In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution.
Section 32 of the Lanham Act states that those who use similar or identical trademarks, products, or services, to those already registered with the USPTO in such a way as "likely to cause confusion, .
[3] While each jurisdiction uses a slightly different test, every test considers (1) whether and to what extent the alleged infringer intended to infringe on the senior user's valid trademark rights, (2) evidence of any consumer confusion, and (3) factors that speak to the economic relationship between the consuming public and the two marks, products, or services.
2004) Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed.
2005) The most famous of the foregoing tests is the one employed by the United States Court of Appeals for the Federal Circuit (the "DuPont" Factors).
[19] In any legal action for trademark infringement in the United States, the court will apply the test of the circuit in which it is located.
The most typical form of trademark infringement is point-of-sale confusion, which occurs when a consumer mistakenly believes that their product or service is from a company or brand in which it is not.
Initial interest confusion occurs when an allegedly improper use of a trademark attracts potential purchasers to consider products or services provided by the infringer (bait-and-switch).
Thus, for the purposes of a likelihood of confusion analysis, the relevant audience may not be the targeted purchasers at all, but rather the general public, otherwise known as the "person on the street.
Although Roberts has shown that confusion did not exist at the point of sale, the United States Court of Appeals for the Sixth Circuit concluded that allowing the kits to enter into commerce would dilute the Ferrari brand by diminishing the perceived exclusivity and quality that make the Daytona Spyder and Testarossa attractive to consumers.
The court further held that the kits were designed to perfectly replicate the exterior of Ferrari's vehicles, and there was a strong likelihood of post-sale customer confusion.
"[28] For example, in Fonovisa, Inc. v. Cherry Auction, Inc.,[29] the United States Court of Appeals for the Ninth Circuit imposed secondary liability on a flea market landlord who provided the “necessary marketplace” for the sale of infringing goods.
The Federal Trade Commission allows comparative advertising where the bases of the comparison are truthful, non-deceptive, and clearly specified.
If the user uses the trademark in a way that does not confuse or mislead consumers and only uses as much of the mark as necessary for identification (e.g., use of the words but not use of the same font or graphics), then this may be considered fair use.
[32] A viable defense to trademark infringement may assert "[t]hat the registration or the incontestable right to use the mark was obtained fraudulently.
[35] For example, in Valu Engineering, Inc. v. Rexnord Corp.,[36] the court decided that certain conveyor belt shapes were functional due to their increased performance over alternative designs and were therefore not eligible to be considered a trademark.
[38] The Lanham Act's fair-use exception is an affirmative defense requiring the defendant to prove that the term was used in good faith and in a descriptive manner for a purpose other than as a mark.
[39] In order to successfully assert a fair-use defense to a trademark infringement claim, the defendant must prove the three elements of the fair-use doctrine: (1) that the term was used in a way other than as a mark; (2) that the term was used to describe the goods or services offered or their geographic origin; and (3) that the use had been undertaken in good faith.
A plaintiff will be entitled to injunctive relief for trademark infringement if they show probable success on the merits and the possibility of irreparable injury.
[45] Alternatively, a plaintiff may recover damages incurred if they show a reasonable forecast of lost profits.
The ACTA trade agreement, signed in May 2011 by the United States, Japan, Switzerland, and the EU, requires that its parties add criminal penalties, including incarceration and fines, for copyright and trademark infringement, and obligated the parties to actively police for infringement.