Tuesday, July 11, 2006

TTABlog Recommended Reading: Murphy on The Significance of Intent in 2(d) Proceedings

The latest issue of the AIPLA Quarterly Journal includes a thought-provoking article by John M. Murphy, Esq., entitled "The (Unfortunate) Significance of Intent in TTAB Proceedings Under Section 2(d) of the Lanham Act," 34 AIPLA Quarterly Journal 177 (Spring 2006). Mr. Murphy, who practices with the Mexico City firm of Arochi, Marroquin & Lindner, S.C., also authored one of the TTABlog's favorite articles, "Playing the Numbers: A Quantitative Look at Section 2(d) Cases Before the Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004) (TTABlogged here and here).

In his latest article, Mr. Murphy opines that one reason for TTAB delay in Section 2(d) inter partes cases is the Board's unwarranted concern with the defendant's intent in adopting the allegedly confusing mark. Although the Lanham Act does not require consideration of intent in determining likelihood of confusion, "the Board and its reviewing courts have routinely considered a defendant's intent in making this determination."

"In truth, a defendant's reasons for adopting its mark have little to do with the likelihood that the mark's use will result in confusion. Moreover, a defendant's motives are often elusive and can only be determined through extensive discovery, if at all. In addition, disputes regarding intent often stand in the way of summary judgment. A reduced focus on intent would have little effect on the ultimate outcome of proceedings and might pay significant dividends in judicial efficiency."

Mr. Murphy's review of TTAB precedent revealed only four citable cases in the past 75 years in which intent has been mentioned as a significant factor in the outcome. (The most recent, the KRIPTONITA case, was TTABlogged here and here). In each case, plaintiff did not offer affirmative evidence of the defendant's intent, and in each there was objective evidence to support a likelihood of confusion. "The reference to intent appears, in each of these opinions, to have been more of a rhetorical flourish than anything else."

Murphy urges that practitioners and the Board spend less time on intent and more on objective facts regarding the marketplace. In particular, as to summary judgment he suggests that the Board end its practice of "routinely" denying summary judgment whenever an issue of intent is raised, since direct evidence of intent is seldom found and since intent is "rarely dispositive of section 2(d) proceedings."

Mr. Murphy, thank you for another fine article, and thank you for allowing the TTABlog to make your article available here.


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