Recommended Reading: Casagrande on the Role of Intent in Likelihood of Confusion Analysis
The latest issue of The Trademark Reporter includes Thomas L. Casagrande's thought-provoking dissertation on the role of intent in the determination of likelihood of confusion: "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [pdf here].
This article explores whether intent should play any role in determining infringement, that is, whether a defendant’s intent to deceive consumers makes it more likely, from an empirical standpoint, that such consumers will actually be deceived. The author concludes that intent should be excised from the confusion analysis. Part II summarizes the current role of intent in determining likelihood of confusion—which is that every federal court, to varying degrees, considers it relevant—and describes how U.S. law got to this point. Part III discusses why an accused infringer’s intent does not shed light on the crucial issue of whether confusion is likely among consumers, suggests that trademark law is anomalous in its continued regard of intent evidence as relevant and that evidence of intent is both irrelevant and highly prejudicial, thus running afoul of basic evidentiary principles. Part IV identifies some of the practical effects of intent’s current role in determining infringement under U.S. law. Part V proposes the elimination of intent as a factor to be considered in determining likelihood of confusion. It also discusses the practical issues surrounding implementation of that proposal, advocates restricting any discussion of intent to the judge-directed equitable issues (largely concerning remedies) that may arise, and proposes dealing with such issues, if implicated, only after liability is determined.
TTABlog query: Is evidence of copying probative of secondary meaning? To apply Mr. Casagrande's reasoning, what does the intent of the accused infringer have to do with consumer perception of the mark at issue? TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2011 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 101 TMR 1447 (September-October 2011). .
posted by John L. Welch @ 10/27/2011
2 comments
2 Comments:
Evidence of copying, I would say, is probative of secondary meaning because it is certainly no worse than any other trademark use. All trademark use of the trademark is probative of secondary meaning -- axiomatically, of course.
Once we have that for a premise, it may be that when the junior user is shown to have copied, as a policy matter we deem his use to be more probative of the existence of secondary meaning than use by others.
Alternatively, we make the less expansive argument that, again, just as all trademark use is probative, factually this trademark use, along with the cluster of other facts presumably tending to prove infringing use, is just that much more probative!
Suppose the copier doesn't use the term as a trademark or uses it in a multi-word phrase that has other distinctive words in it?
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