section15

Model Jury - Section 15

CIVIL INSTRUCTIONS

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15. TRADEMARK

15.00 PRELIMINARY INSTRUCTION--TRADEMARK

The plaintiff, ______________, seeks damages against the defendant, _______________, for [trademark] [mark] infringement. The defendant [denies infringing the [trademark] [mark]] [and] [contends the [trademark] [mark] is invalid]. To help you understand the evidence that will be presented in this case, I will explain some of the legal terms you will hear during this trial.

DEFINITION OF A [TRADEMARK] [MARK]

A [trademark] [mark] is a word, a name, a symbol, a device, or a combination of them that indicates the source of goods or services. The [owner] [assignee] [licensee] of a [trademark] [mark] has the right to exclude others from using that [trademark] [mark].

[HOW A [TRADEMARK] [MARK] IS OBTAINED]

A person acquires the right to exclude others from using a [trademark] [mark] by being the first to use it in the marketplace. Rights in a [trademark] [mark] are obtained only through commercial use of the mark. The owner of a [trademark] [mark] has the right to exclude others unless the [trademark] [mark] has been abandoned.

[TRADEMARK INTERESTS]

[The owner of a [trademark] [mark] may transfer, give or sell to another person the owner's interest in the [trademark] [mark]. This type of [agreement] [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] [mark]. To be enforceable, the assignment must be in writing and signed. It must also include the goodwill of the business connected with the mark.]

[The owner of a [trademark] [mark] may also enter into an agreement that permits another person to use the [trademark] [mark]. This type of agreement is called a license, and the person permitted to use the [trademark] [mark] is called a licensee.]

A trademark [owner] [assignee] [licensee] may enforce the right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)].

[[TRADEMARK] [MARK] REGISTRATION]

[Once the owner of a mark has obtained the right to exclude others from using the [trademark] [mark], 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] [mark] in connection with the type of goods or services specified in the certificate.]

THE PLAINTIFF'S BURDEN OF PROOF

In this case, the plaintiff, ______________, contends that the defendant, ____________, has infringed plaintiff's [trademark] [mark]. The plaintiff has the burden of proving by a preponderance of the evidence that plaintiff is the owner of a valid [trademark] [mark] and that the defendant infringed that [trademark] [mark]. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the defendant infringed the plaintiff's [trademark] [mark].

[DEFENDANT'S BURDEN OF PROOF]

[The defendant contends that [the registered [trademark] [mark] is [invalid] [,] [the [trademark] [mark] has been abandoned] [or] [insert other affirmative defense]. The defendant has the burden of proving by a preponderance of the evidence that [the registered [trademark] [mark] is [invalid] [,] [the [trademark] [mark] has been abandoned] [or] [insert other affirmative defense].]

[Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the [registered [trademark] [mark] is invalid] [or] [insert other affirmative defense].]

Comment

See generally 15 U.S.C. § 1051, et seq.

This instruction is tailored to fit a classic trademark infringement case. If the case involves trade dress, trade name, or other unfair competition claims, this instruction will require modification.

The statute now protects both actual and intended use of a trademark. 15 U.S.C. § 1051(b). In a case involving merely intended use of a trademark, these instructions must be tailored to fit the case.

Throughout these instructions, wherever the term "mark" is used, the more specific terms "trademark," "service mark," or "collective mark" may be substituted as appropriate.

A trademark infringement case can be brought under three different causes of action:

(1) statutory trademark infringement, (2) common law trademark infringement, and (3) unfair competition.

15.01.01 DEFINITION OF MARKS--GENERALLY (15 U.S.C. § 1127)

A mark is a word, name, symbol, or device or any combination thereof used to identify and distinguish goods or services and to indicate their source. [A mark used on or in the sale of goods is known as a trademark.] [A mark used in the sale of services is known as a service mark.] [A mark used by a collective group is known as a collective mark.]

Comment

Under the statute, mark is defined to include a certification mark as well. See Instructions 15.03.06-.07.

15.01.02 TRADEMARK INTERESTS--OWNER

The law entitles the owner to exclude others from using a [trademark] [mark].

A person acquires the right to exclude others from using the [trademark] [mark] by being the first to use it in the marketplace.

The owner of a [trademark] [mark] may enforce the right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)].

Comment

See La Societe Anonyme des Parfums LeGalion v. Jean Patou, Inc., 495 F.2d 1265, 1271-72 (2d Cir. 1974) (first user has enforceable right as long as he intends to continue exploiting the mark commercially); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918) ("the right to a particular mark grows out of its use, not its mere adoption"); Pan Am. World Airways v. Panamerican Sch. of Travel, 648 F. Supp. 1026, 1030 (S.D.N.Y.), aff'd, 810 F.2d 1160 (2d Cir. 1986) (rights not dependent on registration, but on use, which must be continuous and deliberate).

A licensor may also acquire ownership rights to a mark through a licensee's first use of the mark, even if the owner has never personally used the mark, as long as the licensor retains control over the nature and quality of the goods or services sold by the licensee. Turner v. HMH Publishing Co., 380 F.2d 224, 228 (5th Cir. 1967), cert. denied, 389 U.S. 1006 (1967). See 15 U.S.C. § 1055; see also Instruction 15.01.04. In such a case, this instruction should be revised accordingly.

15.01.03 TRADEMARK INTERESTS--ASSIGNEE (15 U.S.C. § 1060)

The owner of a [trademark] [mark] may [transfer] [sell] [give] to another the owner's interest in the [trademark] [mark], that is, the right to exclude others from using the mark. This [transfer] [sale] [gift] is called an assignment, and the person to whom this right is [transferred] [sold] [given] is called an assignee.

[The assignment must be in writing and signed.] To be enforceable, the assignment must include the goodwill of the business connected with the mark.

An assignee may enforce this right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)].

[Plaintiff is an assignee.]

Comment

E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1289 (9th Cir. 1992) ("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.") Whether goodwill is transferred is a factual finding. Id.

For transfer of goodwill requirement, see 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 18:1B (2d ed. 1984).

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, § 18:1D.

15.01.04 TRADEMARK INTERESTS--LICENSEE

The owner of a [trademark] [mark] may enter into an agreement that permits another person to use the [trademark] [mark]. This type of agreement is called a license, and the person permitted to use the [trademark] [mark] is called a licensee.

A license agreement may include the right to exclude others from using the [trademark] [mark]. A licensee may enforce this right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)].

[Plaintiff is a licensee.]

Comment

Although assignments must be written under 15 U.S.C. § 1060, a license can be oral.

