The Catholic University of America

Summary of Federal Laws

Miscellaneous Laws Affecting Universities

The Trademark Act of 1946 (Lanham Act)
(amended by the Trademark Revision Act of 1988)

15 U.S.C. § 1051 et seq.; 19 C.F.R. § 133.1 et seq.

Trademarks used in interstate commerce are protected under the Trademark Act of 1946, also known as the Lanham Act. Unlike copyrights and patents, trademarks may be protected under state law, federal law, or both. Registration is not necessary for the protection of a trademark. See Two Pesos. v. Taco Cabana, 505 U.S. 763 at 768 (1992). A trademark gains protection through distinctiveness and use. The benefit of federal registration of a mark is that the registration constitutes prima facie evidence of both the validity and ownership of the mark, as well as the right to use the mark in commerce. Registration also gives the owner the right to prevent the importation of counterfeit goods and the right to bring an action under 15 U.S.C. § 116(d) to prevent the use of counterfeit marks. In addition, a registered mark becomes incontestable after five years of continuous post-registration use.

Title 15 U.S.C. §1125(a) provides for a cause of action for trademark infringement of unregistered marks. Remedies for infringement of a registered mark are at 15 U.S.C. § 1114 et seq. Trademark infringement is use in commerce of a mark identical or similar to that used by another seller in a way that confuses the public about the actual source of the goods or services in question. The test for liability for infringement is "likelihood of confusion." The law states that an infringer shall be liable in a civil action to any person who believes that he or she is likely to be damaged by the infringer's actions. Thus, in order to have standing to bring an action under § 1125(a), actual damage need not be shown, but rather a likelihood of damages. Most courts have held that the plaintiff need not be a direct competitor of the infringer, but that some level of competition is necessary. Some courts have concluded that competition need not exist at all. See Standing to Bring False Advertising Claim or Unfair Competition Claim Under § 43(a)(1) of Lanham Act, 124 A.L.R. Fed. 189. In addition, a plaintiff seeking injunctive relief under this section must only show "likelihood of confusion." Injury in terms of actual confusion is necessary to obtain monetary relief. See Web Printing Controls v. Oxy-Dry Corporation, 906 F.2d 1202 (7th Cir. 1990), pointing out that the lower court confused a Lanham Act violation with a Lanham Act remedy. A likelihood of confusion exists "when the consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark." Jews for Jesus v. Brodsky, 993 F. Supp. 282 at 301 (D.N.J.), aff'd, 159 F.3d 1351 (3rd Cir. 1998).

The Federal Trademark Dilution Act of 1995 is codified at 15 U.S.C. § 1125(c), and provides for a cause of action for dilution of a famous mark. Dilution is the lessening of the capacity of a famous mark to identify and distinguish goods and services regardless of the presence or absence of (1) competition between the parties or (2) the likelihood of confusion, mistake or deception. See Michael Landau, The Application of Principles of Trademark Law to Internet Domain Name Disputes, 13 Ga. St. U. L. Rev. 455 at 476-477 (1997). Dilution encompasses both tarnishment and blurring. Tarnishment occurs when someone uses a mark on unwholesome or inferior goods or services covered by the famous mark. Tarnishment may also occur when a trademark is used by an unauthorized party in conjunction with a disparaging, negative or unwholesome message. Blurring occurs when the consumer is caused to identify the non-famous product or service with those covered by the famous mark.

When seeking injunctive relief on a claim for dilution, the plaintiff must prove:

  1. its mark is famous;

  2. the defendant is making commercial use of the mark in commerce;

  3. the defendant's use of the mark began after plaintiff's mark became famous; and

  4. the defendant's use presents a likelihood of diluting the distinctive value of the mark.

Avery Dennison Corp. v. Sumpton, No. 98-55810, 1999 U.S. App. LEXIS 19954 (Aug. 23, 1999 9th Cir.) citing Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir.1998).

If willful intent is shown in conjunction with dilution, then the owner of the famous mark is also entitled to damages, lost profits, and attorneys fees. The statute lists eight factors to be used in determining whether or not a mark is distinctive and famous:

  • the degree of inherent or acquired distinctiveness of the mark;

  • the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

  • the duration and extent of advertising and publicity of the mark;

  • the geographical extent of the trading area in which the mark is used;

  • the channels of trade for the goods or services with which the mark is used;

  • the degree of recognition of the mark in the trading areas and channels of trade used by the mark's owner and the person against whom the injunction is sought;

  • the nature and extent of use of the same or similar marks by third parties; and

  • whether the mark was registered.

Note that § 1125(c) (dilution) does not contain the phrase "is likely to be damaged" which is contained in § 1125(a) (infringement), and thus it would appear that the likelihood of damages is not a prerequisite for bringing an action for dilution as opposed to infringement. A nice summary of the distinction between dilution and infringement can be found in the case of Ringling Bros. v. Utah Div. of Travel, 955 F. Supp 605 (E.D. Va. 1997), aff'd, 170 F.3d 449 (4th Cir. 1999), petition for cert. filed June 1999. The District Court stated, "Infringement, then, essentially requires that the protected and imitative marks be used in connection with competing goods and service or that there exists some potential for source confusion. A federal dilution claim, by contrast, shifts the focus away from consumer protection and towards the protection of an owner's quasi-property right in a famous mark, itself." Ringling Bros., 955 F. Supp 605 at 614, n. 7.

