Definition
The owner of a registered mark may file a civil action against a defendant who uses, reproduces, or knowingly facilitates another person’s use or reproduction of the mark in connection with the sale or advertising of any goods or services, if such use is likely to cause confusion as to the source of those goods or services. (Cal. Bus. & Prof. Code, § 14245.)
To state a claim of trademark infringement under California common law, a plaintiff need allege only (1) their prior use of the trademark, and (2) the likelihood of the infringing mark being confused with their mark. (Wood v. Apodaca (N.D.Cal. 2005) 375 F.Supp.2d 942.)
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Element 1: Registered Mark
A “mark” includes any trademark or service mark registered under the California Trademark Law. (Cal. Bus. & Prof. Code, § 14202.)
“Trademark” means any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others. (Cal. Bus. & Prof. Code § 14202.)
“Service Mark” means a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others. (Cal. Bus. & Prof. Code, § 14202.)
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Element 2: Mark Owner
The owner of the trademark is generally the party who registered the mark. (Aloha Pacific, Inc. v. California Ins. Guarantee Ass’n (2000) 79 Cal.App.4th 297; Cal Bus. & Prof. Code, § 14241 [registration of trademark constitutes “prima facie” evidence of ownership, but under California law, this evidence can be rebutted by showing that someone else actually used the mark first; see also Grupo Gigante S.A. De C.V. v. Dallo & Co., Inc., 119 F. Supp. 2d 1083, 1088 (C.D. Cal. 2000)].)
The company that was the first to use a mark, and who did use the mark continuously for many years, was the presumptive owner of the mark. (Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426, 433; see also Cal. Bus. & Prof. Code §14400.)
An authorized distributor of a company’s product did not own or acquire the rights to use the product’s trademark merely because he had sold the product with the company’s permission. (Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426.)
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Element 3: Use or Reproduction in Connection with Sales or Advertising
This cause of action may be brought against the defendant who:
- Uses the mark, without the consent of the registrant, in connection with the sale, offering for sale, or advertising of any goods or services (Cal. Bus. & Prof. Code, § 14245, subd. (a)(1).)
- Reproduces, counterfeits, copies or colorably imitates the mark of that type and applies it to labels, signs, prints, packages (Cal. Bus. & Prof. Code, § 14245, subd. (a)(2).)
- Knowingly facilitates, enables, or otherwise assists a person to manufacture, use, distribute, display, or sell any goods or services bearing any reproduction, counterfeit, copy, or colorable imitation of a registered mark, without the consent of the registrant. The defendant is presumed to have acted knowingly following delivery to that defendant by personal delivery, courier, or certified mail return receipt requested, of a written cease and desist demand, accompanied by a copy of the certificate of registration and of any claimed reproduction or other imitation, and further accompanied by a statement made under penalty of perjury by the mark’s owner which includes the name of the infringer, the product or service and mark infringed, the dates of infringement, and any other information reasonably likely to assist the recipient in identifying the infringer. (Cal. Bus. & Prof. Code, § 14245, subd. (a)(3).)
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Element 4: Likelihood of Confusion
The use must be likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services. (Cal. Bus. & Prof. Code §14245, subd. (a)(2); see also Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426, 434 [liability for trademark infringement exists under California law when an appreciable number of reasonable buyers are likely to be confused by the similarity of the plaintiff and defendant’s marks].)
“Liability for trademark infringement and unfair competition exists under California law when an appreciable number of reasonable buyers are likely to be confused by the similarity of the plaintiff’s and defendant’s marks.” (Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426, 435.)
Courts determine the likelihood of confusion by balancing the following factors: (1) strength of the mark; (2) similarity between the two marks; (3) proximity of the goods; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchasers; (7) defendant’s intent in selecting his mark; and (8) likelihood of expansion of product lines. (Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426, 435.)
Whether confusion is likely is a factual determination. (Levi Strauss & Co. v. Blue Bell, Inc. (9th Cir. 1985) 778 F.2d 1352, 1356, 1361-62 [trial courts disfavor deciding trademark cases in summary judgments because the ultimate issue is so inherently factual].)
