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Nevada Law Library

Trademark Protection and Infringement

A trademark is a word, a name, a symbol, a device, or a combination of them that indicates the source of goods. The owner, assignee, or licensee of a trademark has the right to exclude all others from using that trademark. One acquires the right to exclude others from using a trademark by being the first to use it in the marketplace, or by using it before the alleged infringer. Rights in a trademark are obtained only through commercial use of the mark.

The owner of a trademark may transfer, give, or sell to another person the owner's interest in the trademark. This type of agreement or gift is called an assignment, and the person who receives the owner's interest is called an assignee. An assignee has the right to exclude others from using the trademark. To be enforceable, the assignment must be in writing and signed. It must also include the goodwill of the business connected with the trademark.  The owner of a trademark may also enter into another type of agreement that permits another person to use the trademark. This type of agreement is called a license, and the person permitted to use the trademark is called a licensee.

A trademark owner, assignee, or licensee may enforce the right to exclude others in an action for infringement or unfair competition under 15 U.S.C. § 1125(a)].

Trademark Registration

Once the owner of a trademark has obtained the right to exclude others from using the trademark, the owner may obtain a certificate of registration issued by the United States Patent and Trademark Office. Thereafter, when the owner brings an action for infringement, the owner may rely solely on the registration certificate to prove that the owner has the right to exclude others from using the trademark in connection with the type of goods specified in the certificate.

A trademark is defined by the Lanham Act, 15 U.S.C. § 1127. Under the Lanham Act, the term "mark" is often used to define the various types of mark protected by the trademark law, such as trade and service marks, collective trade and service marks, and certification trade and service marks. New Kids on the Block v. New America Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992).

A trademark is a limited property right in a particular word, phrase or symbol. See New Kids on the Block, 971 F.2d at 306. It identifies the source of goods. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1051 (9th Cir. 1999). But it fails to serve its source-identifying function when the public has never Seen it, for instance when registered for an Internet domain name. Id. Accordingly, it is not protected until it is used in public in a manner that creates an association among consumers between the mark and the mark's owner. Id. The ability of a trademark to distinguish the source of the goods it marks, not the uniqueness of its color, shape, fragrance, word or sign, entitles it to protection. See Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164, 166 (1995). Accordingly, even "a color may sometimes meet the basic legal requirements for use as a trademark" if it can sufficiently serve the basic purpose of source identification. Id.

If other types of marks are involved in the case, adjustments to this instruction should be made as follows:

Service Mark Cases

A service mark is any word, name, symbol, device, or any combination thereof, used by a person to identify and distinguish such person's services from those of others and to indicate the source of the services, even if that source is generally unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks as well.  "Generally speaking, a service mark is a distinctive mark used in connection with the sale or advertising of services . . . ." American Int'l Group v. American Int'l Bank, 926 F.2d 829, 830 n.1 (9th Cir. 1991).

Collective Trademark Cases

A collective trademark is any word, name, symbol, device, or combination thereof, used by a cooperative, an association, or other collective group or organization to identify and distinguish its goods from those of others, and to indicate the source of the goods, even if that source is generally unknown.  A person who uses the collective trademark of a cooperative, association, or another collective group or organization may be liable for damages.  For a description of a collective mark, See Sebastian Int'l v. Longs Drug Stores, 53 F.3d 1073, 1077-78 (9th Cir. 1995) (Ferguson, J., concurring).

Collective Service Mark Cases

Regarding a collective service mark, See Robi v. Reed, 173 F.3d 736, 739-40 (9th Cir. 1999) (Musical group members, as collective mark owners of the group's service mark, do not retain the right to use the service mark when they leave the group, where members of the original group continue to use the service mark. The manager of the group, who was in a position to control the quality of its services, retained the right to use the service mark.).

Definition of Trade Dress (15 U.S.C. § 1125(A))

Trade dress is the non-functional physical detail and design of a product or its packaging, which indicates or identifies the product's source and distinguishes it from the products of others.  Trade dress is the product's total image and overall appearance, and may include features such as size, shape, color, color combinations, texture, or graphics. In other words, trade dress is the form in which a person presents a product or service to the market, its manner of display.  A person who uses the trade dress of another may be liable for damages.

Trade dress encompasses the design of a product. Unregistered trade dress requires a showing of non-functionality, distinctiveness and likelihood of confusion to support a finding of infringement. See Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 520 U.S.205, 210 (2000); Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763, 765 n. 1 (1992) (Trade dress involves "the total image of a product and may include features such as size, shape, color or color combination, texture, graphics, or even particular sales techniques."); Traffix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 28 (2001) ("The design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects protection for trade dress exists to promote competition."). See generally 1 J. Thomas McCarthy, Trademarks And Unfair Competition § 8:1 (4th ed. 2001).

Depending on the particular good or service to which the trade dress at issues applies, the following should be considered:


Product Design or Configuration Cases

Trade dress may be other than the packaging of the product. It may constitute the design or overall appearance or configuration of the product itself. In such cases, because the source identifying aspect is part of the physical product itself, functionality is an important issue. If such trade dress is at issue, add the following after the third paragraph of this instruction:

Trade dress concerns the overall visual impression created in the consumer's mind when viewing the non-functional aspects of the product and not from the utilitarian or useful aspects of the product. In considering the impact of these non-functional aspects, which are often a complex combination of many features, you must consider the appearance of features together, rather than separately.  See Two Pesos, Inc., v. Taco Cabana, Int'lInc., 932 F.2d 1113 (5th Cir. 1991),aff'd, 505 U.S. 763, 770-73 (1992); Vision Sports, Inc. v. Meville Corp., 888 F.2d 609, 613 (9th Cir. 1989).

Business Image Cases

Although this instruction addresses the trade dress of a product, the cases suggest that services might also have a protectable trade dress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764-65 (1992) (trade dress may include "even particular sales techniques."); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841-42 (9th Cir. 1987). This is treated much like trade dress comprised of product packaging.   See Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113 (5th Cir. 1991), aff'd, 505 U.S. 763 (1992); Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1258-59 (9th Cir. 2001) (definition of trade dress).


Definition—Trade Name/Commercial Name  (15 U.S.C. § 1127)

A trade name or commercial name is any word or words, a symbol, or combination of words and symbol, used by a person to identify that person's business, vocation, or occupation and to distinguish it from the business of others. A trade name or commercial name symbolizes the reputation of a person's business, vocation, or occupation as a whole. By comparison, a trademark identifies a person's goods.  Any person who uses the business, vocation, or occupation of another may be liable for damages.

Use of a term as a trade name and trademark is properly analyzed separately for infringement, when the term serves as both identification for an organization (trade name) and as an identification of the source of a product (trademark). See Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 903, 908-09 (9th Cir. 1995)). The right to use a term as a trade name is not necessarily coterminous with the right to use that term as a trademark for goods or services. See Stephen W. Boney Inc. v. Boney Services, Inc., 127 F.3d 821, 828-29 (9th Cir. 1997). Accordingly, each should be analyzed and instructed separately.

