statute

Lanham Act: §§ 1114(1) and 1125(a) (trademark infringement); and § 1125(c)

Lanham Act: §§ 1114(1) and 1125(a) (trademark infringement); and § 1125(c)

Author Stats

mrisch

Professor of Law

Villanova University School of Law

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