The owner of a trademark may include the right to sue for trademark infringement in a license of trademark rights. 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. Furthermore, any interests the plaintiff had in the matter would be governed by the terms of the licensing agreement). See also Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154 (1st Cir. 1977) (the license granted the licensee "the right to enforce the licensed trademark rights against infringers in the United States").

15.01.05 TRADEMARK INTERESTS--MERCHANT OR DISTRIBUTOR

A [merchant] [distributor] may own a [trademark] [mark] that identifies products the [merchant] [distributor] sells even though the products are manufactured by someone else.

Comment

See Big O Tire Dealers v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219 (D. Colo. 1976), modified on other grounds, 561 F.2d 1365 (10th Cir. 1977), cert. dismissed, 434 U.S. 1052 (1978).

15.02.01 INFRINGEMENT OF A MARK--GENERALLY (15 U.S.C. § 1114(1))

The [owner] [assignee] [licensee] may enforce the right to exclude others from using the [trademark] [mark] in an action for [trademark] [mark] infringement. Anyone who, without the consent of the [owner] [assignee] [licensee], uses a [trade mark] [mark] in connection with the sale of [goods] [services] in a manner likely to cause confusion as to the source of the [goods] [services] infringes that [trademark] [mark].

15.02.02 FALSE DESIGNATION OF ORIGIN AND FALSE DESCRIPTION (15 U.S.C. § 1125(a))

Any person who makes commercial use of any [word] [term] [name] [symbol] [or combination thereof] [false or misleading [designation of origin] [description or representation of fact]]:

[which is likely to cause confusion as to

1. [the origin of that person's goods or services]

2. [that person's affiliation, connection or association with another person]

3. [endorsement or approval of the goods or services by another person]]

[, or]

[which misrepresents in advertising the nature, characteristics, qualities, or geographic origin of [his] [her] [another person's] goods or services] is liable to any person who [is] [or] [is likely to be] damaged by the [false designation of origin] [or] [false description]. [A person may recover for false [designation of origin] [description] even though the person is not the [owner] [assignee] [licensee] of a [trademark] [mark] for the [word] [term] [name] [symbol] [or combination thereof] used by another person.]

Comment

See 1 Jerome Gilson, Trademark Protection and Practice § 7.01 (1992) (Congress made it clear that a claimant under section 43(a), 15 U.S.C. § 1125(a), who did not own a federal registration would be entitled to the identical remedies now available to registrants); § 7.02[5] (section 43(a), 15 U.S.C. § 1125(a), does not mention need for plaintiff to own a valid federal registration); § 7.02[8] (section 43(a), 15 U.S.C. § 1125(a), permits a "person" doing business anywhere, including outside the locality falsely described to pursue an action; person need only believe that there is a likelihood of being damaged by a false or misleading description or representation of fact). See also 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 27:3 (2d ed. 1984) (one need not be the "owner" or "registrant" of a mark to have standing to assert an infringement claim under § 43(a) of the Lanham Act). But see Halicki v. United Artists Communications, 812 F.2d 1213, 1214 (9th Cir. 1987) (section 43(a), 15 U.S.C. § 1125(a), is confined to injury to a competitor; movie producer had no standing to allege claim under § 43(a), 15 U.S.C. § 1125(a), that movie theaters falsely advertised rating of movie); Smith v. Montoro, 648 F.2d 602, 605 (9th Cir. 1981) (to recover for violation under section 43(a), 15 U.S.C. § 1125(a), it is not necessary that mark be registered; party must have reasonable interest to be protected against false advertising) (citing New W. Corp. v. NYM Co. of California, 595 F.2d 1194, 1198 (9th Cir. 1979)).

15.03.01 - TRADEMARK REGISTRATION (15 U.S.C. §§ 1057, 1115)

The owner of a [trademark] [mark] may obtain a certificate of registration issued by the United States Patent and Trademark Office and may rely on that certificate to prove the right to exclude others from using the [trademark] [mark].

15.03.02 TRADEMARK--DEFINED (15 U.S.C. § 1127)

A trademark is any [word] [name] [symbol] [device] [, or any combination thereof,] used by a person to identify and distinguish such person's 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 trademark of another may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For definition of person, see Instruction 6.02.

15.03.03 SERVICE MARK--DEFINED (15 U.S.C. § 1127)

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 even though the goods of sponsors are advertised.]

A person who uses the service mark of another may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For definition of person, see Instruction 6.02.

15.03.04 COLLECTIVE TRADEMARK--DEFINED (15 U.S.C. § 1127)

A collective trademark is any [word] [name] [symbol] [device] [, or any 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] [an association] [, or other collective group or organization] may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For definition of person, see Instruction 6.02.

15.03.05 COLLECTIVE SERVICE MARK--DEFINED (15 U.S.C. § 1127)

A collective service mark is any [word] [name] [symbol] [device] [, or any combination thereof,] used by [a cooperative] [an association] [, or other collective group or organization] to identify and distinguish its services from those of others, and to indicate the source of the services [, even if that source is generally unknown].

A person who uses the collective service mark of [a cooperative] [an association] [, or other collective group or organization] may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For definition of person, see Instruction 6.02.

15.03.06 CERTIFICATION MARK--GOODS--DEFINED (15 U.S.C. § 1127)

A certification mark is any [word] [name] [symbol] [device] [, or any combination thereof,] which its owner permits others to use to certify [a good's [origin] [material] [mode of manufacture] [quality] [accuracy] [fill in other certifiable characteristics]] [that the work or labor on the goods was performed by members of a union or other organization].

A person who uses a certification mark without the owner's permission may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For definition of person, see Instruction 6.02.

15.03.07 CERTIFICATION MARK--SERVICES--DEFINED (15 U.S.C. § 1127)

A certification mark is any [word] [name] [symbol] [device] [, or any combination thereof,] which its owner permits others to use to certify [a service's [origin] [quality] [accuracy] [fill in other certifiable characteristics]] [that a service is performed by members of a union or other organization.]

A person who uses the certification mark without the owner's permission may be liable for damages.

[ is a person as that term is used in these instructions].

Comment

For definition of person, see Instruction 6.02.

15.03.08 UNREGISTERED MARK--COMMON LAW

Comment

An instruction should be drafted according to the relevant state common law. The language of Instruction 15.03.02 draws on the Lanham Act language, which was drafted to reflect the common law of trademarks. Accordingly, Instruction 15.03.02 may be a good approximation of the common law in the given state.

15.03.09 TRADE DRESS--DEFINED (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 includes color schemes, textures, sizes, designs, shapes, and placements of words, graphics, and decorations on a product or its packaging.

A trade dress is non-functional if, taken as a whole, the collection of trade dress elements [is not essential to the product's use] [or] [does not affect the cost or quality of the product] even though certain particular elements of the trade dress may be functional.

