Intellectual Property

Boston College Law School

April 7, 2008

Trademark – Infringement

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.

1-800-Contacts v. WhenU

Keyword Buys

Keyword Buys

Infringement

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

Likelihood of Confusion

• Typical Factors (e.g. Polaroid, Sleekcraft, etc.) – Strength of mark

– Proximity of goods

– Similarity of marks

– Actual confusion

– Marketing channels

– Types of goods and consumer care

– Defendant’s intent

– Likelihood of expansion in product lines

AMF v. Sleekcraft

AMF“SLICKCRAFT”

Nescher“SLEEKCRAFT”

Examples of Similarity• Sight

– Squirt v. Quirst (softdrink)

– 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)

– Apple v. Pineapple (computers

– Pledge v. Promise (furniture polish)

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”)– Post-sale confusion– Reverse confusion

Problem 5-5

• Factors– Strength of mark

– Proximity of goods

– Similarity of marks

– Actual confusion

– Marketing channels

– Types of goods and consumer care

– Defendant’s intent

– Likelihood of expansion in product lines

Private Labels

Administrative

• Next Class– Read through VI.D.3 – Dilution