"Trade names symbolize the reputation of a business as a whole. In contrast, trademarks and service marks are designed to identify and distinguish a company's goods and services . . . . As a practical matter, courts are rarely called upon to distinguish between trade names, trademarks and service marks. Trade names often function as trademarks or service marks as well . . . . Perhaps because of this functional overlap, the same broad standards of protection apply to trademarks and trade names." Accuride Int'l v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir. 1989).


Trademark Liability—Theories And Policies (15 U.S.C. §§ 1114(1), 1125(A))

The trademark laws balance three often-conflicting goals: 1) protecting the public from being misled about the nature and source of goods and services, so that the consumer is not confused or misled in the market; 2) protecting the rights of a business to identify itself to the public and its reputation in offering goods and services to the public; and 3) protecting the public interest in fair competition in the market.

These facts are relevant to whether the defendant is liable for:

1. infringing plaintiff's registered trademark rights, by using a trademark in a manner likely to cause confusion among consumers;

2. unfairly competing, by using a trademark in a manner likely to cause confusion as to the origin or quality of plaintiff's goods;

3. unfairly competing, by using trade dress in a manner likely to cause confusion as to the origin or quality of plaintiff's goods;

4. infringing plaintiff's trade name, by using similar corporate, business or professional names in a manner likely to cause confusion about the source of products in the minds of consumers; and

5. false advertising, by making a false statement that was material and that tended to deceive consumers, injuring the plaintiff in the market.

"The limited purpose of trademark protections set forth in the Lanham Trade-Mark Act, is to 'avoid confusion in the marketplace' by allowing a trademark owner to 'prevent[ ] others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner.'" Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 806-07 (9th Cir. 2003) ("Generally, to assess whether a defendant has infringed on a plaintiff's trademark, we apply a 'likelihood of confusion' test that asks whether use of the plaintiff's trademark by the defendant is 'likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association' of the two products.") (citations omitted). Federal trademark law addresses "the dual purposes of infringement law: ensuring that owners of trademarks can benefit from the goodwill associated with their marks and that consumers can distinguish among competing producers." Thane Int'l v. Trek Bicycle Corp., 305 F.3d 894, 900-01 (9th Cir. 2002).

The general test of liability under the trademark law is likelihood of confusion. See 15 U.S.C. §§ 1114(1), 1125(a). "[T]he ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks.... Whether we call the violation infringement, unfair competition or false designation of origin, the test is identical-is there a 'likelihood of confusion?'" New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir. 1997).

Generally, liability for infringement of a registered trademark is handled under 15 U.S.C. § 1114(1). Unfair competition through infringing an unregistered trademark or infringing trade dress is handled under 15 U.S. C. § 1125(a). A cause of action for false advertising is also found in 15 U.S.C. § 1125(a). See Harper House Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989); U-HaulInt'l v. Jartran, Inc., 601 F.Supp. 1140 (D. Ariz. 1984), aff'd in part, modified in part & rev'd in part, 793 F.2d 1034 (9th Cir. 1986). Elements required for a false advertising claim, cognizable under 15 U.S.C. § 1125(a)(1)(B), are set forth in Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1180 (9th Cir. 2003).


Elements And Burden Of Proof—Trademark Infringement (15 U.S.C. § 1114(1))

To prove trademark infringement, the plaintiff has the burden of proving each of the following elements by a preponderance of the evidence that:

1.                   plaintiff's symbol or term is a valid, protectable trademark;

2.                   the plaintiff owns plaintiff's symbol or term as a trademark; and

3.                   the defendant used  symbol or term or a mark similar to  plaintiff's symbol or term without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.

This is the general standard for trademark infringement liability under the Lanham Act. Modify this instruction as necessary when other marks (e.g., service mark, collective trade or service marks, or certification trade or service marks), are at issue by inserting such terms in lieu of the word "trademark" in this instruction. Where the defendant's infringing action consists of using a mark similar, but not identical to the plaintiff's, particular care should be exercised in the third numbered element of this instruction. Gracie v. Gracie, 217 F.3d 1060, 1066-67 (9th Cir. 2000) (when instructing jury to consider if defendant "used" plaintiff's mark, trial court should make it clear jury can consider whether the marks were similar). The second bracketed phrase in the third numbered element of this instruction may be a sufficient specification in most cases involving defendant's use of mark similar, rather than identical, to the plaintiff's. In cases involving confusion "on the part of someone other than the purchaser" that occurs after the point of sale, the third numbered element may be modified to make reference to members of the relevant public beyond the direct purchaser. See Abercrombie & Fitch, Inc. v. Moose Creek, Inc., 486 F.3d 629, 635 (9th Cir.  2007).

The statute requires that the mark be either (1) used in commerce or (2) placed on goods intended to be used in commerce. 15 U.S.C. § 1114(1).   "It is not necessary for plaintiff in a trademark or unfair competition case to prove any past or present actual damages since one of the major benefits of injunctive relief is that it can be obtained prior to actual damage so as to prevent that damage from occurring." 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2007).

Generally, the burden of proof in infringement rests with the plaintiff. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002) ("Overall, the plaintiff retains the ultimate burden of persuasion in a trademark infringement action, namely proof of infringement. A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.").

Although 15 U.S.C. § 1114(1) provides protection only to registered marks and 15 U.S.C. § 1125(a)(1) protects against infringement of unregistered and registered marks, trade dress and false advertising, the Ninth Circuit has explained that "[d]espite these differences, the analysis [for infringement] under the two provisions is sometimes identical." Brookfield Communications, Inc., v. West Coast Entertainment Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir. 1999) (trademark infringement elements under either §1114 or §1125(a) involve a plaintiff showing 1) that defendant used a mark confusingly similar to 2) a valid, protectable trademark 3) that was owned by the plaintiff.).

Elements And Burden Of Proof—Trade Dress Infringement (15 U.S.C. § 1125(a)(1))

On the plaintiff's claim for trade dress infringement, the plaintiff has the burden of proving by a preponderance of the evidence each of the following elements:

1.                   the plaintiff's trade dress is distinctive;

2.                   the plaintiff owns the plaintiff's trade dress as trade dress;

3.                   the the plaintiff's trade dress is nonfunctional; and

4.                   the defendant used trade dress or trade dress similar to plaintiff's trade dress without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the plaintiff's or defendant's goods.

Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 808 (9th Cir. 2003) ("Generally, to recover for trade dress infringement under [15 U.S.C.] § 1125, a plaintiff must show that 'its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse consumers.' A trade dress is protectable if it is 'nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion.'") (citations omitted); Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing as elements of proof necessary to show infringement of a bottle design as: "(1) nonfunctionality, (2) distinctiveness and (3) likelihood of confusion.")  "It is not necessary for plaintiff in a trademark or unfair competition case to prove any past or present actual damages since one of the major benefits of injunctive relief is that it can be obtained prior to actual damage so as to prevent that damage from occurring." 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2007).

