It should first be noted that the Lanham Act gives the owner of a federal
trademark registration an express cause of action for infringement of their
registered mark. 1 There are also state law issues that may also be applicable that are not
discussed in this letter. The Lanham Act provides:
Any person who shall, without the consent of the registrant --
shall be liable in a civil action by the registrant for the remedies hereinafter
provided. 3 There are six factors utilized by the courts to determine whether a
likelihood of confusion exists between two marks: 4
- 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
- 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, 2
None of the six factors alone are dispositive of whether there is a "likelihood of
confusion." "Each factor must be considered" in determining the likelihood of confusion without
placing exceptional significance on any one factor. 6
- Trademark's Strength in the marketplace;
- Similarity of the marks;
- Competitive Closeness of the products on which the marks are placed;
- Infringer's Intent to pass off goods as those of the trademark holder;
- Actual Confusion amongst consumers; 5 and
- Sophistication Of Consumers which purchase the trademark holder's goods.
If infringement is proven, there are three forms of federal relief the owner has: (i)
injunction, (ii) monetary relief, and (iii) a destruction order. 7 Injunctive relief prevents the violation of the rights of the holder of a
federal registration. 8 The award of injunctive relief is to be made "according to the general
principles of equity and upon such terms as the court may deem reasonable." 9
There are three forms of monetary relief that a successful plaintiff may recover: (i)
defendant's profits, (ii) any damages sustained by plaintiff, and (iii) costs
of the action. 10 Recovery of profits and damages is limited where the defendant has no
notice of the owner's registration unless the owner has placed the appropriate registration notice on the goods sold. 11
A court also has the discretion to award an amount that the court finds "to be just," with a limit up to three times the plaintiff's actual damages. 12
Enhancement of damages is appropriate where the defendant's infringement was willful, as long as
the award is not punitive. 13 In "exceptional cases," reasonable attorney's fees may be awarded
to the prevailing party. 14 Attorney's fees may be awarded where the defendant's infringement was
malicious, fraudulent, deliberate or willful.
- 15 U.S.C. §1114(1).
- Under subsection (b) of this section, 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.
- 15 U.S.C. §1114(1).
- ConAgra Inc. v. George A. Hormel & Co., 990 F.2d 368 (8th Cir. 1993); Downtown/Passport Int'l Hotel Corp. v. Norlew, Inc., 841 F.2d 214 (8th Cir. 1988); Life Technologies, Inc. v. Gibbco Scientific, Inc., 826 F.2d 775 (8th Cir. 1987); Comidas Exquientos, Inc. v. O'Malley & McGee's, Inc., 775 F.2d 260 (8th Cir. 1985).
- The Eighth Circuit accords likelihood of confusion survey evidence considerable weight. Stuart Hall Co. Inc. v. Ampad Corp., 51 F.3d 780 (8th Cir. 1995).
- ConAgra, 990 F.2d at 371; Life Technologies, 826 F.2d at 776.
- 15 U.S.C. §§1116-1118.
- 15 U.S.C. §1116(a).
- 15 U.S.C. §1117(a). An award for monetary relief is "subject to the principals of equity," therefore not automatic. Id.
- 15 U.S.C. §1111.
- 15 U.S.C. §1117(a). The amount awarded must constitute "compensation and not a penalty." Id.; See also Electronics Corp. of America v. Honeywell, Inc., 358 F.Supp. 1230, 1234-1235 (D. Mass. 1973).
- Taco Cabana Int'l, Inc. Two Pesos, Inc., 112 S.Ct. 2753 (1992). Where difficulties in measuring the plaintiff's damages have caused the plaintiff to be undercompensated, an enhancement of the award is justified. Id.