A person who uses the trade dress of another may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

1 J. Thomas McCarthy, Trademarks and Unfair Competition § 7:26 (2d ed. 1984).

For definition of person, see Instruction 6.02.

It is reversible error to fail to give an instruction defining non-functionality in a trade dress case. Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 842-43 (9th Cir. 1987).

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))).

In some circuits, functionality is treated as an affirmative defense. See, e.g., Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987); Vaughan Mfg. Co. v. Brikam Int'l, 814 F.2d 346, 349 (7th Cir. 1987). "In this [Ninth] circuit, however, we have placed the burden of proof on the plaintiff." Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987); accord Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 516 (9th Cir. 1989), cert. denied, 493 U.S. 872 (1989).

Although this instruction treats the trade dress of a product, the cases suggest that services might also have a protectible trade dress. See Two Pesos, Inc. v. Taco Cabana, Inc., ___ U.S. ___, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992); Fuddruckers, 826 F.2d 837.

15.03.10 TRADE NAME/COMMERCIAL NAME--DEFINED (15 U.S.C. § 1127)

A [trade name] [commercial name] is any word or words used by a person to identify such person's [business] [vocation] [or] [occupation]. A [trade name] [commercial name] symbolizes the reputation of a person's [business] [vocation] [or] [occupation] as a whole. [By comparison, a [trademark] [mark] identifies a person's goods or services.]

Any person who uses the [trade name] [commercial name] of another may be liable for damages.

[ is a person as that term is used in these instructions.]

Comment

For burden of proof in a trade name case, use Instruction 15.04.04.

Accuride Int'l v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir. 1989) ("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.").

15.04.01 INFRINGEMENT--REGISTERED TRADEMARK--ELEMENTS AND BURDEN OF PROOF (15 U.S.C. § 1114(1))

On plaintiff's claim for [trademark] [mark] infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. [describe plaintiff's symbol or term] has been registered as a [trademark] [mark] on the principal register in the United States Patent and Trademark Office;

2. [plaintiff is the registrant of that [trademark] [mark];] [plaintiff is the [assignee] [licensee] of the registrant of that [trademark] [mark];] and

3. defendant used [describe symbol or term used by defendant] without the consent of the plaintiff [or registrant] in a manner that is likely to cause confusion among ordinary purchasers as to the source of the [goods] [services].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

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). Because the "commerce" requirement is jurisdictional, that element need not go to the jury.

Use Instruction 15.04.07 for the factors to consider in assessing likelihood of confusion.

For cases involving a licensee plaintiff, see Instruction 15.01.04.

15.04.02 INFRINGEMENT--UNREGISTERED (OR INVALIDLY REGISTERED)

TRADEMARK--IDENTICAL MARK--ELEMENTS AND BURDEN OF PROOF

On plaintiff's claim for [trademark] [mark] infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. [plaintiff] [owner] began use of [describe symbol or term] on or about [insert date] as a [trademark] [mark] for [goods] [services];

2. defendant began to use the mark after that date in an area where [plaintiff] [owner] was selling the [goods] [services];

3. defendant's use of [describe symbol or term] was without the consent of the plaintiff [or the owner];

4. [describe symbol or term] [is inherently distinctive] [or] [has acquired secondary meaning]; and

5. defendant's use of [describe symbol or term] is likely to cause confusion among ordinary purchasers as to the source of the [goods] [services].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

This instruction should be tailored to reflect the common law in the given state.

See Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir.), cert. denied, 493 U.S. 872 (1989); Big O Tire Dealers v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219 (D. Colo. 1976), modified on other grounds, 561 F.2d 1365 (10th Cir. 1977), cert. dismissed, 434 U.S. 1052 (1978).

Two Pesos, Inc. v. Taco Cabana, Inc., U.S. , 112 S. Ct. 2753, 2757, 120 L. Ed. 2d 615 (1992) ("[I]t is common ground that § 43(a) [15 U.S.C. § 1125(a)] protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration ... are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a).").

Use Instruction 15.04.08 for the definition of secondary meaning.

Use Instruction 15.04.07 for the factors to consider in assessing the likelihood of confusion.

If the defendant contends that the unregistered mark is invalid, proving validity becomes part of the plaintiff's burden. Use Instruction 15.05.02.

15.04.03 INFRINGEMENT--UNREGISTERED (OR INVALIDLY REGISTERED) TRADEMARK--SIMILAR MARK--ELEMENTS AND BURDEN OF PROOF

On plaintiff's claim for [trademark] [mark] infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. [plaintiff] [owner] began use of [describe plaintiff's symbol or term] no later than [insert date] as a [trademark] [mark] for [goods] [services];

2. defendant began to use [describe defendant's symbol or term] after that date in an area where [plaintiff] [owner] was selling the [goods] [services];

3. defendant's use of [describe defendant's symbol or term] was without the consent of the plaintiff [or the owner];

4. [describe plaintiff's symbol or term] [is inherently distinctive] [or] [has acquired secondary meaning]; and

5. defendant's [trademark] [mark] [describe defendant's symbol or term] is so similar in [appearance] [sound] [meaning] to plaintiff's [trademark] [mark] that its use is likely to cause confusion among ordinary purchasers as to the source of [goods] [services].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

This instruction should be tailored to reflect the common law in the given state.

Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 926 (10th Cir. 1986).

See Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir. 1989); Big O Tire & Rubber Co., 408 F. Supp. 1219, 189 U.S.P.Q. 17 (D. Colo. 1976), modified on other grounds, 561 F.2d 1365, 195 U.S.P.Q. 417 (10th Cir. 1977), cert. dismissed, 434 U.S. 1052 (1978).

Two Pesos, Inc. v. Taco Cabana, Inc., U.S. , 112 S. Ct. 2753, 2757, 120 L. Ed. 615 (1992) ("[I]t is common ground that § 43(a) [15 U.S.C. § 1125(a)] protects qualifying unregistered trademarks and that the general principles qualifying a mark for registration ... are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a).").

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)(a)-(b). Because the "commerce" requirement is jurisdictional, that element need not go to the jury.

Use Instruction 15.04.08 for the definition of secondary meaning.

Use Instruction 15.04.07 for the factors to consider in assessing the likelihood of confusion.

If the defendant contends that the unregistered mark is invalid, proving validity becomes part of the plaintiff's burden. Use Instruction 15.05.02.