Presumed Validity And Ownership Of A Registered Trademark (15 U.S.C. §§ 1057,1065 And 1115)

One way for the plaintiff to prove trademark validity is to show that the trademark is registered. An owner of a trademark may obtain a certificate of registration issued by the United States Patent and Trademark Office.  See 15 U.S.C. § 1115(b). When a trademark has been registered, the defendant has the burden of proving that its registration is defective or subject to a defense. The defendant must show such defect or defense by a preponderance of the evidence. See Sengoku Work Ltd. v. RMC Intern., Ltd., 96 F.3d 1217, 1219-20 (9th Cir. 1996)(Registrant is granted a presumption of ownership under the Lanham Act and "challenger must overcome this presumption by a preponderance of the evidence."); Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 775-76 (9th Cir. 1981) (presumption of validity of a registered mark must be overcome by a preponderance of the evidence); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002) ("Validity...is a threshold issue. On this point, the plaintiff in an infringement action with a registered mark is given the prima facie or presumptive advantage on the issue of validity, thus shifting the burden of production to the defendant to prove otherwise. Or, to put it as we did in Vuitton, the defendant then bears the burden with respect to invalidity. Once the presumption of validity is overcome, however, the mark's registration is merely evidence 'of registration,' nothing more. This approach can be characterized as rebutting the prima facie case or 'piercing the presumption.'") (summary judgment case).

Incontestability

When registered more than five years and if certain statutory formalities are met (e.g., timely filed affidavit of continuous use), a registration is considered "incontestible" evidence of the registrant's right to use the mark. 15 U.S.C. § 1065. It is considered conclusive evidence of the validity of the registered mark as well as the registrant's ownership. 15 U.S.C. § 1115(b). The "validity and legal protectability, as well as the [registrant's] ownership therein, are all conclusively presumed," when a mark's registration becomes incontestible, subject to certain defenses. Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046-47 n.10 (9th Cir. 1999).

On the other hand, if the mark has been registered less than five years, it is considered "contestable" and provides only prima facie evidence of the validity and ownership of the mark, subject to any limitations stated in the registration. 15 U.S.C. §§ 1057(b) & 1115(a). See Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352,1354-55 (9th Cir. 1985) (plaintiff may not rely on the mark's registration for pants as applying to its use in the shirt market).

Incontestable Marks: If registered more than five years and if certain statutory formalities are met (e.g., timely filed affidavit of continuous use), the registration is considered "incontestable" evidence of the registrant's right to use the mark. See 15 U.S.C.§ 1065. It is considered conclusive evidence of the validity of the registered mark as well as the registrant's ownership. See 15 U.S.C.§ 1115(b). The "validity and legal protectability, as well as [registrant's] ownership therein, are all conclusively presumed," when a mark's registration becomes incontestable, subject to certain defenses. Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046-47 n.10 (9th Cir. 1999). Although a mark may become incontestable, it is still subject to certain defenses or defects, set forth in 15 U.S.C. § 1115. 6 J. Thomas McCarthy, Trademarks And Unfair Competition § 32:147. McCarthy suggests that there are at least twenty-one exceptions to incontestability provided in 15 U.S.C. §§ 1115(b), 1065 and 1064. Id. The most frequently asserted exceptions include 1) fraud in obtaining the registration or incontestable status; 2) abandonment; 3) use of the mark to misrepresent source; 4) fair use of the mark; 5) limited territorial defense by a junior user; 6) prior registration by the defendant; 7) use of mark to violate federal antitrust law; 8) the mark is functional; and 9) equitable defenses, such as laches, estoppel and acquiescence. See 15 U.S.C. § 1115(b). See also 6 J. Thomas McCarthy, Trademarks And Unfair Competition § 32:149 (4th ed. 2001).

Incontestability Exceptions and Defenses: If one of the exceptions to incontestible registration is proven, the registration is no longer conclusive but merely prima facie evidence of the registrant's right to ownership and the mark's validity (i.e., it becomes simply a contestable registration). See 15 U.S.C. § 1115(b). See also Park 'NFly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 199 n.6 (1985). Accordingly, the fact-finder must still consider whether the defendant has met the defendant's burden of showing by a preponderance of the evidence that the mark is not valid or that the plaintiff does not own it. See 6 J. Thomas McCarthy, Trademarks And Unfair Competition § 32:153 (4th ed. 2001). Similarly, if the defendant asserts and presents sufficient proof of an exception or defense to incontestability, the court will have to instruct the jury on the elements of these exceptions or defenses. As a practical matter, proof of an "exception to incontestability" may be sufficient to prove a defense to infringement as well.

Many of the "exceptions are a 'restatement' or 'partial codification' of traditional common law defenses to an unregistered mark." McCarthy, § 32:149. Accordingly, in many instances the jury can be instructed simply to find for defendant on the infringement claim if the exception to incontestability is found by a preponderance of the evidence.

Contestable Marks: On the other hand, if the mark has been registered less than five years, it is considered "contestable" and provides only prima facie evidence of the validity and ownership of the mark, subject to any limitations stated in the registration. See 15 U.S.C. §§ 1057(b) & 1115(a). See also Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352,1354-55 (9th Cir. 1985) (Registration constitutes prima facie evidence.). The effect of a contestable registration is to shift the burden of proof of ownership and validity from the plaintiff to the defendant. The defendant must rebut the presumption of plaintiffs exclusive right to use the trademark by a preponderance of the evidence. See Vuitton etFils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 755 (9th Cir. 1981). See also Maktab Tarighe Oveyssi Shah Maghsoudi v. Kianfar, 179 F.3d 1244, 1249 (9th Cir. 1999) (registration of marks constitutes prima facie evidence that the registrant owns the mark and is constructive notice of the claimed ownership of the mark by the registrant).

The Validity Of Unregistered Marks

A trademark is valid only if it is inherently distinctive or if it became distinctive through development of secondary meaning. Two Pesos, Inc. v. Taco Cabana, Int'l Inc., 932 F.2d 1113 (5th Cir. 1991), aff'd, 505 U.S. 763, 769 (1992). Whether a symbol acquired secondary meaning is a question of fact for the jury. See Transgo, Inc. v. Ajac Transmissions Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985).


Strength of Mark

Trademark law provides [great] protection to distinctive or strong trademarks. Conversely, trademarks that are not as distinctive or strong are called "weak" trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. For deciding trademark protectability you must consider whether a trademark is inherently distinctive. Trademarks are grouped into four categories according to their relative strength/distinctiveness. These four categories are, in order of strength or distinctiveness: arbitrary (which is inherently distinctive), suggestive (which also is inherently distinctive), descriptive (which is protected only if it acquires in consumers' minds a "secondary meaning".   

Arbitrary Trademarks. The first category is "inherently distinctive" trademarks. They are considered strong marks and are clearly protectable. They involve the arbitrary, fanciful or fictitious use of a word to designate the source of a product/service. Such a trademark is a word that in no way describes or has any relevance to the particular product/service it is meant to identify. It may be a common word used in an unfamiliar way. It may be a newly created (coined) word or parts of common words which are applied in a fanciful, fictitious or unfamiliar way, solely as a trademark.

For instance, the common word "apple" became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold. The company's use of the word "apple" was arbitrary or fanciful because "apple" did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics. "Apple" was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source.

