Federal trademark law is primarily governed by the Lanham Trademark Act, also referred to as the Trademark Act of 1946. The Lanham Act, codified in 15 U.S.C. §§1051 to 1127, covers a wide range of trademark issues including registration, maintenance, protection, and the creation of a federal cause of action for trademark infringement.
The specifics of trademark infringement are discussed in 15 U.S.C. §1114 and §1125. The section creates civil liability for any person who, without the consent of the registrant of a trademark, reproduce, copy, or otherwise imitate the mark in a manner that is likely to cause confusion or mistake for customers. The Lanham Act also expressly encompasses two forms of trademark dilution within the umbrella of trademark infringement. Dilution by blurring occurs when someone other than the registrant uses a mark that is similar enough to a distinct trademark to create an association between the two marks. Dilution by tarnishment occurs when the similar mark harms the reputation of the original, registered mark in some way. To address modern technological trends, the section also imposes civil liability for cyberpiracy, prohibiting trademark infringement when the trademark is used in the domain name of an unaffiliated person or entity in a manner likely to cause confusion or dilution. In defining these causes of action, the statute expressly excludes fair use, including comparative advertising, parody, news reporting, and noncommercial use.
Although civil remedies are directed at the trademark registrant, the liabilities imposed by the Lanham Act reflect a legislative interest in protecting consumers from confusion. While the registrant bears the brunt of the financial injury in cases of trademark infringement, confusion can injure consumers as well. Trademark law is, at its foundations, directed at protecting a market where consumers can easily identify the source of goods or services they wish to purchase. Trademarks, while providing monetary value to their registrant, send a message to consumers about what they can reasonably expect from a product. Infringement muddies the waters of these expectations, misleading consumers as to the genuine source of a good or service. This misrepresentation can influence consumer purchasing decisions, ultimately leading the consumers to purchase something other than they originally expected.
The Eleventh Circuit recently addressed trademark infringement in the case of Weinacker v. Wahl Clipper Corporation. In Weinacker, the Court addressed the requirements to support a claim of trademark infringement. Specifically, a successful claim requires showing first, that the claimant has trademark rights in the mark at issue, and second, that another party adopted the mark, or a confusingly similar mark, such that consumers were likely to confuse the two marks. Several factors contribute to determining the likelihood of confusion among consumers: the distinctiveness of the mark; the similarity of the infringing mark; similarities between the goods or services offered by the marks; similarity of the sales methods; similarity of advertising methods; intend to appropriate the good will of the claimant; and existence of actual confusion. In Weinacker, the trademark infringement claim failed because the claimant failed to properly register his mark. Although the claim failed, the Court clearly outlined the necessary showings to support a trademark infringement claim, offering clear guidance to any person or entity facing infringement on a valid trademark.
The Lanham Act imposes civil liability rather than criminal liability, but trademark infringement nevertheless carries steep penalties for infringers. The guidelines for recovery are codified in 15 U.S.C. §1117. Under this section, victims of trademark infringement may recover any profits generated by the infringement, any damages sustained by the registrant because of the infringement, and, in some cases, attorney’s fees and the cost of the action itself. Courts are granted some discretion over the amount of damages, although the statute provides a maximum penalty of three times the amount found as actual damages. In cases involving the use of a counterfeit mark, these calculations can be replaced with statutory damages. The section provides the rate as “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold.” However, when the court finds that the infringer used a counterfeit mark willfully, the upper limit increases to $2,000,000 per counterfeit mark per type of goods or services sold. The statutory damages can also be applied to cyberpiracy infringement cases, but the upper limit is reduced to $100,000 per domain name.
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