15.04.04 UNFAIR COMPETITION--LIKELIHOOD OF CONFUSION--

WORD OR DEVICE--ELEMENTS AND BURDEN OF PROOF

(15 U.S.C. § 1125(a)(1))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant used [describe symbol or term] [on] [or] [in connection with] [goods] [services] [or] [a container for goods];

2. the use of [describe symbol or term] is likely to [cause confusion] [or] [cause mistake] [deceive] as to

[the origin of the defendant's [goods] [services];]

[the [affiliation] [connection] [association] of the defendant with another person;]

[the [sponsorship] [approval] of the defendant's [goods] [services] [commercial activities] by another person;] and

3. plaintiff was [or is likely to be] damaged by the actions of defendant.

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

Congress has stated that a person "shall be liable in a civil action by any person who believes that he or she ... is likely to be damaged." 15 U.S.C. § 1125(a)(1). It is not clear whether the quoted language refers to injunctive relief or to monetary damages.

In order to obtain relief under Section 1125(a) for trade names or unregistered trademarks, plaintiff may be required to make additional showings of distinctiveness or secondary meaning. See Two Pesos, Inc. v. Taco Cabana, Inc., ___ U.S. ___, 112 S. Ct. 2753, 2757, 120 L. Ed. 2d 615 (1992).

Use Instruction 15.04.07 for the factors to consider in assessing likelihood of confusion.

15.04.05 UNFAIR COMPETITION--TRADE DRESS INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF (15 U.S.C. § 1125(a))

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

1. [plaintiff] [owner] began to use [describe plaintiff's trade dress] no later than [insert date] as a trade dress for [goods] [services];

2. defendant began to use [describe defendant's trade dress] after that date in an area where [plaintiff] [owner] was selling the [goods] [services];

3. defendant's use of its trade dress was without the consent of the plaintiff [or the owner];

4. plaintiff's trade dress is non-functional;

5. plaintiff's trade dress [is inherently distinctive] [or] [has acquired secondary meaning]; and

6. defendant's trade dress is likely to cause confusion among ordinary purchasers as to the source of plaintiff's and defendant's [goods] [services].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

It is reversible error to fail to give an instruction defining non-functionality in a trade dress case. Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 842-43 (9th Cir. 1987). Non-functionality is defined in Instruction 15.03.09.

Two Pesos, Inc. v. Taco Cabana, Inc., U.S. , 112 S. Ct. 2753, 2761, 120 L. Ed. 2d 615 (1992) "[P]roof of secondary meaning is not required ... where the trade dress at issue is inherently distinctive ....").

Use Instruction 15.04.07 (tailored to fit a trade dress case) for the factors to consider in assessing likelihood of confusion.

15.04.06 UNFAIR COMPETITION--LIKELIHOOD OF CONFUSION--FALSE OR MISLEADING REPRESENTATIONS--ELEMENTS AND BURDEN OF PROOF (15 U.S.C. § 1125(a)(1))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant used in commerce a [false designation of origin] [false description of fact] [misleading description of fact] [false representation of fact] [misleading representation of fact] [on] [or] [in connection with] any [goods] [services] [or] [container for goods];

2. the use of the [false designation of origin] [false description of fact] [misleading description of fact] [false representation of fact] [misleading representation of fact] is likely to [cause confusion] [or] [cause a mistake] [deceive] as to

[the origin of the defendant's [goods] [services];]

[the [affiliation] [connection] [association] of the defendant with another person;]

[the [sponsorship] [approval] of the defendant's [goods] [services] [commercial activities] by another person;] and

3. plaintiff was [or is likely to be] damaged by the actions of defendant.

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

Inwood Lab. v. Ives Lab., 456 U.S. 844, 858 (1982) (Section 1125(a) "prohibits a broader range of practices than does [Section 1114].").

Use Instruction 15.04.07 for the factors to consider in assessing likelihood of confusion.

15.04.07 LIKELIHOOD OF CONFUSION--FACTORS (15 U.S.C. §§ 1114(1), 1125(a)(1))

You may consider the following factors in determining whether the use of the [trademark] [mark] by the defendant is likely to cause confusion concerning the source of the plaintiff's or the defendant's [goods] [services]:

1. whether the plaintiff's [trademark] [mark] is strong or weak depending on its distinctiveness or public recognition.

2. whether the defendant has used the plaintiff's [trademark] [mark] on the [same] [or] [related] [goods] [or] [services].

3. whether the [trademark] [mark] used by the defendant is similar to the defendant's [trademark] [mark] in [appearance] [sound] [or] [meaning].

4. whether the evidence shows the use by the defendant of the plaintiff's [trademark] [mark] has led to actual confusion.

5. whether the evidence shows that the defendant knowingly adopted the plaintiff's [trademark] [mark] to identify similar [goods] [services].

[6.] [whether the [goods] [services] of the plaintiff and the defendant are likely to be sold in the same or similar stores or outlets.]

[7.] [whether the [goods] [services] sold by the plaintiff and the defendant [are expensive] [or] [whether the consumers of such [goods] [services] have expertise in the field].]

[8.] [whether the plaintiff is [expanding] [diversifying] [his] [her] [its] product lines to compete with others providing the [same] [or] [related] [goods] [or] [services].]

[9.] any other factors that bear on likelihood of confusion.

Comment

The Ninth Circuit has set forth a variety of tests for determining the likelihood of confusion. Academy of Motion Picture Arts and Sciences v. Creative House Promotions, 944 F.2d 1446, 1454 n.3 (9th Cir. 1991); compare J.B. Williams Co. v. Le Conte Cosmetics, 523 F.2d 187 (9th Cir. 1975), cert. denied, 424 U.S. 913 (1976) (six-factor test), Century 21 Real Estate v. Sandlin, 846 F.2d 1175, 1179 (9th Cir. 1988) (six-factor test), with Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987) (five-factor test) with AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) (eight-factor test).

The Ninth Circuit has reaffirmed the continuing validity of AMF in noting that subsequent cases were not intended to negate any of the AMF factors. See Accuride Int'l v. Accuride Corp., 871 F.2d 1531, 1533 & n.1 (9th Cir. 1989); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290-91 (9th Cir. 1992) (AMF'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)).

Use numbered paragraphs 1-5 for elements of the Ninth Circuit's five-factor test. For the Ninth Circuit's six-factor test, use numbered paragraphs 1-6. Use numbered paragraphs 1-8 for the Ninth Circuit's eight-factor test. Because these lists are "neither exhaustive nor exclusive," Gallo, 967 F.2d at 1290, the ninth element has been included.

15.04.08 SECONDARY MEANING--PLAINTIFF'S BURDEN OF PROOF

A [symbol] [term] that is not inherently distinctive is entitled to legal protection only if the [symbol] [term] acquires a secondary meaning that distinguishes the [goods] [services] it represents from the [goods] [services] of another [manufacturer] [merchant] [service provider].