Suggestive Trademarks. The next category is suggestive trademarks. These trademarks are also inherently distinctive but are considered weaker than arbitrary trademarks. Unlike arbitrary trademarks, [which are in no way related to what the product/service is or its components, quality, or characteristics,] suggestive trademarks imply some characteristic or quality of the product/service to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark's significance, then the trademark does not describe the product's features, but suggests them.

A suggestive use of a word involves consumers associating the qualities the word suggests to the product/service to which the word is attached. For example, when "apple" is used not to indicate a certain company's computers, but rather "Apple-A-Day" Vitamins, it is being used as a suggestive trademark. "Apple" does not describe what the vitamins are. However, consumers may come to associate the healthfulness of "an apple a day keeping the doctor away" with the supposed benefits of taking "Apple-A-Day" Vitamins.

Descriptive Trademarks. The third category is descriptive trademarks. These trademarks directly identify or describe some aspect, characteristic, or quality of the product/service to which they are affixed in a straightforward way that requires no exercise of imagination to be understood.

For instance, the word "apple" is descriptive when used in the trademark "CranApple" to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a product/service comes from, or the name of the person who makes or sells the product/service. Thus, the words "Apple Valley Juice" affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from. Similarly, a descriptive trademark can be the personal name of the person who makes or sells the product. So, if a farmer in Apple Valley, Judy Brown, sold her cider under the label "Judy's Juice" (rather than CranApple) she is making a descriptive use of her personal name to indicate and describe who produced the apple cider [and she is using her first name as a descriptive trademark.]

Generic Names. The fourth category is entitled to no protection at all. They are called generic names and they refer to a general name of the product/service, as opposed to the plaintiff's brand for that product/service. Generic names are part of our common language that we need to identify all such similar product/service. A generic name is a name for the product/service on which it appears.

If the primary significance of the alleged mark is to name the type of product/service rather than the manufacturer/provider, the term is a generic name and cannot be a valid trademark. If the majority of relevant consumers would understand the term to name the type of product/service rather than the manufacturer/provider, the primary significance of the term is generic and not entitled to protection as a trademark.

Clearly, the word apple can be used as a generic name and not be entitled to any trademark protection. This occurs when the word is used to identify the fruit from any apple tree.

The computer maker who uses the word "apple" as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against the grocer who used that same word to indicate the fruit sold in a store. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, "apple" is simply a commonly used name for what is being sold.

Mark Distinctiveness and Validity

A claimed trademark] which is arbitrary or suggestive is considered to be inherently distinctive. An inherently distinctive trademark is valid and protectable.  On the other hand, a claimed trademark which  is generic and cannot be distinctive and therefore is not valid nor protectable. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (2d Cir. 1976) (setting forth spectrum of marks from arbitrary to generic). The Supreme Court notes this case sets out a "classic test" of trademark strength. Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 210 (2000). It sets out the traditional spectrum of marks. See, e.g.. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) ("Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation ... they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful."); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1067 (9th Cir. 2003)("Trademarks are generally divided into four categories; (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. The latter two categories are deemed inherently distinctive and are automatically entitled to protection"), judgment vacated on other grounds, 543 U.S. Ill (2004).

A mark's strength is equivalent to its distinctiveness. E. &J. Gallo Winery v.Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992). Since 1988, the Ninth Circuit has utilized a two-prong test of mark strength. See Go lb. Com, Inc. v. Walt Disney Company, 202 F.3d 1199, 1207 (9th Cir. 2000) ("'strength' of the trademark is evaluated in terms of its conceptual strength and commercial strength"). Generally, use of the second prong is appropriate in cases of descriptive or suggestive marks. See, e.g., Japan Telecom. Inc. v. Japan Telecom America Inc., 287 F.3d 866, 873-74 (9th Cir. 2002) (descriptive trade name not protectable unless owner shows it acquired secondary meaning) (applying strength of mark analysis to tradename).

Traditionally, the Ninth Circuit has found that even though a mark has become incontestable, this status does not necessarily mean that it is a strong mark. See Miss World (UK) Ltd. v. Mrs. America Pageants, 856 F.2d 1445, 1449 (9th Cir. 1988). However, in 2003, the Ninth Circuit appeared to indicate that when a mark has become incontestable, it is presumed to be a strong mark as well. In a summary fashion, the Circuit noted that "[a] descriptive mark that has become incontestable is conclusively presumed to have acquired secondary meaning. Entrepreneur Media, [Inc. v. Smith,] 279 F.3d [1135 (9th Cir. 2002)] at 1142 n.3. This means that a defendant in a trademark infringement action cannot assert that an incontestable mark is invalid because it is descriptive and lacks secondary meaning. Park 'NFly, 469 U.S. at 205"), KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1071 (9th Cir. 2003) (trademark's "incontestable registration is conclusive evidence that the mark is non- descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning" of the mark), judgment vacated on other grounds, 543 U.S. 111 (2004).

Trade Dress Adjustments

In trade dress cases, the Supreme Court suggested the appropriateness of the arbitrary - suggestive- descriptive - generic spectrum for word trademarks, as used in this instruction. See Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 212-13 (2000). Such a test might be appropriate for trade dress that is product packaging as well. The same is not true for trade dress that consists of product design or configuration. The court indicated that application of such a spectrum is "problematic" if not erroneous. Id.

Accordingly, if a case involves aspects of a product that is physically and functionally inseparable from the product as a whole, that is, consists of a product design or configuration, no instruction on inherent distinctiveness is appropriate. Rather, the jury should be instructed on secondary meaning. See Wal-Mart Stores, 529 U.S. at 212-13. Similarly, if the court faces a trade dress case in which it was ambiguous whether the dispute involves product packaging or product design, the court should require a showing of secondary meaning. Wal-Mart Stores, 529 U.S. at 215 ("[C]ourts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.")

Infringement—Elements—Validity—Distinctiveness—Secondary Meaning

In cases involving product packaging, the differences between use of a word as opposed to use of various symbols or devices will probably require modification of this spectrum of marks instruction.  In lieu of modifying the spectrum of mark instruction, the court might consider the propriety of giving an instruction utilizing the test in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344-46 (C.C.P.A. 1977). While the Ninth Circuit has not specifically addressed use of Seabrook, it has generally suggested that inherently distinctive trade dress involves the overall impression that is arbitrary or uncommon.

The Ninth Circuit has required, without delineating specific factors that should be considered, that an inherently distinctive symbol or device identify the particular source of the product and distinguish it from other products. See International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 824 (9th Cir. 1993); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987) (restaurant design case). Some district courts have suggested the Seabrook test may be appropriate for certain types of trade dress. See, e.g., Continental Laboratory Products, Inc. v. Medax International, Inc., 114 F. Supp.2d 992, 999 n. 6 (S.D. Cal. 2000).


Trade dress is inherently distinctive if the total impression it gives the consumer is one that identifies it as coming from a specific origin or source, whether or not that source is known to the consumer. Inherently distinctive trade dress helps consumers identify the product, distinguishing the plaintiff's product from that produced by others, such as the defendant.

