9/25/2018 Print canvas 140/216 For example, a clothing manufacturer once had a trademark on the slogan, “Here’s Johnny.” A portable toilet company began to use the exact same slogan: “Here’s Johnny.” But, the clothing company was not able to stop the portable toilet company from using its mark. Why? In most infringement actions, the plaintiff trademark owner has the burden of proving that the defendant’s mark is so similar to the plaintiff’s that the defendant’s use will produce a likelihood of confusion in buyers’ minds as to the true origin of the goods or services. Whether such likelihood exists is a question of fact in any particular case and is determined by such factors as similarity of design of the marks, similarity of product, proof of confusion among actual buyers, and marketing surveys of prospective purchasers showing an appreciable misassociation of the defendant’s mark with the plaintiff’s product. If the products are dissimilar and unrelated, however, even identical marks may not cause confusion. Thus, the portable toilet company’s ability to use the “Here’s Johnny” slogan. A court held that the use of that mark was not likely to cause purchasers of the toilets to associate them with men’s suits. The likelihood of confusion standard is discussed at length in University of Texas v. KST Electronic, Ltd. , presented as a featured case in the next module. Where likelihood of confusion is established and a plaintiff wins a trademark infringement action, the usual remedies are an injunction and damages. The injunction is an order prohibiting or placing limitations on the defendant’s further use of the mark, and damages is a recovery of money to compensate the plaintiff for the economic loss sustained as a result of the infringement. In addition, the trademark owner may recover the infringer’s profits from selling goods or services in connection with the infringing mark. Trademark Infringement Idea #2: Anti-Dilution Statutes If protected trademarks are deemed to be “famous,” trademark rights can sometimes be asserted even when the goods or services are not similar and there is no likelihood of confusion. In 1995, Congress passed the Federal Trademark Dilution Act (FTDA), and it was written specifically to protect trademarks that a court determines to be famous. Tiffany v. Boston Club , 231 F. Supp. 836 (D. Mass. 1964) involved the old and very well-known “Tiffany” trademark for jewelry, fine glassware, and related products. Over time, the mark has come to be associated with luxury and excellence. The defendant used the “Tiffany” name for a bar. The public is certainly not likely to believe that the owners of the “Tiffany” trademark were also responsible for the bar, and thus there would be no likelihood of confusion. The usual method of showing trademark infringement (demonstrating likely consumer confusion) would not have been useful to them.
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- Spring '08
- Common Law, Supreme Court of the United States, Appellate court, Trial court, State court