The Second Circuit recently announced a split with the Sixth
Circuit regarding the pleading requirements for trademark
infringement under the Lanham Act, 15 U.S.C. §§ 1114,
1125. See Brown v. Harpo et al., 717 F.3d 295 (2d
Cir. N.Y. 2013). In both Circuits, plaintiffs are required to
allege, among other things, that the allegedly infringing mark has
been "used in commerce." However, the Second and
Sixth Circuits have different interpretations of what it means to
use a mark in commerce for purposes of satisfying the Lanham
Act.
In Brown, Defendants argued that Plaintiff failed to
allege that Defendants used the mark at issueas a
trademark in commerce, an essential element of
trademark infringement. Defendants relied on cases from the
Second and Sixth Circuits in support of their position. The
District Court agreed with Defendants and dismissed the
case.
On appeal, the Second Circuit disagreed and reversed the District
Court, finding that Defendants had misinterpreted prior Second
Circuit law by conflating two distinct concepts—use in
commerce and use as a trademark in commerce. The appellate
court explained that, when determining whether a mark is used in
commerce, "we ask whether the trademark has been displayed to
consumers in connection with a commercial transaction."
Op. at 14. And when determining whether a mark has been used
as a trademark, "we ask whether the defendant is using the
'term as a symbol to attract public attention.'"
Op. at 13.
The appellate court explained that the law is well settled in the
Second Circuit, that "a plaintiff is not required to
demonstrate that a defendant made use of the mark in any particular
way to satisfy the 'use in commerce'
requirement." Rather, the "use in commerce"
requirement is met if the mark "is affixed to the goods
'in any manner.'" Op. at 13 (citing
cases).
The Second Circuit panel openly acknowledged that the Sixth Circuit
does require plaintiffs to allege use of an infringing
mark as a trademark in order to pursue a Lanham Act claim,
but stated that the Sixth Circuit's case law does not comport
with the law of the Second Circuit. According to the
court, the Sixth Circuit improperly extrapolated this
requirement not from the "use in commerce" requirement of
the Lanham Act, but from the consumer confusion element of the
likelihood of confusion analysis, "reasoning that in instances
where the defendant does not use the mark as a designation of
origin, consumers are unlikely to be misled as to the source of the
goods." Op. at 15.
The court explained that the Sixth Circuit approach is overly
narrow and could exclude cases where consumers are confused through
a non-trademark use of a mark. Op. at 16. The court
cited the example of Rescuecom Corp. v. Google,
Inc., 562 F.3d 123, 125-26, 129 (2d Cir. 2009), in which it
held that the use of a trademark in keyword advertising constitutes
a use in commerce despite the fact that the keyword was not
technically used as a trademark. The Second Circuit further
explained that the factual analysis conducted pursuant to the
likelihood of confusion factors is the proper venue for determining
whether consumers are confused as opposed to a motion to
dismiss.
Trademark litigators should take care to recognize this split when
filing a complaint for trademark infringement, thereby avoiding an
easy ground for a motion to dismiss.
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