A [symbol] [term] acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the [product] [service] itself, but the identification of the [product] [service] with a single source.

You may consider the following when you determine whether [describe symbol or term] has achieved a secondary meaning:

1. whether the people who purchase the [product] [service] that bears the claimed [trademark] [mark] associate the [trademark] [mark] with the [owner] [assignee] [licensee];

2. to what degree and in what manner the [owner] [assignee] [licensee] may have advertised under the claimed [trademark] [mark];

3. whether the [owner] [assignee] [licensee] successfully used this [trademark] [mark] to increase the sales of its [product] [service];

4. the length of time and manner in which the [owner] [assignee] [licensee] used the claimed [trademark] [mark];

5. whether the [owner's] [assignee's] [licensee's] use of the claimed [trademark] [mark] was exclusive;

6. whether the defendant intentionally copied the [owner's] [assignee's] [licensee's] [trademark] [mark]; and

7. any other factors that bear on secondary meaning.

The plaintiff has the burden of proving secondary meaning. The mere fact that the plaintiff is using [describe symbol or term], or that the plaintiff began using it before the defendant, does not mean that the [trademark] [mark] has obtained secondary meaning. There is no particular length of time that a [trademark] [mark] must be used before it obtains a secondary meaning.

Comment

See 1 Jerome Gilson, Trademark Protection and Practice § 2.09 (1992) (discussing the concept of secondary meaning); Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th Cir. 1989) (evidence of use and advertising over a substantial period of time is sufficient to establish secondary meaning); Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985), cert. denied, 474 U.S. 1059 (1986) (discussing factors to be considered in determining whether a secondary meaning has been achieved).

15.04.09 UNFAIR COMPETITION--MISREPRESENTATION BY WORD OR

DEVICE--ELEMENTS AND BURDEN OF PROOF (15 U.S.C. § 1125(a)(2))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant used [describe symbol or term] [on] [or] [in connection with] [goods] [services] [or] [container for goods] in a commercial [advertisement] [promotion];

2. the use of [describe symbol or term] misrepresented the [nature, characteristics, qualities] [geographic origin] of [defendant's] [or] [another person's] [goods] [services] [or] [commercial activities]; and

3. plaintiff was [or is likely to be] damaged by the misrepresentation.

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

Congress has stated that a person "shall be liable in a civil action by any person who believes that he or she ... is likely to be damaged." 15 U.S.C. § 1125(a)(2). It is not clear whether the quoted language refers to injunctive relief or to monetary damages.

15.04.10 UNFAIR COMPETITION--FALSE ADVERTISING--ELEMENTS AND BURDEN OF PROOF (15 U.S.C. § 1125(a)(2))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant made a [false designation of origin] [false description of fact] [misleading description of fact] [false representation of fact] [misleading representation of fact] [on] [or] [in connection with] any [goods] [services] [or] [container for goods] in a commercial [advertisement] [promotion];

2. the use of the [false designation of origin] [false description of fact] [misleading description of fact] [false representation of fact] [misleading representation of fact] misrepresented the [nature, characteristics, qualities] [geographic origin] of [defendant's] [or] [another person's] [goods] [services] [or] [commercial activities]; and

3. plaintiff was [or is likely to be] damaged by the misrepresentation.

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

15.04.11 INDUCING INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF

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

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

1. [direct infringer] infringed the plaintiff's [trademark] [mark]; and

2. defendant intentionally induced [direct infringer] to infringe plaintiff's [trademark] [mark].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

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]."); Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1382 (9th Cir. 1984) (Liability for trademark infringement may extend beyond those who actually perform the acts of infringement. 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.).

15.04.12 CONTRIBUTORY INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF

A person is liable for [trademark] [mark] 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] [mark].

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

1. the defendant [sold] [supplied] goods to [insert name of direct infringer];

2. [insert name of direct infringer] used the goods defendant [sold] [supplied] to infringe plaintiff's [trademark] [mark]; and

3. defendant knew or should have known [insert name of direct infringer] would use the goods to infringe plaintiff's [trademark] [mark].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

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]."); Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1382 (9th Cir. 1984) (Liability for trademark infringement may extend beyond those who actually perform the acts of infringement. One who intentionally induces another to infringe a trademark or supplies, knowing or having reason to know the materials supplies will be used to infringe a trademark, is contributorily liable for trademark infringement.)

Mini Maid Servs. Co. v. Maid Brigade Sys., 967 F.2d 1516, 1521 (11th Cir. 1992) (Although Inwood Laboratories involved relationship between manufacturers and retailers, its analysis is equally applicable to relationship between franchisor and franchisees.)

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.").

2 J. Thomas McCarthy, Trademarks and Unfair Competition § 25:2 (2d ed. 1984) (discussion of contributory infringement).

15.05.01 MARK INVALIDITY--REGISTERED TRADEMARK--AFFIRMATIVE DEFENSE--DEFENDANT'S BURDEN OF PROOF

It is a defense to an action for infringement that the plaintiff's registered [trademark] [mark] is invalid. A [trademark] [mark] is invalid if:

[it [is] [has become] a generic [word] [or] [term]];

[it is a merely descriptive [word] [or] [term]];

[it is a deceptively misdescriptive [word] [or] [term]];

[it is a primarily geographically descriptive [word] [or] [term]];

[it is a deceptively misdescriptive geographical [word] [or] [term]];

[it is primarily a surname].

The defendant has the burden of proving invalidity of the [trademark] [mark] by a preponderance of the evidence.

[Add appropriate concluding paragraph from Instructions 5.03, 5.04, or 5.05.]

Comment

Use this instruction for a registered mark. If the mark is unregistered, use Instruction 15.05.02.

15 U.S.C. §§ 1115(b)(2) and 1064(3) (generic word or term can be canceled as a trademark).

15 U.S.C. § 1052(e) (mark which is merely descriptive or deceptively misdescriptive cannot be registered on principal register).

If the mark at issue has been registered on the Lanham Act Principal Register, the defendant has the burden of proving invalidity. Vuitton et Fils S.A. v. J. Young Enters., 644 F.2d 769, 775-76 (9th Cir. 1981) ("[U]nder the Lanham Act, registration and entry of a trademark on the Principal Register ... shifts the burden of proof from the plaintiff, who would have to establish his right to exclusive use in a common law infringement action, to the defendant who must introduce sufficient evidence to rebut the presumption of plaintiff's right to such protected use.... [T]he presumption of validity of a registered trademark [is] overcome by ... a preponderance of the evidence.... [T]he burden of proof [is] on the party asserting invalidity.") See 15 U.S.C. § 1115(a) (registration is prima facie evidence of the validity of the mark, its registration, the registrant's ownership of the mark, and registrant's exclusive right to use the mark, subject to conditions or limitations stated in the certificate). See also 15 U.S.C. §1057(b); 15 U.S.C. § 1072.

