|FROM:||The Legal Taxi|
|RE:||Legal Actions available for infringement of trademark and trade dress.|
Infringement of “Munch-In”.
What Legal Actions available for infringement of trademark and trade dress?
Acme is a biscuit manufacturing company selling biscuits for the past 10 years. Acme launched a new chocolate biscuit with the name “Munch”. The description on the packaging displays “Munch” written in yellow bold letters with blue background on the packet, two biscuits dipped in chocolate are pictured near the word Munch. Three months after of the launch, client saw that a same chocolate biscuit with same trade dress and deceptive trademark is available in market. The only difference between the product of plaintiff and defendant is that plaintiff is selling the biscuits under name MUNCH and Defendant is selling the biscuits under name Munch-IN with same font and color. So the client wants to file a case for infringement of trademark and trade dress. What all grounds are available for this? What can he recover?
Advise about actions for infringement & injunction relief.
Standard Research Memo
- Highlighted Copies of Key Cases.
- Summaries of Key Cases.
Advise about actions for infringement & injunction relief.
Lanham Act, California statutes and case law.
Based on the facts provided in this query it is pertinent to note that the Acme biscuit claims that its mark “Munch “has been infringed by defendant’s mark “Munch-In” with same trade dress. Under the Lanham Act, if any person infringes a registered trademark and trade dress he can be held liable in a civil action by the registrant. This provision gives the registrant a cause of action against the use by any person of “any word, term, name, symbol, or device, or any combination which is likely to cause confusion as to the origin, sponsorship, or approval of his or her goods”. Our research therefore addresses the following topics:
- what are the tests for infringement of trademark & trade-dress,
- whether any liability exists under trademark law with unfair competition act, and
- what can Acme recover?
Infringement of Trademark
The query states that Acme was selling a biscuit under trademark “Munch”, and that after launching this product it observed a product with the similar name “MUNCH-IN” in the market. Based on this fact we can posit that Acme’s trademark was infringed. Under the Lanham Act, if any person infringes a registered trademark he can be held liable in a civil action by the registrant. Remedies for an infringement of a trademark are defined under 15 USCS § 1114:
Any person who shall, without the consent of the registrant:
- 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, shall be liable in a civil action
by the registrant for the remedies hereinafter provided.
Under subsection (b) hereof, 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.
The Lanham Act provides for the protection for registered trademarks, 15 U. S. C. § 1052, and it enables the owner to sue an infringer under 15 USCS § 1114. In addition, the Lanham act gives a producer a cause of action for the use by any person of ‘any word, term, name, symbol, or device, or any combination thereof which is likely to cause confusion as to the origin, sponsorship, or approval of his or her goods.’
In Franklin Mint Co. v. Manatt, Phelps & Phillips, LLP, 184 Cal. App. 4th 313, 342 (Cal. App. 2d Dist. 2010) the court interpreted the Lanham Act§ 43(a). The court stated:
A plaintiff bringing a claim under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) is not required to prove that he or she has a valid trademark. Rather, the plaintiff must show that the defendant's use in commerce of “any word,term....Combination thereof, or any false designation of origin…..misleading representation of fact” in connection with the defendant's goods or services “is likely to cause confusion, or as to the origin, sponsorship, or approval” of defendant's goods or services by the plaintiff. (15 U.S.C. § 1125(a)(1).A plaintiff is entitled to relief under an endorsement claim regardless of whether the plaintiff owns a trademark.
Test for Infringement
The test of infringement of a trademark was discussed as long back as1951 in American Distilling Co. v. Bellows & Co., 102 Cal. App. 2d 8, 22 (Cal. App. 1951) , which has been affirmed in a number of cases since then. The court stated:
The test as to infringement against a trademark does not depend upon an exact similarity in every detail,but if the general appearance is such as to deceive a casual purchaser who exercises ordinary care in the selection of the article which he wishes to buy, its use may be enjoined [citation omitted] It is said: What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do, in that regard, is to say thatno trader can adopt a trade-mark, so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution are likely to be misled.
The “likelihood of confusion” test is set forth AMF Inc. v. Sleekcraft Boats, 599 F.2d 3411979 U.S. App)and in Winchester Mystery House, LLC v. Global Asylum, Inc., 210 Cal. App. 4th 579, 594 (Cal. App. 6th Dist. 2012).The court in Sleekcraftstated:
When the goods produced by the alleged infringer compete for sales with those of the trademark owner, infringement usually will be found if the marks are sufficiently similar that confusion can be expected. When the goods are related, but not competitive, several other factors are added to the calculus.
The court in AMF Inc. v. Sleekcraft Boats, considered eight factors for likelihood of confusion:
- the strength of the mark;
- the relatedness of the goods;
- the similarity of the mark;
- the evidence of actual confusion;
- the marketing channels used;
6. the type of goods and the likely degree of care by the purchaser;
7. the defendant's intent in selecting the mark; and
8. The likelihood of expansion of the product lines.
AMF Inc. v. Sleekcraft Boats, 599 F.2d at 348-349.
