User:Useracg/Trademark infringement

Defenses[edit]
The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid exception (e.g., comparative advertising) or defense (e.g., laches) to infringement, or attack and cancel the underlying registration (e.g., for non-use) upon which the proceedings are based. Other defenses include fraud, genericness, functionality, abandonment, or fair use.

Comparative Advertising[edit]
Comparative advertising occurs when one party uses another party's trademark to refer to the trademark owner or its goods or services. The Federal Trade Commission allows comparative advertising where the bases of the comparison are truthful, non-deceptive, and clearly specified. The user of the trademark cannot imply or suggest sponsorship, endorsement, or affiliation by the mark owner. If the user uses the trademark in a way that does not confuse or mislead consumers and only uses as much of the mark as necessary for identification (e.g., use of the words but not use of the same font or graphics), then this may be considered fair use.

Laches[edit]
Laches is an equitable defense. The doctrine applies when a defendant affirmatively establishes: (1) knowledge by the plaintiff of facts constituting a cause of action or a reasonable opportunity to discover such facts; (2) an undue delay by the plaintiff in commencing an action; and (3) damage to the defendant resulting from the delay in bringing the action.

Fraud[edit]
A viable defense to trademark infringement may assert "[t]hat the registration or the incontestable right to use the mark was obtained fraudulently."

A defense of fraud by the trademark owner can be raised at any time, and includes proving that: (1) the applicant made a false representation to USPTO; (2) the false representation is material to the registrability of a mark; (3) the applicant had knowledge of the falsity; and (4) the applicant made representation with the intent to deceive the USPTO.

Genericness[edit]
Trademarks that evolve over time into a generic term for a class of items, rather than remaining a source-identifying distinctive term, may lose trademark status. Genericide is a doctrine in which a formerly-protectable mark is held to be unprotectable because it no longer signifies the source or producer of the product (e.g., Aspirin as a product made by Bayer) but instead a category or genus of product (aspirin as pain reliever that a generic manufacturer can call their product).

A genericness argument alleges that a formerly-protectable mark has become generic in a specific market or industry as signifying not the producer but a category or genus of product.

Functionality[edit]
The functionality doctrine states that functional product features cannot be trademarked. Functionality is a recognized defense to trademark infringement in U.S. law. This defense prevents trademark protection from overriding patent protection by ensuring that no mark can be registered if it is functional as a whole.

For example, in Valu Engineering, Inc. v. Rexnord Corp., the court decided that certain conveyor belt shapes were functional due to their increased performance over alternative designs and were therefore not eligible to be considered a trademark.

The Supreme Court has held that a product is functional if:

(1) it is essential to the use or purpose of the article, or if it affects the cost or quality of the article; OR

(2) the exclusive use of of the functional feature would put competitors at a significant disadvantage.

Abandonment[edit]
Abandonment of a trademark occurs when the owner of the trademark deliberately ceases to use the trademark for three or more years, with no intention of using the trademark again in the future. When a trademark is abandoned, the trademark owner may no longer claim rights to the trademark. In effect, this frees the trademark so that anyone else can use it without recourse from the original trademark owner.

Fair Use[edit]
The Lanham Act’s fair-use exception is an affirmative defense requiring the defendant to prove that the term was used in good faith and in a descriptive manner for a purpose other than as a mark. The Lanham Act includes a fair-use exception, under § 1115(b)(4), for trademarks that consist of descriptive words, to prevent trademark monopolies over the use of descriptive terms.

There are two types of fair use, descriptive fair use and nominative fair use.

Descriptive fair use allows a third party to use another party's descriptive trademark to describe its own product or service. In order to successfully assert a fair-use defense to a trademark infringement claim, the defendant must prove the three elements of the fair-use doctrine: (1) that the term was used in a way other than as a mark; (2) that the term was used to describe the goods or services offered or their geographic origin; and (3) that the use had been undertaken in good faith.

Nominative fair use allows third parties to use another party's trademark to refer to that party's actual product or service. The use must not create a likelihood of confusion and cannot imply sponsorship or endorsement by the trademark owner where none exists.

Injunctive Relief[edit]
Injunctions are court orders commanding that the infringer immediately cease its unlawful activities. A plaintiff will be entitled to injunctive relief for trademark infringement if they show probable success on the merits and the possibility of irreparable injury.

Monetary Relief[edit]
Pursuant to 15 U.S.C. § 1117(a), a plaintiff can recover the infringer’s profits, any damages sustained, and the costs of the action. In assessing profits, the brand owner must prove only the gross amount of the defendant’s sales. Thereafter, the defendant has the burden of providing evidence of any amount that should be deducted.

An accounting of profits is proper in a trademark infringement case only where the defendant engages in willful infringement, meaning that the defendant attempted to exploit the value of an established name of another. Alternatively, a plaintiff may recover damages incurred if they show a reasonable forecast of lost profits.

Notable Cases[edit]

 * Facebook, Inc. v. Power Ventures, Inc.
 * Google, Inc. v. American Blind & Wallpaper Factory, Inc., in which Google's AdWords program was alleged to be in violation of trademark
 * Rescuecom Corp. v. Google Inc., in which the use of trademarks in Google's AdWords program was found to be a "use in commerce" under the Lanham Act
 * Network Automation, Inc. v. Advanced Systems Concepts, Inc., in which the use of a competitor's trademark as an Internet advertisement search keyword was found to not constitute trademark infringement
 * College Network, Inc. v. Moore Educational Publishers, Inc., in which the use of a competitor's trademark does not qualify as a "use in commerce" is upheld
 * Polaroid Corp. v. Polarad Elects.
 * Inwood Laboratories, Inc. v. Ives Laboratories, Inc.
 * Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.