Market Recognition And Secondary Meaning

If a mark is descriptive, the recognition that the mark has among prospective consumers must be considered in order to determine whether it is valid and protectable even though it is descriptive. This market recognition is called the trademark's "secondary meaning."

A word, symbol, or term acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective consumers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is.   Consider the following factors:

1.                   Consumer Perception. Whether the people who purchase the product/service that bears the claimed trademark associate the trademark with the owner, assignee, or licensee;

2.                   Advertisement. To what degree and in what manner the owner, assignee, or licensee may have advertised under the claimed trademark;

3.                   Demonstrated Utility. Whether the owner, assignee, or licensee successfully used this trademark to increase the sales of its product/service;

4.                   Extent of Use. The length of time and manner in which the owner, assignee, or licensee used the claimed trademark;

5.                   Exclusivity. Whether the owner’s, assignee’s, or licensee’s use of the claimed trademark was exclusive;

6.                   Copying. Whether the defendant intentionally copied the owner’s, assignee’s, or licensee’s trademark; and

7.                   Actual Confusion. Whether the defendant's use of the plaintiff's trademark has led to actual confusion among a significant number of consumers.

The test for secondary meaning is the same whether for product configuration or trade dress or trademark cases. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 876 n. 6 (9th Cir. 1999). The penultimate paragraph to this instruction specifies two different burdens of persuasion as to secondary meaning. The burden is on the plaintiff if the mark is not registered, in which case part of the plaintiff's burden is to show the mark is distinctive (either by being inherently distinctive or by having acquired secondary meaning), and hence protectable. See Self-Realization Fellowship Church v. Ananda, 59 F.3d 902, 910-12 (9th Cir. 1995) (court found that plaintiff's unregistered mark was descriptive and lacked secondary meaning, and therefore, was invalid). See also Filipino Yellow Pages. v. Asian Journal Publications, 198 F.3d 1143, 1151-52 (9th Cir. 1999).

Failure to list actual confusion as one of the factors the jury should have considered in determining whether the plaintiff had established secondary meaning was not harmless error. See Adray v. Adry-Mart, Inc., 76 F.3d 984, 987 (9th Cir. 1995). See also Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 822-23 (9th Cir. 1996) (using in a trade name dispute four factors cited in this instruction, not including the actual confusion factor).

When a mark is not in the public domain, a showing of secondary meaning requires a mark to be associated in common thought, not merely with the thing produced, but with the source or origin of the production. See Maljack Productions v. Goodtimes Home Video Corp., 81 F.3d 881, 887 (9th Cir. 1996) (where a movie title is not in the public domain, a showing of secondary meaning only requires proof that the public associates the movie title with a single source, even if anonymous); Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1095-96 (9th Cir. 2004) ("Secondary meaning refers to a mark's actual ability to trigger in consumers' minds a link between a product or service and the source of that product or service. That is, a mark has secondary meaning 'when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.' Determining whether a mark hassecondary meaning requires taking into account at least seven considerations...") (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000)). "While evidence of a manufacturer's sales, advertising and promotional activities may be relevant in determining secondary meaning, the true test of secondary meaning is the effectiveness of this effort to create it. " International Jensen v. Metrosound U.S.A., 4 F.3d 819, 824-25 (9th Cir.1993) (citation omitted).

"Secondary meaning" is often referred to as "acquired meaning." See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211, n* (2000). If it is not inherently distinctive, a mark may acquire distinctiveness if it has developed secondary meaning. Id. at 211. This means the mark's primary significance in the public mind is to identify the source of the product rather than the product itself. Id. But the term secondary meaning "is often a misnomer," particularly when applied to non-word marks. Id. "Clarity might well be served by using the term 'acquired meaning' in both the word-mark and the non- word mark contexts" rather than the term "secondary meaning." Id.

The Circuit has said that when a descriptive mark is especially weak, "we require a 'strong showing of strong secondary meaning.'" Japan Telecom, Inc. v. Japan Telecom America Inc., 287 F.3d 866, 873 (9th Cir. 2002) (citations omitted). On the other hand, if the mark is validly registered but has not yet attained incontestable status, the plaintiff's registration carries a presumption of secondary meaning, because registered marks are presumed distinctive. Americana Trading, Inc., v. Russ Berrie & Co., 966 F.2d 1284, 1287 (9th Cir. 1992). The burden is then on the defendant to prove that secondary meaning has not attached if the defendant wishes to argue that the plaintiff's mark was weak (e.g., was descriptive) and not entitled to trademark protection. Id.

Trade Dress Non-Functionality Requirement

A product feature is functional if it is essential to the product's use or purpose, or if it affects the product's cost or quality. It is non-functional if its shape or form makes no contribution to the product's function or operation. If the feature is part of the actual benefit that consumers wish to purchase when they buy the product, the feature is functional. However, if the feature serves no purpose other than as an assurance that a particular entity made, sponsored or endorsed the product, it is non-functional.

To determine whether a product's particular shape or form is functional, courts consider whether the design as a whole is functional—that is whether the whole collection of elements making up the design or form are essential to the product's use or purpose.

Courts assess the following factors in deciding if the product feature is functional or non-functional:

1.                   The Design's Utilitarian Advantage. In considering this factor, you may examine whether the particular design or product feature yield a utilitarian advantage over how the product might be without that particular design or product feature. If there is a utilitarian advantage from having the particular design or feature, this would weigh in favor of finding the design or feature is functional; if it Seems merely ornamental, incidental, or arbitrary it is more likely to be nonfunctional;

2.                   Availability of Alternate Designs. In considering this factor, you may examine whether an alternate design could have been used, so that competition in the market for that type of product would not be hindered by allowing only one person to exclusively use the particular design or configuration. For this to be answered in the affirmative, the alternatives must be more than merely theoretical or speculative. They must be commercially feasible. The unavailability of a sufficient number of alternate designs weighs in favor of finding the design or feature is functional;

3.                   Advertising Utilitarian Advantage in the Design. In considering this factor, you may examine whether the particular design or configuration has been touted in any advertising as a utilitarian advantage, explicitly or implicitly. If a seller advertises the utilitarian advantages of a particular feature or design, this weighs in favor of finding that design or feature is functional; and

4.                   The Design's Method of Manufacture. In considering this factor, you may examine whether the particular design or feature result from a relatively simple or inexpensive method of manufacture. If the design or feature is a result of a particularly economical production method, this weighs in favor of finding the design or feature is functional; if the feature is essential to the use or purpose of the device or affects its cost or quality, it is more likely functional.

"The relationship between trademark protection and functionality is well established: 'The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional....'" Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir. 2002). For a description of the four-factor test of functionality, See Disc Gold Ass'n v. Champion Discs, Inc., 158 F.3d 1002, 1006-09 (9th Cir. 1998). See also International Jensen v. Metrosound U.S.A., 4 F.3d 819, 822-23 (9th Cir. 1993) (setting forth a three-factor test); Talking Rain Beverage Co. Inc. v. South Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (four factor test from Disc Gold). The definition of functionality is reflected in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001) (referring to the "traditional rule" set forth in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10 (1982)).  Functionality is a question of fact. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989).