Considering the factors of likelihood of confusion, Acme can argue that defendant’s mark fringes on its mark because of the similarity in the name of the mark and the product marketed by the competitor (Gamma)is the same: biscuits.
Infringement of trade dress
15 U.S.C. § 1125(a) provides for a cause of action for infringement of trade dress:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or . . . .
Interpreting the definition of trade dress, the court in International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993) stated
The term trade dress can be referred as to the 'total image of a product' and may include features such as size, shape, color, color combinations, texture or graphics.
Acme’s trade dress infringement claims arise under 15 U.S.C. § 1125(a). Wal-Mart Stores, Inc. v. Samara Bros, Inc., 529 U.S. 205, 209, 120 S. Ct.1339, 1342, 146 L. Ed. 2d 182 (2000) interprets this provision and concludes:
The Lanham Act, in § 43(a), gives a producer a cause of action against any person who uses "any symbol or device … likely to cause confusion as to the origin of his or her goods." 15 U.S.C. § 1125(a). This provision protects not only words and symbols, but also "trade dress”, a category that includes the packaging and design of a product.
Magic Kitchen LLC v. Good Things Internet Ltd., 153 Cal.App. 4th 1144, 1155 (Cal. App. 2d Dist. 2007) further defines the meaning and significance of trade dress:
Trade dress refers to the total image of a product and may include features such as size, shape, color, color combinations, texture or graphics[citation omitted]the design of a product, as well as its packaging, both is part of its trade dress. Fuji. A seller's adoption of a trade dress confusingly similar to a competitor's constitutes unfair competition that is actionable under section 43(a) of the Lanham Act. [Citation omitted]
In your query, the competitor Gamma is using the same trade dress with same color and font. To recover for the infringement of a trademark or trade dress under 15 U.S.C. § 1125(a), Acme has to prove that:
- The mark “MUNCH” with described color and font is nonfunctional1,
- The design is inherently distinctive or acquired distinctiveness through a secondary meaning2, and
- There is likelihood that the consuming public will confuse MUNCH-IN with client’s product.
Cal Bus & Prof Code § 17200 (2012), defines “unfair competition “it include any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising and any act prohibited. Its coverage is sweeping, embracing anything that can properly be called a business practice and that at the same time is forbidden by law.
Acme may ask for injunctive relief under the unfair competition provision because unfair competition includes an unfair or fraudulent business practice, and either ground is sufficient to permit injunctive relief.
Liability for trademark infringement and unfair competition exists under California law when an appreciable number of reasonable buyers are likely to be confused by the similarity of the plaintiff's and defendant's marks. [Citation omitted] As explained by the court in Academy of Motion Picture Arts v. Creative House (9th Cir. 1991) 944 F.2d 1446, 1457,the ultimate test under both federal and California law is whether the similarity between the two marks is likely to deceive or confuse the public.
15 USCS § 1117 explains the rights available to Acme on infringement its right, Recovery for violation of rights:
- Profits; damages and costs; attorney fees. When a violation of any right of the
registrant of a mark registered in the Patent and Trademark Office, a violation
under section 43(a) or (d) [15 USCS § 1125(a) or (d)], or
a willful violation under section 43(c) [15 USCS § 1125(c)], shall have
been established in any civil action arising under this Act, the plaintiff shall
be entitled, subject to the provisions of sections 29 and 32 [15 USCS §§ 1111, 1114], and subject
to the principles of equity, to recover (1) defendant's profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action. The court shall assess
such profits and damages or cause the same to be assessed under its direction.
15 USCS § 1117
Acme may also ask for the destruction of infringing articles:
In any action arising under this Act, in which a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) [ 15 USC 1125(a)], or a willful violation under section 43(c) [ 15 USC 1125(c)], shall have been established, the court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or, in the case of a violation of section 43(a) [ 15 USC 1125(a)] or a willful violation under section 43(c) [ 15 USC 1125(c)], the word, term, name, symbol, device, combination thereof, designation, description, or representation that is the subject of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same, shall be delivered up and destroyed.
The use of a trademark is the owner's way of preventing others from duping consumers into buying a product that they mistakenly believe is produced by the trademark owner. A trademark informs people that trademarked products come from the same source. The ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks. Based on the statutes and case law, we believe that Acme has sufficient grounds to bring suit against the competitor Gamma for infringement of trademark and trade dress. Acme can ask for injunctive relief and the destruction of the infringing goods. If successful, it can also recover reasonable attorney fees.
1. Highlighted copies of Key Cases.
2. Summaries of Key case.
3. Referred Statutes.
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