15.05.02 MARK INVALIDITY--UNREGISTERED TRADEMARK--PLAINTIFF'S BURDEN OF PROOF

The defendant contends that the plaintiff's [trademark] [mark] is invalid. A [trademark] [mark] is invalid if:

[it [is] [has become] a generic [word] [or] [term]];

[it is a merely descriptive [word] [or] [term]];

[it is a deceptively misdescriptive [word] [or] [term]];

[it is a primarily geographically descriptive [word] [or] [term]];

[it is a deceptively misdescriptive geographical [word] [or] [term]];

[it is primarily a surname].

The plaintiff has the burden of proving the validity of the [trademark] [mark] by a preponderance of the evidence.

Comment

Use this instruction for an unregistered mark. If the mark is registered, use Instruction 15.05.01.

If the mark at issue is simply a common law mark, the plaintiff has the burden of proving by a preponderance that it is valid. See Vuitton et Fils S.A. v. J. Young Enters., 644 F.2d 769, 775-76 (9th Cir. 1981).

If defendant contends that plaintiff's mark is invalid, validity becomes an element of plaintiff's burden. See Instructions 15.04.02 and 15.04.03.

15.05.03 MARK INVALIDITY--GENERIC MARKS--DEFINITION

No one may own trademark rights to a [word] [term] that is a generic name.

A [word] [term] is generic if its [primary significance] [primary meaning] [principal significance] [principal meaning] to the prospective purchasers is the [product] [service] and not the [producer of the product] [provider of the service].

[[Words] [Terms] that originally are [trademarks] [marks] may, over time, be adopted by the public as the common name for the [product] [service] and become generic. If a [word] [term] becomes generic, the owner of the [trademark] [mark] cannot exclude others from using the [word] [term] or recover damages for the use. [Examples of words that have lost trademark protection because they became generic names of products they identified include "aspirin", "thermos" or "cellophane."]]

Comment

A generic name of a product can never function as a trademark to indicate origin. 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 12:1 (2d ed. 1984). See also 1 Jerome Gilson, Trademark Protection and Practice § 2.02 (1992). Generic terms are not entitled to protection under the Lanham Act. 815 Tonawanda St. Corp. v. Fay's Drug Co., 842 F.2d 643, 647 (2d Cir. 1988).

15 U.S.C. § 1064(3) ("The primary significance of the registered mark to the relevant public, rather than purchaser's motivation, shall be the test for determining whether the registered mark has become a generic name of goods... in connection with which it has been used."); see also 15 U.S.C. § 1115(b)(4) (infringing defendant can successfully avoid liability if the mark is useful only to describe the product, that is, only useful as a generic description).

Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (the term "aspirin" lost its distinctive meaning identifying the Bayer company's particular product but came to be a generic description of the underlying drug.); DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir.) (public had come to identify all such plastic material by the term "cellophane," a term that was suggestive if not fanciful when first coined by the plaintiff), cert. denied, 299 U.S. 601 (1936); King-Seeley Thermos Co. v. Aladdin Indus., 321 F.2d 577, 579-81 (2d Cir. 1963) (the term "thermos" has become generic, a synonym for "vacuum-insulated").

Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 718 F.2d 327, 331 (9th Cir. 1983) (unless defendant shows evidence that to consuming public the primary significance of the challenged mark is to denote the good or service offered, and not the source of that good or service, it has failed to bring forth sufficient evidence to find the challenged mark is generic), rev'd on other grounds, 469 U.S. 189 (1985).

15.05.04 MARK INVALIDITY--LACK OF DISTINCTIVENESS--MERELY DESCRIPTIVE MARKS--DEFINITION

An owner of a [trademark] [mark] may not exclude others from using a [word] [term] which is merely descriptive of [goods] [services] unless the [word] [term] has acquired a secondary meaning because the prospective purchasers have begun to consider the [trademark] [mark] as an indication of the source of the [goods] [services].

A [trademark] [mark] is merely descriptive if it is understood by prospective purchasers to describe only the [functions] [characteristics] [use] [or] [ingredients] of the [goods] [services].

Comment

See Instruction 15.04.08 on secondary meaning.

15 U.S.C. § 1052(e)(1) (cannot be registered).

See generally 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 11:18 (2d ed. 1984) (if the mark clearly does not tell the potential customer only what the goods are, their function, characteristics, use or ingredients, then the mark is not "merely descriptive").

In Re Entenmann's Inc., 15 U.S.P.Q. 2d 1750, 1751 (TMTAB 1990) (To be "merely descriptive" a term need not describe with absolute exactness an ingredient of the product. Thus, OATNUT on bread does not tell exactly what type of nut bread, but it is nonetheless descriptive since it informs buyers with the required degree of particularity of two important ingredients.).

In Re Omaha Nat. Corp., 819 F.2d 1117, 1119 (Fed. Cir. 1987) (Descriptiveness is tested from the viewpoint of the average purchaser, which would also include professional business purchasers. If corporate users of banking services understand that "First Tier" describes a certain class of banks, then that term is descriptive even if consumers would not understand the term. Descriptiveness is not determined by its meaning only to the class of regular customers with the largest head count.) See Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11-12 (9th Cir.) (test of descriptiveness of a word is its meaning to that class of buyers who are prospective purchasers; need of secondary meaning for valid mark which is merely descriptive), cert. denied, 400 U.S. 916 (1970).

15.05.05 MARK INVALIDITY--DECEPTIVELY MISDESCRIPTIVE MARKS--DEFINITION

An owner of a deceptively misdescriptive [trademark] [mark] may not exclude others from using it [unless it has acquired secondary meaning].

A [trademark] [mark] is deceptively misdescriptive if:

1. the [word] [term] does not accurately describe the character, quality, function, composition or use of the [goods] [services]; and

2. prospective purchasers are likely to believe the [word] [term] describes the [goods] [services] or their character, quality, function, composition, or use and the [word] [term] is likely to affect the decision to purchase the [goods] [services].

Comment

Use Instruction 15.04.08 for the definition of secondary meaning.

In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988) (descriptive mark consisted of words that falsely suggest seat covers contained wool, that prospective purchasers were meant to believe the words were meant to be an accurate description, and presence of wool in seats would be a material factor to a consumer's purchase decision). See concurring opinion by Judge Nichols objecting to focus on "prospective purchasers" rather than a reasonable purchaser. Id. at 778-779.