Possible Defenses in a Trademark Infringement/Dilution Case

Exempted from the reach of the trademark statute are the following:

  • fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark;

  • noncommercial use of a mark; and

  • all forms of news reporting and news commentary.

A non-commercial use of the mark would be protected by the First Amendment. In drawing a distinction between First Amendment protected non-commercial speech, and intellectual property protected commercial speech in the context of Web pages, one author has suggested that the presence of any of the following three criteria should result in a finding that the Web page is commercial, and thus subject to trademark law:

  • the page offers goods or services for sale;

  • the page profits by ads on its site; or

  • the page advertises goods or services for sale elsewhere.

Christopher Gatewood, Click Here: Web Links, Trademarks and the First Amendment, 5 Rich. J. L. & Technology 8 (1999).

In analyzing the availability of the fair use defense, note that such a defense is not available to the defendant if the mark is being promoted in a trademark sense. Visual placement, font size and prominence of the mark would be an indication as to whether or not the mark is being used in a trademark sense. Absence of good faith would tend to go against a finding of fair use. Consumer confusion would also be a factor to be considered in the fair use analysis.

Considerations on Bringing an Action

Trademark law differs from patent or copyright law in that "the owner of a mark is often compelled to commence an action against unauthorized users of the mark in order to for the mark to retain its distinctiveness and not be deemed 'abandoned'." Landau, 13 Ga. St. U. L. Rev. 455 at 468. See also 15 U.S.C. § 1127.

Selected Case Law Under the Trademark Act

Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J.), aff'd, 159 F.3d 1351 (3rd Cir. 1998).

In this action, plaintiff Jews for Jesus, a non-profit, international outreach ministry founded in 1973, distributes publications in connection with its ministry and has a catalog of merchandise. The name "Jews for Jesus" had been used in interstate commerce for more than 24 years. Plaintiff has an internet site under the name of The mark used by plaintiffs is "Jews f(star)r Jesus." The defendant, a professional internet developer, posted an internet site called "" which contains text critical of the "Jews for Jesus" organization. A disclaimer posted on defendant's site states, "This website is an independent project which reflects the personal opinion of its owner, and is in no way affiliated with the Jewish organization Outreach Judaism, or the Christian organization, Jews for Jesus."

Plaintiff sought a preliminary injunction, claiming irreparable harm, dilution and infringement. As this was a registered mark, the service mark infringement claim was brought under 15 U.S.C. § 1114. The test for infringement of registered or unregistered marks is the same.

In deciding in favor of the plaintiff on the likelihood of success on the infringement issue, the District Court held that in order to constitute infringement, exact similarities are not required between the allegedly confusing marks. 993 F. Supp. at 296. The court noted that defendant's use of the very similar mark is likely to prevent some Internet users from reaching plaintiff's own Internet Web site. The defendant's disclaimer did not alleviate this problem. 993 F. Supp. at 303. The court found the plaintiff had demonstrated a likelihood of success on its claim of federal and common law service mark infringement.

In ruling in favor of the plaintiff on the likelihood of finding dilution the court stated:

In this case, the Defendant is using the Mark and the Name of the Plaintiff Organization to lure individuals to his Internet site where he makes disparaging statements about the plaintiff Organization. His site then refers these individuals, via a hyperlink, to the Internet site maintained by the Outreach Judaism Organization which also contains information critical of and contrary to the teachings of the Plaintiff Organization. Such conduct amounts to "blurring" and "tarnishment" of the Mark and the Name of the Plaintiff Organization.

Jews for Jesus, 993 F. Supp. at 307, citing Panavision, 945 F. Supp. at 1304. The court went on to find that irreparable harm had been caused by the defendant, as his use of the name is likely to prevent some Internet users from reaching the plaintiff's Web site. The court also noted that defendant's use constituted commercial speech for the following reasons:

  • Defendant appropriated plaintiff's mark in order to reach an audience of internet users who want to reach plaintiff's services and viewpoint, intercepting, and misleading them in order to deliver his own message. Said action was done in a manner designed to harm the plaintiff organization commercially by disparaging it.

  • The defendant links to a commercial site, the Outreach Judaism Organization.

Domain Names

Anticybersquatting Consumer Protection Act

(also known as the "Trademark Cyberpiracy Prevention Act")

On November 29, 1999, the President signed into law the Consolidated Appropriations Act for FY 2000 (Pub. L. No. 106-113, 113 Stat. 150) which contains the Intellectual Property and Communications Omnibus Reform Act of 1999. One title of the intellectual property legislation is the Anticybersquatting Consumer Protection Act that provides new civil remedies against those who, in bad faith, register a trademark or service mark with intent to profit from the mark.





 updated 1-16-18 mlo