Lanham Act Trademark Infringement Elements, Defenses & Dispute Litigation

A successful trademark establishes brand identity and conveys your company or product’s values to the public. But what is trademark infringement?

Under the Lanham Act, trademark infringement elements include (1) use (2) in commerce (3) of a registered mark that causes confusion. Common defenses include fair use, parody, and unclean hands.

What Is Trademark Infringement?

In general, a trademark is a type of intellectual property that enables consumers to identify a particular product or service with a particular manufacturer or service provider. A trademark can be a word or phrase, recognizable design, or combination that signals a unique product, brand, or service. The point is to distinguish one brand or product from another.

To protect oneself, the trademark owner should register the mark with the federal government under the Lanham Act. This protects against trademark infringement, meaning that the use of the same or a similar mark by someone else poses a likelihood of confusion regarding the source of the product. Trademark misuse is a federal issue allowing trademark owners to recover damages for unauthorized use of the mark.

What Is the Lanham Act?

Federal law prohibits the unauthorized commercial use of a trademark through the Lanham Act of 1946. The Act created a uniform national system for trademark registration housed in the federal U.S. Patent and Trademark Office (USPTO). Congress intended the trademark law to protect the trademark owner against trademark name infringement. Because the Lanham Act is a federal law, registering a trademark in Florida is not necessary, but you may still do so. If you want to know how, see our article on how to register a trademark in Florida.

To gain trademark rights under the Lanham Act (15 U.S.C. s. 1114), you must satisfy two conditions. First, you must use the mark in commerce. While you can register a mark that is not yet used in commerce by showing a good faith intent to do so in the future, only the first person to actually use the mark in commerce gains the exclusive right to a given mark.

Second, the trademark must be distinctive. This means that the use of a trademark identifies the source of the goods or services. Trademarks come in one of four categories, ranging from most to least distinctiveness. When a mark is arbitrary/fanciful or suggestive, it is inherently distinctive and gains trademark protection. The Lanham Act only protects a descriptive mark when the public attributes to the mark a secondary meaning. Finally, a generic mark is never protected because it identifies a general class of products.

How to Prove Trademark Infringement

To bring a trademark infringement claim, you must first have a valid and legally protectable mark that satisfies the requirements above.

The Lanham Act poses three requirements for trademark infringement cases. Infringement of a trademark occurs when (1) a defendant’s use (2) of a registered mark (3) is likely to cause consumer confusion.

Lanham Act Trademark Infringement Elements

To meet the elements of trademark infringement claim, the plaintiff must prove the following three actions by the alleged infringer.

1. Use of the plaintiff’s mark

Trademark protection is predicated on Congress’s power to regulate interstate commerce. First, a successful plaintiff must show that the alleged infringer used the registered trademark.

Such use includes the use of a mark on a product’s label, using the design on a website, or using a similar mark or infringing mark on a product.

If the defendant hasn’t actually used the mark, you can’t bring a claim.

2. In commerce

Second, the plaintiff must show that the defendant’s use occurred in commerce. Such use occurs in commerce when:

• The defendant advertises in multiple states or across marketing channels
• The goods move interstate from one part of the supply chain to another, such as from manufacturer to seller
• A product is sent from one state to another to register a trademark
• The defendant advertises in print or online media with an interstate distribution.

3. Causing a likelihood of confusion

Finally, the defendant’s use must cause a likelihood of confusion. This is usually the primary focus of a trademark infringement claim.

A successful plaintiff can show evidence of actual confusion in one of two ways. The first instance occurs when two goods or services directly compete with each other. In this case, a state or federal court presumes trademark infringement if the two marks are so similar that confusion is expected.

For example, take a can of Coca-Cola soda. As soon as you read that brand, you immediately envisioned a red can with that specific font with the “Coca-Cola” letters in white. Now imagine another soda with the same exact font, coloring, and taste. But instead of the regular spelling, the C’s are replaced with K’s to read “Koka-Kola.” That would surely confuse even the most ardent fan of the soda.