15 U.S.C. § 1052(e)(1) (deceptive mark cannot be registered).

15 U.S.C. § 1052(f) (deceptively misdescriptive mark can be registered if mark has become distinctive).

See generally 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 11:19 (2d ed. 1984).

15.05.06 MARK UNENFORCEABILITY--ABANDONMENT--AFFIRMATIVE DEFENSE--DEFENDANT'S BURDEN OF PROOF (15 U.S.C. § 1127)

The [owner] [assignee] [licensee] of a [trademark] [mark] cannot exclude others from using the [trademark] [mark] if it has been abandoned.

The defendant contends that the [trademark] [mark] has become unenforceable because the plaintiff abandoned it. The defendant has the burden of proving abandonment by [a preponderance of the] [clear and convincing] evidence.

The [owner] [assignee] [licensee] of a [trademark] [mark] has abandoned the right to exclusive use of the [trademark] [mark] when the [owner] [assignee] [licensee] discontinues its use, intending not to resume using it.

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

The defendant has the burden of proving abandonment. Where the defendant proves two consecutive years of non-use, the burden shifts to the plaintiff to go forward with evidence to prove that circumstances do not justify the inference of intent not to resume use. Exxon v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir. 1983).

See 1 J. Thomas McCarthy, Trademarks and Unfair Competition § 18:15 (2d ed. 1984) (licensor will be deemed to have abandoned the trademark if the licensee is given uncontrolled or naked use of the trademark).

The Ninth Circuit has not determined the standard of proof that must be met in proving abandonment. In Edwin K. Williams & Co. v. Edwin K. Williams & Co.-East, 542 F.2d 1053, 1059 (9th Cir. 1976), cert. denied, 433 U.S. 908 (1977), the court commented: "[A] person who asserts insufficient control must meet a high burden of proof." In Roulo v. Russ Berrie & Co., 886 F.2d 931, 938 (7th Cir. 1989), cert. denied, 493 U.S. 1075 (1990), the Seventh Circuit held that abandonment of a trade dress was a separate affirmative defense on which the defendant had the burden of proof by a preponderance of the evidence. See Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1023 (Fed. Cir. 1989) (in a cancellation proceeding, abandonment must be proven by a preponderance of the evidence). But see 1 McCarthy, supra, § 17:3 (abandonment must be proved by clear and convincing evidence).

15.05.07 CONTINUOUS PRIOR USE WITHIN REMOTE GEOGRAPHIC AREA--AFFIRMATIVE DEFENSES (15 U.S.C. § 1115(b)(5))

An owner of a registered [trademark] [mark] may not exclude others who began using [that] [a confusingly similar] [trademark] [mark] in a geographic area, without knowledge of the owner's prior use of [the] [a similar] [trademark] [mark] elsewhere, and before the owner had [applied for registration of the] [registered the] [published the registered] [trademark] [mark].

The defendant contends that defendant has the right to use the [trademark] [mark] within the [specify geographic region] area.

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

1. the [defendant] [defendant's assignor] [defendant's licensor] continuously used the [trademark] [mark], without interruption, in [insert geographic region where defendant claims prior use];

2. the [defendant] [defendant's assignor] [defendant's licensor] began using the [trademark] [mark] without knowledge of the plaintiff's prior use elsewhere; and

3. the defendant used the [trademark] [mark] before the plaintiff [applied for registration of the] [registered the] [published the registered] [trademark] [mark].

[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]

Comment

Defendant has the burden of pleading and proving the elements of this defense. Philip Morris, Inc. v. Imperial Tobacco Co., 251 F. Supp. 362, 379 (E.D. Va. 1965), aff'd, 401 F.2d 179 (4th Cir. 1968), cert. denied, 393 U.S. 1094 (1969); 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 26.18 (2d ed. 1984).

"Continuous" means lack of interruption. Casual Corner Assocs. v. Casual Stores of Nevada, 493 F.2d 709, 712 (9th Cir. 1974). The dimensions of the geographic area are a question of fact, determined in terms of the relevant zones of sales, advertising, and reputation as of the date of plaintiff's registration. Consolidated Freightways Corp. v. Consolidated Forwarding, 156 U.S.P.Q. 99 (N.D. Ill. 1967); McCarthy, supra, § 26:18 at 327.

15.06.01 TRADEMARK DAMAGES--ACTUAL OR STATUTORY NOTICE (15 U.S.C. § 1111)

In order for plaintiff to recover damages, the plaintiff has the burden of proving by a preponderance of the evidence that defendant had either statutory or actual notice that plaintiff's [trademark] [mark] was registered.

Defendant had statutory notice if:

[1. plaintiff displayed with the [trademark] [mark] the words "Registered in U.S. Patent and Trademark Office"] [or]

[2. plaintiff displayed with the [trademark] [mark] the words "Reg. U.S. Pat. & Tm. Off."] [or]

[3. plaintiff displayed the [trademark] [mark] with the letter R enclosed within a circle, thus ®].

15.06.02 TRADEMARK DAMAGES--ACTUAL DAMAGES (15 U.S.C. § 1117(a))

If you find for plaintiff on plaintiff's [infringement] [unfair competition] claim [and find that the defendant had statutory notice or actual notice of the plaintiff's registered [trademark] [mark]], you must determine plaintiff's damages.

Plaintiff has the burden of proving damages by a preponderance of the evidence. Damages means the amount of money which will reasonably and fairly compensate the plaintiff for any [injury] [and] [or] [property damage] you find was [proximately] [legally] caused by the defendant's infringement of the plaintiff's registered [trademark] [mark]. You should consider the following:

[the [injury to] [loss of] the plaintiff's reputation]

[the [injury to] [loss of] plaintiff's goodwill, including injury to the plaintiff's general business reputation]

[the loss of plaintiff's sales as a result of the defendant's infringement]

[the loss of plaintiff's profits]

[the expense of preventing customers from being deceived]

[the cost of future advertising which is reasonably required to correct any public confusion caused by the infringement]

[any other factors that bear on plaintiff's actual damages].

Comment

2 J. Thomas McCarthy, Trademarks and Unfair Competition § 30:27 (2d ed. 1984) (discussing recovery of plaintiff's actual damages).

1a Jerome Gilson, Trademark Protection and Practice § 8.08[2] (1992) (listing examples of recoverable damages).

Thelen Oil Co. v. Fina Oil & Chem. Co., 962 F.2d 821 (8th Cir. 1992) (trademark owner entitled to infringer's profits, costs of the action, and whatever additional damages trademark owner can prove resulted from infringer's misuse of trademark).

Defendant may argue that plaintiff's loss in sales may be caused by other market factors and not as a result of defendant's infringement. If defendant makes such an argument, an appropriate instruction should be drafted.