In the Ninth Circuit, the plaintiff bears the burden of proving nonfunctionality. See Sega Enterprises Ltd., v. Accolade, Inc., 977 F.2d 1510, 1530-31 (9th Cir. 1992) (nonfunctionality is a question of fact, which the plaintiff bears the burden of proving); 15 U.S.C. § 1125(a)(3) ("In a civil action for trade dress infringement.. .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."). However, in some circuits functionality is treated as an affirmative defense. See, e.g., Vaughan Mfg. Co. v. Brikam Int'l, 814 F.2d 346, 349 (7th Cir. 1987); Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987).

"[I]f exclusive use of a feature would put competitors at a significant non- reputation-related disadvantage, the feature in general terms is functional." Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995). See also Inwood Lab. v. Ives Lab., 456 U.S. 844, 850 n.10 (1982) ("In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."); Vuitton et Fils S.A. v. J. Young Enters., 644 F.2d 769, 774 (9th Cir. 1981) ("Functional features of a product are features 'which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product."') (quoting International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981)).


Functionality usually arises in cases of nonword symbols, such as designs or container shapes. In the Ninth Circuit, functionality involves measuring the effect of a design or physical detail in the marketplace. A functional design has aesthetic appeal, or increases the utility or practicality of the product, or saves the consumer or producer time or money. See Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1983); Traffix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23, 29-30 (2001) (noting that it is a "well-established rule that trade dress protection may not be claimed for product features that are functional" and that a prior patent for features claimed as trade dress can be "strong evidence" of functionality which adds "great weight to the statutory presumption" that trade dress features "are deemed functional until proved otherwise by the party Seeking trade dress protection" and who will carry a "heavy burden" of showing that the feature "is merely an ornamental, incidental, or arbitrary aspect" of the trade dress rather than functional to the trade dress).

If features of claimed trade dress are all functional, plaintiff must show that the features are combined together in a nonfunctional way to avoid finding of functionality. HWE, Inc. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir. 1993).  On the trademark registration of trade dress and its implications for infringement litigation, See Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782-83 (9th Cir. 2002).


Ownership Of Trademark

The law entitles the trademark owner to exclude others from using that trademark. A person acquires the right to exclude others from using a trademark by being the first to use it in the marketplace or by using it before the alleged infringer. A person also acquires the right to exclude others from using a trademark if industry or public usage creates, for a majority of relevant consumers, an association between the person and the mark prior to the alleged infringer's use. A trademark is "used" for purposes of this instruction when it is transported or sold in commerce and the trademark is attached to the product, or placed on its label or container or if that is not practical, placed on

Sometimes it is necessary for the court to place before the jury the issue of mark ownership. Where the jury is to determine the ownership of a mark between manufacturer and distributor, See Sengoku Works Ltd. v. RMCInt'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) (reviewing jury instructions and factors for determining such mark ownership.) In such a case, this instruction should be revised accordingly. The determination of priority of ownership is a question for the jury when this is a genuine issue of material fact in a case. See Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1093-94, 1098-99, 1106-07 (9th Cir.2004) (expressing no opinion as to whether evidence presented in case was sufficient as a matter of law to establish that mark was famous for application of trademark priority principles).

In trademark law, the standard test of ownership is priority of use. See Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). "To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Id.

This analysis is for cases involving an inherently distinctive mark. It reflects the traditional concept that trademark rights belong to the party who first makes an actual use of the trademark in business. See Rolley v. Younghusband, 204 F.2d 209 (9th Cir. 1953). However, if the trademark at issue is not inherently distinctive (but its validity was shown by proof of it acquiring secondary meaning), this instruction is not appropriate. In such a case, priority is established by the party who first uses the mark with secondary meaning. Accordingly, the plaintiff must prove the existence of secondary meaning in its trademark at the time and place that the junior user first began use of that mark. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970).


Assignment Of A Trademark (15 U.S.C. § 1060)

The owner of a trademark may transfer, sell, or give to another the owner's interest in the trademark, that is, the right to exclude others from using the mark. This may transfer, sell, or gift is called an assignment, and the person to whom this right is assigned is called an assignee.  An assignee may enforce this right to exclude others in an action for infringement or unfair competition under 15 U.S.C. § 1125(a)].  "The purpose behind requiring that goodwill accompany the assigned mark is to maintain the continuity of the product or service symbolized by the mark and thereby avoid deceiving or confusing customers." E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1289 (9th Cir. 1992). Whether goodwill is transferred is a factual issue. Id.

In a case brought under the Lanham Act, a signed writing is necessary for an assignment to be valid. 15 U.S.C. § 1060. A signed writing is not required to prove an assignment in a common law trademark infringement claim. McCarthy, supra, at § 18:11.


Licensee Of A Trademark

The owner of a trademark may enter into an agreement that permits another person to use the trademark. This type of agreement is called a license, and the person permitted to use the trademark is called a licensee.  Although 15 U.S.C. § 1060 requires that assignments be written, a license can be oral.

In licensing trademark rights, the owner may include the right to sue for trademark infringement. The licensee's right to sue originates from the license and is governed by the terms of the licensing agreement. See DEP Corp. v. Interstate Cigar Co., 622 F.2d 621 (2d Cir. 1980) (Because the plaintiff was not the owner of the trademark, it did not have standing to sue under the Lanham Act. Any interests the plaintiff had in the matter were governed by the terms of the licensing agreement.). See also Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 157 (1st Cir. 1977) (the license granted the licensee "the right to enforce the licensed trademark rights against infringers in the United States").


Merchant Or Distributor As Owner Of A Trademark

A merchant or distributor may own a trademark that identifies products the [merchant] [distributor] sells even though the products are manufactured by someone else.  When a dispute arises between a manufacturer and distributor, the Courts first look to any agreement between the parties regarding trademark rights. Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1220-21 (9th Cir. 1996). In the absence of an agreement, the manufacturer is presumed to own the trademark. Id. See also, Watec Co., Ltd. v. Liu, 403 F.3d 645, 652 (9th Cir. 2005) (in case between foreign manufacturer and former exclusive American distributor who had incontestably registered the mark in the U.S., one issue to consider as to which party owned the contested mark involved whether the parties had entered into contract that disposed of rights in the trademark and that such issue was properly determined by the jury).

The presumption that, in the absence of an agreement the manufacturer is presumed to own the trademark, can be rebutted. The following factors may be considered:

(1)              which party invented and first affixed the mark on to the product;

(2)              which party's name appeared with the trademark;

(3)              which party maintained the quality and uniformity of the product;

(4)              which party does the public identify with the product and make complaints to; and

(5)              which party possesses the good will associated with the product.

See Sengoku Works Ltd, 96 F.3d at 1220-21 and Premier Dental Products v. Darby Dental Supply Co., 794 F.2d 850, 853-54 (3d Cir. 1986).

 


Likelihood Of Confusion—Sleekcraft Test (15 U.S.C. §§ 1114(1) And 1125(A))

The Court must consider whether the defendant's use of the trademark is likely to cause confusion about the source of the plaintiff's or the defendant's goods.  The following factors should be considered. The presence or absence of any particular factor should not necessarily resolve whether there was a likelihood of confusion, as all factors must be considered.  Consider the following:

1.                   Strength or Weakness of the Plaintiff's Mark. The more the consuming public recognizes the plaintiff's trademark as an indication of origin of the plaintiff's goods, the more likely it is that consumers would be confused about the source of the defendant's goods if the defendant uses a similar mark.

