1. Intellectual Property Boston College Law School April 7, 2008 Trademark – Infringement

2. Infringement Lanham Act §32(1) (15 U.S.C. §1114): –Any person who shall, without the consent of the registrant - (a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive … shall be liable in a civil action by the registrant for the remedies hereinafter provided.

3. 1-800-Contacts v. WhenU

4. Keyword Buys

6. Infringement Initial Questions –Issue of fact or issue of law? –Who must be confused? –How much confusion must there be? –Confused as to what?

7. Likelihood of Confusion Typical Factors (e.g. Polaroid, Sleekcraft, etc.) –Strength of mark –Proximity of goods –Similarity of marks –Actual confusion –Marketing channels –Types of goods and consumer care –Defendant’s intent –Likelihood of expansion in product lines

8. AMF v. Sleekcraft AMF “SLICKCRAFT” Nescher “SLEEKCRAFT”

9. Examples of Similarity Sight –Squirt v. Quirst (softdrink) –Cartier v. Cattier (cosmetics) –Tornado v. Vornado (appliances) Sound –Cygon v. Phygon (insecticide) –Huggies v. Dougies (diapers) –Bonamine v. Dramamine (drugs) Meaning –Cyclone v. Tornado (link fencing) –Apple v. Pineapple (computers –Pledge v. Promise (furniture polish)

10. Infringement Types of confusion –Product (e.g. Mike shoes) –Source (e.g. Nike mittens) –Sponsorship (e.g. Nike on soup can) –Initial interest (e.g. “buy Nike’s here”) –Post-sale confusion –Reverse confusion

11. Problem 5-5 Factors –Strength of mark –Proximity of goods –Similarity of marks –Actual confusion –Marketing channels –Types of goods and consumer care –Defendant’s intent –Likelihood of expansion in product lines

12. Private Labels

13. Administrative Next Class –Read through VI.D.3 – Dilution