“In assessing likelihood of confusion, the standard used is the typical buyer exercising ordinary care, regardless of how ignorant, inexperienced, or credulous that buyer may be.” (Mallard Creek Indus., Inc. v. Morgan (1997) 56 Cal.App.4th 426, 437.)
For a California trademark infringement claim, the trademark owner need only establish that confusion is likely in California, as opposed to throughout the continental United States. (Levi Strauss & Co. v. Blue Bell, Inc. (9th Cir. 1985) 778 F.2d 1352, 1356, 1361-62.)
Likelihood of confusion is the test in California for whether use of a similar business name constitutes unfair competition. Prevailing on a state trademark infringement claim also entails prevailing on the state unfair competition claim, since common law and statutory trademark infringements are merely specific aspects of unfair competition. (Century 21 Real Estate Corp. v. Sandlin (9th Cir. 1988) 846 F.2d 1175, 1180.)
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Remedies
Injunction
Any owner of a mark registered under this chapter may proceed by suit to enjoin the manufacture, use, display, or sale of any counterfeits thereof and any court of competent jurisdiction may grant injunctions to restrain the manufacture, use, display, or sale as may be deemed just and reasonable, and shall require the defendants to pay to the owner up to three times their profits from, and up to three times all damages suffered by reason of, the wrongful manufacture, use, display, or sale. If, in any action brought under this section, the court determines that any goods in the possession of or services offered by a defendant bear or consist of a counterfeit mark, the court shall order the destruction of any goods, labels, packaging or any components bearing the counterfeit mark and all instrumentalities used in the production of the counterfeit goods, including, but not limited to, any items, objects, tools, machines or equipment or, after obliteration of the counterfeit mark, the court may dispose of those materials by ordering their transfer to the state, a civil claimant, an eleemosynary institution, or any appropriate private person other than the person from whom the materials were obtained. (Cal. Bus. & Prof. Code, §14250, subd. (a); see also Century 21 Real Estate Corp. v. Sandlin (9th Cir. 1988) 846 F.2d 1175, 1180-81 [injunctive relief is the remedy of choice for trademark cases, since there is no adequate remedy at law for the injury caused by a defendant’s continuing infringement; and in cases where the infringing use is for a similar service, broad injunctions are especially appropriate].)
Liability for Damages
Any person who, either for himself or herself or on behalf of another person, procures the filing or registration of any mark pursuant to this chapter by knowingly making any false or fraudulent representation or declaration, either orally or in writing, or by any other fraudulent means shall be liable to pay all damages sustained as a consequence of the filing or registration, to be recovered by or on behalf of the party injured thereby in any court of competent jurisdiction. (Cal. Bus. & Prof. Code, § 14240.)
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Statute of Limitations
The two-year statute of limitations for misappropriation or conversion of intangible interests probably applies. (Cal. Civ. Proc. Code, §339 subd. (1).)
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Affirmative Defenses
Registrant’s Consent
Use must be without the consent of registrant. (See Cal. Bus. & Prof. Code, § 14320(a)(1).)
Prior Use
(Cal. Bus. & Prof. Code, §14245.)
Abandonment
Abandonment under Lanham Act occurs when: (1) use has been discontinued with intent not to resume such use, or (2) the owner’s course of conduct causes the mark to become the generic name for the goods or services. (See California Western School of Law v. California Western University (1981) 125 Cal.App.3d 1002, 1006; see also 15 U.S.C. §1127.)
Laches
Central purpose of laches doctrine in trademark field is to discourage trademark holder from waiting to bring suit until junior user has begun to establish secondary meaning in its mark. (See California Western School of Law v. California Western University (1981) 125 Cal.App.3d 1002, 1006; see also MDT Corp. v. New York Stock Exchange, Inc. (C.D. Cal. 1994) 858 F. Supp. 1028, 1033.)
Fair Use
Fair use a defense to any Lanham Act infringement in film and DVD cover. (Winchester Mystery House, LLC v. Global Asylum, Inc. (2012) 210 Cal.App.4th 579.)
Fraud in Obtaining Trademark Registration
Although the state trademark statute does not specifically provide for this defense, it is likely that state courts would follow the example of federal law. (See 15 U.S.C. §1064(3).)
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