The other scenario is a bit more difficult for the plaintiff to prove. In a situation where the two goods do not directly compete for sales, the reviewing court will apply what’s known as the Lapp test. The Lapp test is a non-exhaustive list of factors including:

• The defendant’s intent in selecting the given mark
• The degree of similarity of the marks
• Evidence of actual consumer confusion
• The marketing channels used
• The strength of the trademark owner’s mark
• The degree of care exercised by the consumer in selecting the good or service
• Any other facts tending to show that the public expects the trademark owner to manufacture or sell the product in the alleged infringer’s market.

Types of Trademark Infringement Defenses

A registered trademark protects the user from infringement by others. However, the Lanham Act only protects the creator of a registered trademark to the extent that this doesn’t interfere with another’s first amendment right to free speech.

The alleged infringer may assert a number of defenses to trademark infringement, some relating to the First Amendment. Trademark defense options include fair use, parody, and others such as laches, estoppel, and unclean hands.

1. Fair Use

Courts recognize two types of fair use. First, some trademarks consist of a word or phrase. That word or phrase sometimes merely describes an object or process, instead of the word or phrase’s secondary meaning.

For example, in Sunmark, Inc. v. Ocean Spray Cranberries, Inc., the 7th Circuit Court of Appeals determined whether Ocean Spray could use the phrase “sweet-tart” to describe the flavor of one of its juice drinks. Sunmark, the owner of the Swee Tarts trademark for the candy, alleged infringement. The court found that Ocean Spray’s use of “sweet-tart” in this way was descriptive fair use because it simply described the flavor of its juice.

Second, nominative fair use occurs when one party uses the trademark of another to identify the other party’s product. This occurs most often in advertising. For example, Snickers can compare itself to Butterfinger to demonstrate the differences between the two products.

2. Parody

Like fair use, the parody defense also results from the First Amendment’s free speech protection. The parody must not overtly tie into commercial use.

For example, the U.S. Supreme Court decided in Campbell v. Acuff-Rose Music whether a parody of the 1980s song “Oh, Pretty Woman” performed by 2 Live Crew was a parody. The court found for 2 Live Crew.

But beware—the First Amendment still does not offer blanket protection against disparagement or slander.

3. Other Defenses

Other trademark defenses not related to the First Amendment include:

• Laches: The plaintiff must assert the infringement claim as soon as they know or should have known of the infringement.
• Estoppel: A plaintiff who implicitly or explicitly allows the defendant to use the mark may not claim infringement.
• Unclean Hands: A plaintiff who commits illegal acts or egregious conduct may not assert infringement.
• Contesting Registration: When a mark has been registered for 5 years or fewer, a defendant may claim that the owner’s right to exclusive use has not yet developed.

How to File a Trademark Infringement Lawsuit

A plaintiff may assert a trademark infringement action in state or federal court. It’s up to you to decide the best forum. Next, file the complaint:

• Assert an ownership right to the mark in question
• Identify the alleged infringer
• Explain the facts
• Identify the grounds for the claim (e.g., infringement, trademark dilution, unfair competition)
• Describe how the defendant’s use damaged you
• Identify the specific relief requested (e.g., injunctive relief, attorneys’ fees, etc.)

Before bringing a lawsuit, you may also consider learning how to serve a cease-and-desist letter.

Need Help with Trademark Litigation or a Trademark Lawsuit?

Trademarking seems complicated, and creating and registering a trademark is a time-intensive and expensive process. A successful trademark conveys your business's values and connects your business with its products in the minds of consumers. When someone infringes on your mark, they disrupt your business and take your goodwill.

Trademark infringement law doesn’t have to be complicated. At Cueto Law Group, our team of lawyers have the experience to walk you through your claim. Contact an expert Miami trademark lawyer today for a free consultation.

Key Takeaways on Trademark Disputes

When you have a trademark dispute, it’s important to file your claim before the trademark infringement statute of limitations runs. Before asserting your infringement claim, ensure that you have registered a legally protectable mark that you use in commerce. Then, show that the defendant has used an infringing mark in commerce that causes a substantial likelihood of confusion.

FAQs on Trademark Infringement Law