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THIS CASEBOOK contains a selection of 53 U. S. Court of Appeals decisions that analyze and discuss issues surrounding trademark infringement. The selection of decisions spans from 2012 to the date of publication.Whether a mark is protectable dependsMoreTHIS CASEBOOK contains a selection of 53 U. S. Court of Appeals decisions that analyze and discuss issues surrounding trademark infringement. The selection of decisions spans from 2012 to the date of publication.Whether a mark is protectable depends on its degree of distinctiveness. See Zobmondo Entmt, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). There are five traditional categories of distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. Id. (citing Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). Generic marks are not eligible for trademark protection. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir.2002). Descriptive marks become protectable if they acquire a secondary meaning, by becoming distinctive as used on or in connection with the applicants goods in commerce. 15 U.S.C. § 1052(f)- see Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753. Suggestive, arbitrary, and fanciful marks are automatically protectable. See id. at 768, 112 S.Ct. 2753- Zobmondo Entmt, 602 F.3d at 1113. Southern California Darts Assn v. Zaffina, 762 F. 3d 921 (9th Cir. 2014).A likelihood of confusion exists between two marks if the defendants actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question. CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir.2006) (quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004)). To determine if there is a likelihood of confusion between two marks, we consider nine non-exclusive and non-mandatory factors:(1) the strength or distinctiveness of the plaintiffs mark as actually used in the marketplace- (2) the similarity of the two marks to consumers- (3) the similarity of the goods or services that the marks identify- (4) the similarity of the facilities used by the markholders- (5) the similarity of advertising used by the markholders- (6) the defendants intent- (7) actual confusion- (8) the quality of the defendants product- and (9) the sophistication of the consuming public.George & Co., 575 F.3d at 393. These nine factors serve as a guide rather than a rigid formula for infringement- they are not all of equal importance and not all factors are relevant in every case. Id. Swatch AG v. Beehive Wholesale, LLC, 739 F. 3d 150 (4th Cir. 2014).To prove abandonment of a mark as a defense to a claim of trademark infringement, a defendant must show that there was: (1) discontinuance of trademark use and (2) intent not to resume such use. Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 935 (9th Cir.2006). The phrase trademark use means the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark. Id. at 936 (quoting 15 U.S.C. § 1127). Even a single instance of use is sufficient against a claim of abandonment of a mark if such use is made in good faith. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 804 (9th Cir. 1970). All bona fide uses in the ordinary course of business must cease before a mark is deemed abandoned. Wells Fargo & Co. v. ABD Ins. & Financial Services, 758 F. 3d 1069 (9th Cir. 2014).Federal jurisdiction over trademark claims is granted by the Lanham Act, 15 U.S.C. § 1121(a), which confers broad jurisdictional powers upon the courts of the United States in conjunction with 28 U.S.C. § 1331. Steele v. Bulova Watch Co., 344 U.S. 280, 283, 73 S.Ct. 252, 97 L.Ed. 319 (1952)- see Reebok Intl, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552 (9th Cir.1992). Trademark Infringement (Intellectual Property Law Series) by LandMark Publications
