trademark infringement

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Trademark law protects a trademark owner's exclusive right to use a trademark when use of the mark by another would be likely to cause consumer confusion as to the source or origin of goods. Trademark law is a federal issue, and as such, the Lanham Act is the federal statute which governs trademarks. To establish a violation under the Lanham Act for either a registered mark under 15 U.S.C. § 1114, or an unregistered mark under 15 U.S.C. § 1125(a), the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.  See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000).

Breaking Down The Elements 

To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent.  The plaintiff must also show that defendant's use of the mark is likely to cause confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods, services or commercial activities by plaintiff.  See 1-800 Contacts, Inc. v., Inc., 414 F.3d 400 (2d Cir. 2005).  Thus, "use," "in commerce," and "likelihood of confusion" are three distinct elements necessary to establish a trademark infringement claim. 


"Use" of a trademark by an alleged infringer must be established as a threshold matter.  Any number of activities may be "in commerce" or may create a "likelihood of confusion." However, without the use of a trademark, such activities do not violate the Lanham Act.  The use requirement serves a limiting function by preventing trademark holders from asserting a generalized right to control language.  Some conduct through which a seller or producer seeks to capitalize on a competitor's name recognition does not amount to "use" for purposes of a trademark infringement claim.  For example, "pop-up" advertisements on the Internet or specific product placement in retail stores may be objectionable to the holder of a trademark, but such uses would not violate the Lanham Act.  See 1-800 Contacts, Inc. v., Inc., 414 F.3d 400 (2d Cir. 2005)

"In commerce"

The statutory requirement that an alleged infringing use of a trademark be "in commerce" to establish a claim of infringement under the Lanham Act is derived from trademark law's basis in the congressional power to regulate interstate commerce.  To satisfy the "in commerce" requirement, the plaintiff must demonstrate that the allegedly infringing activities have a substantial effect on interstate commerce.  Activities that meet the "in commerce" requirement include:

  1. advertising by the alleged infringer in more than one state;
  2. interstate movement of goods bearing an infringing mark from manufacturer to seller;
  3. sending a product to another state for the purpose of registering a trademark;
  4. advertising in newspapers that have interstate distribution, on billboards near interstate highways, or on radio or television stations with an interstate broadcasting range. 
"Likelihood of confusion"

"Likelihood of confusion" is the central focus of any trademark infringement claim.  A likelihood of confusion exists when consumers viewing the allegedly infringing mark would probably assume that the product or service it represents is associated with the source of a different product or service identified with a similar mark. Courts conducting a likelihood of confusion analysis will apply 2 different standards, depending on whether the accused item directly competes or does not directly compete with the tradrmarked item (See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir. 2000)): 

  1. When the accused item directly competes with the trademarked item in the goods and services provided:
    1. the trial court will rarely look beyond the mark itself; infringement will usually be found if the two marks at issue are so sufficiently similar that consumer confusion can be expected. 
  2. If the goods in question are completely unrelated in the goods and services which provided:
    1. the court will typically find that confusion is unlikely, and therefore there is no infringement  

If the goods in question are related but do not directly compete for sales, the likelihood of confusion analysis becomes more complex.  The Lapp test is a non-exhaustive list of factors to be considered in determining whether there is a likelihood of confusion between marks.  Factors relevant to a determination of likelihood of confusion include (See Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983):

  1. the strength of the trademark owner's mark;
  2. the degree of similarity between the trademark owner's mark and the allegedly infringing mark;
  3. evidence of actual consumer confusion;
  4. the marketing channels used;
  5. the type of goods involved and the degree of care likely to be exercised by the purchaser;
  6. the alleged infringer's intent in selecting the mark;
  7. other facts showing that the consuming public is likely to expect the trademark owner to manufacture a product in the alleged infringer's market, or is likely to expand into that market.  

Trademark law is equitable and utilizes the traditional equitable defenses with the added element of a presumption favoring the registrant for trademarks that are registered under the Lanham Act.  In addition to the equitable doctrines of laches, estoppel, and unclean hands, an alleged infringer may assert the defenses of fair use and collateral use.  Fair use allows commentary or criticism that incidentally involves the use of a trademark so long as such use is for a purpose other than that normally made of a trademark.  When a party uses a trademarked item as a component of a more complex product, collateral use allows the party to identify that component by its trademarked name.