See Instructions 7.02, 7.03, and 7.04.

15.06.03 TRADEMARK DAMAGES--PROFITS (15 U.S.C. § 1117(a))

In addition to actual damages, the plaintiff is entitled to any profits earned by the defendant that are attributable to the infringement. You may not, however, include in any award of profits any amount that you took into account in determining actual damages.

Profit is determined by deducting all expenses from gross revenue.

Gross revenue is all of defendant's receipts from using the [trademark] [mark] in the sale of a [product] [service]. The plaintiff has the burden of proving a defendant's gross revenue by a preponderance of the evidence.

Expenses are all [operating] [overhead] and production costs incurred in producing the gross revenue. The defendant has the burden of proving the expenses [and the portion of the profit attributable to factors other than use of the infringed [trademark] [mark]] by a preponderance of the evidence.

Unless you find that a portion of the profit from the sale of the [goods] [services] using the [trademark] [mark] is attributable to factors other than use of the [trademark] [mark], you shall find that the total profit is attributable to the infringement.

Comment

"[C]ourts have not awarded both damages based upon plaintiff's lost sales and defendant's profits attributable to sales under the infringing mark.... Recovery of both would be an inappropriate double recovery ... as recovery of the infringer's profits in all likelihood will compensate for the sales the plaintiff has lost." 1a Jerome Gilson, Trademark Protection and Practice § 8.08[2] (1992).

Century Distilling Co. v. Continental Distilling Corp., 205 F.2d 140, 148-49 (3d Cir.) (trademark owner not permitted double recovery by an award of profits and an assessment of damages for lost sales), cert. denied, 346 U.S. 900 (1953). See also Borg-Warner Co. v. York-Shipley, Inc., 293 F.2d 88, 95 (7th Cir.) (discussing and analyzing calculation of damages), cert. denied, 368 U.S. 939 (1961).

Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966, 973 (2d Cir. 1985) (defendant's own statements as to profits provided sufficient basis for calculation of defendant's profits under 15 U.S.C. § 1117(a)).

Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir. 1986) (court awarded receipts from sales pursuant to 15 U.S.C. § 1117(a)).

American Honda Motor Co. v. Two Wheel Corp., 918 F.2d 1060, 1063 (2d Cir. 1990) (plaintiff entitled to amount of gross sales unless defendant adequately proves amount of costs to be deducted from it).

Texas Pig Stands, Inc. v. Hard Rock Cafe Int'l, 951 F.2d 684, 694 (5th Cir. 1992) ("[T]he trial court has wide discretion to increase or reduce the amount of profits recoverable by the plaintiff `[i]f the court shall find that the amount of recovery based on profits is either inadequate or excessive ... according to the circumstances of the case.'" (quoting 15 U.S.C. § 1117(a))).

2 J. Thomas McCarthy, Trademarks and Unfair Competition § 30:26 (2d ed. 1984) (discussing computation of defendant's profits from infringing sales).

Some courts hold that an award based on defendant's profits requires proof that the defendant acted willfully or in bad faith. See, e.g., ALPO Petfoods v. Ralston Purina Co., 913 F.2d 958, 968 (D.C. Cir. 1990); Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 641 (D.C. Cir. 1982); Frisch's Restaurants v. Elby's Big Boy of Steubenville, Ohio, 849 F.2d 1012, 1015 (6th Cir. 1988); Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 123 (9th Cir.), cert. denied, 391 U.S. 966 (1968).

Gilson, supra, § 8.08[3] (listing examples of costs and deductions that defendant may show). The defendant may also raise a defense that the purchasers bought goods bearing the infringing mark for reasons other than the appeal of the mark, and that the infringement had no cash value in sales made by the defendant. Id. If such a defense is raised, an appropriate instruction should be drafted.

15.06.04 TRADEMARK DAMAGES--INTENTIONAL INFRINGEMENT (15 U.S.C. § 1117(b))

If you find that the defendant infringed the plaintiff's [trademark] [mark], you must also determine whether the defendant used the [trademark] [mark] intentionally, knowing it was an infringement.

[You will answer this question on the special interrogatory form.]

Comment

It is not clear whether this question, or the question of extenuating circumstances, must be submitted to the jury. 15 U.S.C. § 1117(b). Any award of treble damages depends on these findings. Id.

In the area of patent infringement, there is some authority for submitting the issue of willfulness to the jury. See Shiley, Inc. v. Bentley Lab., 794 F.2d 1561, 1568 (Fed. Cir. 1986) (applying 35 U.S.C. § 284), cert denied, 479 U.S. 1087 (1987). See Instruction 16.04.07.

Hard Rock Cafe Licensing Corp. v. Concession Servs., 955 F.2d 1143, 1149 (7th Cir. 1992) (to be willfully blind, a person must suspect wrongdoing and deliberately fail to investigate); Chanel, Inc. v. Italian Activewear of Florida, 931 F.2d 1472, 1476 (11th Cir. 1991) (willful blindness could provide requisite intent or bad faith; determination of willful blindness depends on the circumstances and will generally be a question of fact for the factfinder after trial); VMG Enters. v. F. Quesada & Franco, Inc., 788 F. Supp. 648, 662 (D. Puerto Rico 1992) (treble damages granted when defendant's infringing actions are deemed to have been made "knowingly and willfully"); Polo Fashions v. Rabanne, 661 F. Supp. 89, 98 (S.D. Fla. 1986) (in absence of extenuating circumstances, profits are to be trebled where counterfeiting is intentional and knowing).

A court may enter judgment for a damage award under 15 U.S.C. § 1117(a) upon a finding of willfulness as well. Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378, 1384 (9th Cir. 1984) (district court found that conduct constituted willful and deliberate, bad faith infringement of plaintiff's trademarks that was intended to and in fact did result in deception of the public); Friend v. H.A. Friend and Co., 416 F.2d 526, 534 (9th Cir. 1969) (defendant's acts must be willful and calculated to trade upon the plaintiff's goodwill); Gorenstein Enters. v. Quality Care-USA, Corp., 874 F.2d 431, 436 (7th Cir. 1989) (15 U.S.C. § 1117(a) provisions regarding treble damages and reasonable attorney's fees are properly invoked when infringement is deliberate); Quaker State Oil Ref. Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir. 1981) (jury finding that infringement was deliberate and willful); Sun Prods. Group v. B & E Sales Co., 700 F. Supp. 366, 388 (E.D. Mich. 1988) (court in "exceptional cases" may award attorney fees to the prevailing party under 15 U.S.C. § 1117(a); legislative history clearly suggests that "exceptional cases" would involve cases in which the infringement is malicious, fraudulent, willful, or deliberate).

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