2.                   Defendant's Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise.

3.                   Similarity of Plaintiff's and Defendant's Marks. If the overall impression created by the plaintiff's trademark in the marketplace is similar to that created by the defendant's trademark in appearance, sound, or meaning, there is a greater chance that consumers are likely to be confused by defendant's use of a mark of likelihood of confusion. Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.

4.                   Actual Confusion. If use by the defendant of the plaintiff's trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant's use of the trademark may still be likely to cause confusion. The court must weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, the court may find there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion you may find that there has not been substantial actual confusion.

5.                   Defendant's Intent. Knowing use by defendant of the plaintiff's trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff's mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of plaintiff's trademark to identify similar goods may indicate a likelihood of confusion.

6.                   Marketing/Advertising Channels. If the plaintiff's and defendant's goods or services are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion.

7.                   Consumer's Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff's and defendant's trademarks.

8.                   Product Line Expansion. When the parties' products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff's trademark. If there is a strong possibility of expanding into the other party's market, there is a greater likelihood of confusion.

The Ninth Circuit has reaffirmed the validity of the eight-factor test from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), that is covered in this instruction. See Dr. Seuss Enterprises, L.P. v. Penguin Books, 109 F.3d 1394, 1404 n.13 (9th Cir. 1997) (Ninth Circuit uses eight-factor Sleekcraft test covered in paragraphs 1-8 of this instruction "simply to be over-inclusive"); See also Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, 618 F.3d 1025, 1030-31 (9th Cir. 2010) (applying Sleekcraft test).  Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) ("it is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the [Sleekcraft] factors . . . which do] not purport to be exhaustive, and non-listed variations may often be quite important."); Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir. 1993) ("Because each factor [of eight-factor Sleekcraft test] is not necessarily relevant to every case, this list functions as a guide and is 'neither exhaustive nor exclusive.'" (citations omitted)). Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002) ("Unless properly used, this long list of [likelihood of confusion] factors has the potential to befuddle the inquiry. The list of factors is not a score-card-whether a party 'wins' a majority of the factors is not the point.  Nor should '[t]he factors ... be rigidly weighed; we do not count beans.' Dreamwerks Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). 'Some factors are much more helpful than others, and the relative importance of each individual factor will be case specific.... [I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.' Brookfield Communications [v. West Coast Entertainment], 174 F.3d [1036] at 1054 [(9th Cir. 1999)].").

The court, therefore, should not focus on any one factor and to consider all relevant evidence in assessing likelihood of confusion, by use of the second paragraph in this instruction. See Kendall-Jackson Winery v. E.& J. Gallo Winery, 150 F.3d 1042, 1052, n.13 (9th Cir. 1998) (elaborating further on instructions on Sleekcraft factors dealing with defendant's intent to cause confusion and causing actual confusion.).

In cases involving claims of trademark infringement on the Internet, the Ninth Circuit has affirmed the use of an additional instruction indicating that three of the Sleekcraft factors: (i) similarity of plaintiff's and defendant's mark; (ii) relatedness of services; and (iii) simultaneous use of the internet as a marketing channel, otherwise known as the "Internet Troika," are of the "greatest importance." Internet Specialties West, Inc. v. Milon-Digiorgio Enters., 559 F.3d 985, 989 (9th Cir. 2009).

Although the Ninth Circuit has also applied other than an eight-factor test, such tests were not intended to negate any of the Sleekcraft factors. See E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290-91 (9th Cir. 1992) (Sleekcraft's "list of factors, while perhaps exhausting, is neither exhaustive nor exclusive. Rather, the factors are intended to guide the court in assessing the basic question of likelihood of confusion. The presence or absence of a particular factor does not necessarily drive the determination of a likelihood of confusion." (footnote and citation omitted)); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1073 (9th Cir. 2003) (enumerating the eight factors covered by this instruction), judgment vacated on other grounds, 543 U.S. 111 (2004). The Ninth Circuit has observed that "the contents of these tests are interchangeable." Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500, 506 n.2 (9th Cir. 1991).

"The Ninth Circuit enumerated likelihood of confusion tests as helpful guidelines to the district courts. These tests were not meant to be requirements or hoops that a district court need jump through to make the determination . . . . [W]e have identified a non-exclusive series of factors that are helpful in making the ultimate factual determination of likelihood of confusion." Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114, 1117-18 (9th Cir. 1990). See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) ("A word of caution: This eight-factor [Sleekcraft] test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case-specific."). Because these lists are "neither exhaustive nor exclusive," Gallo, 967 F.2d at 1290, a ninth factor has been included.

Strength And Distinctiveness Of Trademark

Strength as a Likelihood of Confusion Factor

Trademark law provides great protection to distinctive or strong trademarks. Conversely, trademarks not as distinctive or strong are called "weak" trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. For deciding trademark protectability, trademarks are grouped into four categories according to their relative strength/distinctiveness. These four categories are, in order of strength or distinctiveness: arbitrary, suggestive, descriptive and generic names.

Arbitrary Marks. The first category is "inherently distinctive" trademarks. They are considered strong trademarks and are clearly protectable. They involve the arbitrary, fanciful or fictitious use of a word or phrase to designate the source of a product or service. Such a trademark is a word that in no way describes or has any relevance to the particular product/service it is meant to identify. It may be a common word used in an unfamiliar way. It may be a newly created (coined) word or parts of common words that are applied in a fanciful, fictitious or unfamiliar way, solely to function as a trademark.

For instance, the common word "apple" became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold. The company's use of the word "apple" was arbitrary or fanciful because "apple" did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics. "Apple" was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source.

Suggestive Marks. The next category is suggestive marks. These trademarks are also inherently distinctive but are considered weaker than arbitrary trademarks. Unlike arbitrary trademarks, [which are in no way related to what the product/service is or its components, quality, or characteristics,] suggestive trademarks suggest some characteristic or quality of the product/service to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark's significance, then the trademark does not describe the product's features, but suggests them.

A suggestive use of a word involves consumers associating the qualities the word suggests to the product/service to which the word is attached. For example, when "apple" is used not to indicate a certain company's computers, but rather "Apple-A-Day" Vitamins, it is being used as a suggestive trademark. "Apple" does not describe what the vitamins are. However, consumers may come to associate the healthfulness of "an apple a day keeping the doctor away" with the supposed benefits of taking "Apple-A-Day" Vitamins.

Descriptive Marks. The third category is descriptive trademarks. These marks directly identify or describe some aspect, characteristic, or quality of the product/service to which they are affixed in a straightforward way that requires no exercise of imagination to be understood.

For instance, the word "apple" is descriptive when used in the trademark "CranApple" to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a product/service comes from, or the name of the person who makes or sells the product/service. Thus, the words "Apple Valley Juice" affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from.