The remedies for infringement under the Lanham Act are statutory and consist of: injunctive relief; an accounting for profits; damages, including the possibility of treble damages when appropriate; attorney's fees in "exceptional cases;" and costs.  See 15 U.S.C. § 1117.  These remedies are cumulative, meaning that a successful plaintiff may recover the defendant's profits in addition to any damages, or other remedies awarded. 

Anti-Disparagement Clause

15 U.S. Code § 1052(a), also known as the Lanham Act's Anti-Disparagement Clause, prohibits the trademarking of an entity. The clause states that an individual may not trademark something which "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." 

This clause was challenged in Matal v. Tam (2017). In Matal, the Supreme Court unanimously found that the Anti-Disparagement Clause violates the First Amendment's Free Speech Clause. The Court found that the clause constituted impermissible viewpoint discrimination. As a result of this ruling, certain things which were previously prohibited from being trademarked (because they violated the Anti-Disparagement Clause) may now be trademarked.

Recovering Attorney Fees

15 U.S. Code § 1117 is the statute which discusses recovery for violating a trademark. Under 15 U.S. Code § 1117(a), the statute deals with the recovery of attorney fees. The statute reads, "The court in exceptional cases may award reasonable attorney fees to the prevailing party."

In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014),  the Supreme Court added clarity to what an "exceptional case" is. The Octane Court defined an "exceptional case" as one that stands out due to either 1 of 2 things:

  1. the strength of a party’s litigating position
    1. for this prong, courts should look at the facts of the case and the law which governs the issue
  2. the unreasonable manner in which the case was litigated
    1. To determine whether a case is ‘exceptional,’ lower courts should look at the totality of the circumstances on a case-by-case basis 

The Octane Rule and Lower Courts' Interpretations

Octane specifically dealt with recovery for patent infringement under the Patent Act, 35 U.S. Code Chapter 29 Section 285. However, both the Patent Act and the Lanham Act use identical language for determining whether it is appropriate to award attorney fees to a prevailing party in a patent/trademark infringement case ("The court in exceptional cases may award reasonable attorney fees to the prevailing party"). Further, lower courts have used the Octane rule when faced with trademark infringement issues. 

In Georgia-Pacific Consumer Products v. Von Drehle, 781 F. 3d 710 (4th Cir. 2015), the court acknowledged the identical language as a good enough justification to look to the Octane rule, even in a trademark infringement case: "To be sure, the Octane Fitness Court did not interpret the attorneys fees provision of § 1117(a). But the language of § 1117(a) and § 285 is identical, and we conclude that there is no reason not to apply the Octane Fitness standard when considering the award of attorneys fees under § 1117(a)." The court then held that a "district court may find a case "exceptional" and therefore award attorneys fees to the prevailing party under § 1117(a) when it determines, in light of the totality of the circumstances, that

  1. there is an unusual discrepancy in the merits of the positions taken by the parties, based on the non-prevailing party's position as either frivolous or objectively unreasonable
  2. the non-prevailing party has litigated the case in an unreasonable manner, or
  3. there is otherwise the need in particular circumstances to advance considerations of compensation and deterrence."

In Perfect 10, Inc. v. Giganews, Inc., No. 15-55500 (9th Cir. 2017), the court also chose to apply the Octane rule to a trademark infringement case.

Upon appeal to the United States Court of Appeals for the Federal Circuit, the court held in Romag Fasteners v. Fossil (2017), the court found that "the Second Circuit would hold that, in light of Octane, the Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act."

Not all circuit courts, however, have chosen to extend the Octane rule to trademark infringement cases. In Romag Fasteners, Inc. v. Fossil, Inc., C.A. No. 3:10cv1827 (JBA) (D. Conn. Aug. 14, 2014), the trial court held that "the Supreme Court was interpreting only the Patent Act and not the Lanham Act in Octane Fitness." And as such, this court refused to apply the Octane rule to trademark infringement cases. While the Second Circuit has not heard an appeal of the case yet, the case was appealed to the United States Court of Appeals for the Federal Circuit, which held that "the Second Circuit would hold that, in light of Octane, the Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act." It has yet to be seen, however, how the Second Circuit would rule on this issue. 

Further Reading

For more on marks under the Lanham Act, please see certification markscollective marks, and trademarks.

For more on trademark infringement, please see this Harvard Law Review article, this UCLA Law Review article, and this Yale Law Review article