Get started
Work

Trademarks and Transducers: The First Circuit Court of Appeals Decides on the Standard of Proof Required to Show Willful Infringement in Lanham Act Cases

Year: 2014
Type: article
Abstract: distinctive words, names, symbols, and devices to make informed purchases.5 Infringement occurs when one party benefits from another's reputation by confusing purchasers with identical or similar marks.6 The intent to confuse consumers may be a factor in deciding not only whether a defendant has likely caused confusion, 7 but also the type and extent of remedies available to a victorious plaintiff.8 Willfulness, bad faith, and fraud are all terms used to basis for distinction between a conventional trademark and a trade dress product configuration . . .when considering the rights of the owner of the mark.").This includes its packaging and design.Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000).5. 15 U.S.C. § 1127 (2006) (defining "trademark" as "any word, name, symbol, or device, or any combination thereof"); see also discussion infra Part I; infra notes 24-26 and accompanying text.6. 15 U.S.C. § 1125(a)(1)(A) (2006) (permitting a cause of action against a party whose actions are "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"); see also 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:116 (4th ed.2013) (explaining that using an exact copy of another's mark is not necessary to establish infringement, as long as consumers were likely deceived into perceiving an association between products).7. See, e.g., Versa Prods.Co., Inc. v. Bifold Co. (Mfg.),50 F.3d 189, 205 (3d Cir.1995) (discussing how the intent of an alleged infringer "may be highly probative of likelihood of confusion" among consumers, which must be shown in order for a plaintiff to succeed in an infringement suit).A finding of intent to confuse is not necessary in order to hold a defendant accountable for infringement, but it can be "evidence relevant to whether confusion is likely."See MCCARTHY, supra note 6, § 23:106.8. See, e.g., Fishman Transducers, Inc. v. Paul, 684 F.3d 187, 191 (1st Cir.2012) (explaining that once infringement has been proven, willfulness may be used "as a gloss or screen in deciding what remedies to provide"); Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1390 (5th Cir.1996) (quoting Moore Bus.Forms, Inc. v. Ryu, 960 F.2d 486, 491 (5th Cir.1992)) (illustrating how attorney's fees may be awarded in "exceptional" cases, in which "the violative acts can be characterized as 'malicious,' 'fraudulent,' 'deliberate,' or 'willful'"); see also 4 RUDOLF CALLMANN, CALLMANN ON UNFAIR COMPETITION, TRADEMARKS AND MONOPOLIES § 23:69 (4th ed.2013) (explaining that a defendant may avoid compensating the plaintiff with an accounting of profits made from infringement "if he honestly believed there would be no likelihood of confusion"); 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARK AND UNFAIR COMPETITION § 30:62 (4th ed.2013) (describing how courts may deny an accounting of profits if "there is no deliberate intent to cause confusion"); Danielle Conway-Jones, Remedying Trademark Infringement: The Role of Bad Faith in Awarding an Accounting of Defendant's Profits, 42 SANTA CLARA L. REV.863, 927 (2002) (highlighting circuits that either demand a showing of intentional infringement, or recognize intent to confuse, as a factor in granting a plaintiff an accounting of the defendant's profits); Eugene W. Luciani, Note, Does the Bad Faith Requirement in Accounting of Profits Damages Make Economic Sense?, 6 J. INTELL.PROP.L. 69, 69 (1998) (stating that most circuits award accountings of profits only after a finding that the defendant acted in bad faith).
Language: English
Subfield: Law
Open Access status: green
OpenAlex ID: W836729035
FWCI:
Cites:
Cited by:
Related to: 10