Generic Names. The fourth category is entitled to no protection at all. They are called generic names and they refer to a general name of the product/service, as opposed to the plaintiff's brand for that product/service. Generic names are part of our common language that we need to identify all such similar product/service. A generic name is a name for the product/service on which it appears.

If the primary significance of the alleged mark is to name the type of product/service rather than the manufacturer/provider, the term is a generic name and cannot be a valid trademark. If the majority of [relevant] consumers would understand the term to name the type of product/service rather than the manufacturer/provider, the primary significance of the term is generic and not entitled to protection as a trademark.

Clearly, the word apple can be used as a generic name and not be entitled to any trademark protection. This occurs when the word is used to identify the fruit from any apple tree.

The computer maker who uses the word "apple" as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against the grocer who used that same word to indicate the fruit sold in a store. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, "apple" is simply a commonly used name for what is being sold.

Secondary Meaning and Mark Strength

A weak trademark that is, suggestive or descriptive, courts  must consider the recognition that the mark has among prospective consumers. This market recognition is called the trademark's "secondary meaning.  Traditionally, the question of mark strength arises in determining either (a) likelihood of confusion in a trademark infringement action or (b) issues of trademark validity issues. See, e.g., J.B. Williams Co. v. Le Conte Cosmetics, Inc., 523 F.2d 187, 192 (9th Cir. 1975), cert. denied, 424 U.S. 913 (1976).  For strength of trade dress this instruction may not be helpful. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987). This section sets out the traditional spectrum of marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. at 768 ("Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation . . . . [T]hey may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful."); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) (holding that strength of a mark is determined by its placement on a continuum of marks from "generic," afforded no protection; through "descriptive" or "suggestive," given moderate protection; to "arbitrary" or "fanciful" awarded maximum protection). See also Kendall- Jackson Winery v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998) (setting forth the categories of distinctiveness and describing criteria for each category) and Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1014 (9th Cir. 1979).

The examples of the multiple strengths of the word "apple" above when used on a variety of different products are based on an example in 1 J. Thomas McCarthy, Trademarks And Unfair Competition § 7:36 (4th ed. 2001). See also Bristol-Myers Squibb Co. v. McNeil—P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir. 1992).

The weight of authority in the Ninth Circuit had been that even though a mark has become incontestable, this status does not necessarily mean that it is a strong mark. See Miss World (UK) Ltd. v. Mrs. America Pageants, 856 F.2d 1445, 1449 (9th Cir. 1988). But See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1047 n.10 (9th Cir. 1999) (That a federally registered trademark is incontestable means "that its validity and legal protectability" and the registrant's ownership in the mark "are all conclusively presumed," subject to certain defenses) (citation omitted). However, if an incontestable mark is involved, it may be improper to include paragraphs concerning the descriptive range of the spectrum. Incontestability precludes a challenge to the mark based on an assertion that the mark is not inherently distinctive (e.g., is merely descriptive or misdescriptive, primarily geographically descriptive or misdescriptive, or primarily merely a surname) and lacks secondary meaning. See 15 U.S.C. § 1115(b)(4) (although incontestably registered, a trademark is vulnerable to a defense that the trademark "is descriptive of . . . the goods. . ." of the defendant.).

In 2003, the Ninth Circuit indicated that when a mark has become incontestable, it is presumed to be a strong mark as well. The Circuit noted that "[a] descriptive mark that has become incontestable is conclusively presumed to have acquired secondary meaning. Entrepreneur Media, Inc. v. Smith,] 279 F.3d [1135 (9th Cir. 2002)] at 1142 n. 3. This means that a defendant in a trademark infringement action cannot assert that an incontestable mark is invalid because it is descriptive and lacks secondary meaning. Park 'NFly, 469 U.S. at 205), KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1071 (9th Cir. 2003) (trademark's "incontestable registration is conclusive evidence that the mark is non-descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning" of the mark), judgment vacated on other grounds, 543 U.S. 111 (2004). However, while incontestability of a mark is "conclusive proof that the mark has secondary meaning," the strength or weakness of a suggestive or descriptive mark that is incontestable will affect the Sleekcraft determination of whether a consumer would likely be confused by the allegedly infringing mark. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir. 2002).

 

Derivative Liability: Inducing Trademark Infringement

A person is liable for trademark infringement by another if the person intentionally induced another to infringe the trademark.

The plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1.                   A Third Party infringed the plaintiff’s trademark;

2.                   the defendant intentionally induced Third Party  to infringe plaintiff's trademark; and

3.                   the plaintiff was damaged by the infringement.

Regarding liability for inducing another to infringe a trademark, See Inwood Lab. v. Ives Lab., 456 U.S. 844, 853-54 (1982) ("[I]f a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer is contributorily responsible for any harm done as a result of the deceit [by the direct infringer]."); See also Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 983-84 (9th Cir. 1999) (one branch of contributory infringement occurs when defendant "intentionally induces a third party to infringe the plaintiff's mark"); Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1382 (9th Cir. 1984) (One who intentionally induces another to infringe a trademark or supplies, knowing or having reason to know the materials supplied will be used to infringe a trademark, is contributorily liable for trademark infringement.).

 


Contributory Trademark Infringement

A person is liable for trademark infringement by another if the person sells/supplies goods to another knowing or having reason to know that the other person will use the goods to infringe the plaintiff's trademark.

The plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1.                   the defendant sold or supplied goods to a direct infringer;

2.                   direct infringer used the goods the defendant sold/supplied to infringe the plaintiff's trademark;

3.                   the defendant knew or should have known direct infringer would use the goods to infringe the plaintiff's trademark; and

4.                   the plaintiff was damaged by the infringement.

Regarding the elements of contributory infringement, See Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984-85 (9th Cir. 1999) (elements of contributory infringement); Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 712-13 (9th Cir. 1999) (intent element of contributory infringement). See also Mini Maid Servs. Co. v. Maid Brigade Sys., 967 F.2d 1516, 1521 (11th Cir. 1992) (although Inwood Laboratories v. Ives Laboratories, Inc., 456 U.S. 844 (1982), involved relationship between manufacturers and retailers, its analysis is equally applicable to relationship between franchisor and franchisees).


This caselaw does not apply where there is no provision of a product. See Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 984-85 (9th Cir. 1999) (Internet address registrar's publication of a web domain name was not contributing to infringement of plaintiff's mark where defendant does not supply or sell the infringer goods or products, "we consider the extent of control exercised by the defendant over the third party's means of infringement. . . Direct control and monitoring of the instrumentality used by a third party to infringe" permits treatment of a defendant who provides a service, for instance, liable for contributory infringement); Hard Rock Cafe Licensing Corp. v. Concession Servs., 955 F.2d 1143, 1148 (7th Cir. 1992) ("[I]t is not clear how the doctrine applies to people who do not actually manufacture or distribute the good that is ultimately palmed off as made by someone else. A temporary help service, for example, might not be liable if it furnished ... the workers (the direct infringer) employed to erect his stand, even if the help service knew that (the direct infringer) would sell counterfeit goods.").

 

Source:  Ninth Circuit Manual of Model Jury Instructions (Civil)