Chapter 1-13 Intellectual Property—Statutory Trademark Infringement/Texas Trademark Act

• Jurisdiction: United States

1-13 Intellectual Property—Statutory Trademark Infringement/Texas Trademark Act

1-13:1 Introduction

The law of trademark infringement has three sources: The Lanham Act, the Texas Trademark Act, and the common law. All three areas of law are similar in that they protect a person's ability to distinguish his goods or services from others' goods or services by eliminating similar uses which might prove confusing, deceptive or dilutive. The crux of the Texas Trademark Act is that, in order to bring suit upon it, the plaintiff must have registered his trademark with the Secretary of State.

1-13:1.1 Related Causes of Action

Common Law Trademark Infringement, Federal Trademark Infringement,³⁴⁶ Misuse of a Trade Name, Misappropriation of Trade Secrets

MUST READ CASES

Condom Sense, Inc. v. Alshalabi, 390 S.W.3d 734 (Tex. App.—Dallas 2012, no pet.)

Horseshoe Bay Resort Sales Co. v. Lake Lyndon B. Johnson Improvement. Corp., 53 S.W.3d 799 (Tex. App.—Austin 2001, pet. denied)

Zapata Corp. v. Zapata Trading Int'l, Inc., 841 S.W.2d 45 (Tex. App.—Houston [14th Dist.] 1992, no writ)

1-13:2 Elements

1-13:2.1 Infringement

(1) The plaintiff holds a registered mark.³⁴⁷

• A certificate of registration is prima facie proof of the validity and ownership of the mark.³⁴⁸

(2) The defendant uses the mark without the plaintiff's consent.³⁴⁹

• The "mark" used by the defendant is one that is a:

• Reproduction of the registered mark;
• Counterfeit of the registered mark;
• Copy of the registered mark; or
• Colorable imitation of the registered mark.³⁵⁰

• The defendant's "use" means:

• A mark is considered to be in use in this state in connection with goods when:

• The mark is placed in any manner on:
(A) the goods;
(B) containers of the goods;
(C) displays associated with the goods;
(D) tags or labels affixed to the goods; or
(E) documents associated with the goods or sale of the goods, if the nature of the goods makes placement described by Paragraphs (A) through (D) impracticable; and

• The goods are sold or transported in commerce in this state.³⁵¹
• A mark is considered to be in use in this state in connection with services when:

• The mark is used or displayed in this state in connection with selling or advertising the services; and
• The services are rendered in this state.³⁵²

(3) In connection with selling, distributing, offering for sale, or advertising goods or services

• In connection with selling, distributing, offering for sale, or advertising goods or services.³⁵³

(4) Such use is likely to deceive or cause confusion as to the origin of the goods or services

• Such use is likely to deceive or cause confusion as to the origin of the goods or services.³⁵⁴

• Whether a defendant's use is likely to deceive or cause confusion is a factor-based test³⁵⁵ which looks to:

• Type of trademark;
• Arbitrary, suggestive, descriptive or generic;
• The similarity of design;
• The similarity of the product;
• The identity of retail outlets and purchasers;
• The identity of advertising media utilized;
• The defendant's intent;
• Whether actual confusion occurred.³⁵⁶

OR

(1) The plaintiff holds a registered mark.³⁵⁷

• A certificate of registration is prima facie proof of the validity and ownership of the mark.³⁵⁸

(2) The defendant reproduces, counterfeits, copies or colorably imitates the mark.³⁵⁹

(3) The defendant applies the reproduction to goods or services to be sold or distributed in Texas.³⁶⁰

1-13:2.2 Dilution

(1) The plaintiff holds a famous, distinctive and registered mark.³⁶¹

• A certificate of registration is prima facie proof of the validity and ownership of the mark.³⁶²
• Whether a mark is famous is determined by factors including:

• The duration, extent and geographic reach of the advertisement and publicity of the mark in this state, regardless of whether the mark is advertised or publicized by the owner or a third party;
• The amount, volume and geographic extent of sales of goods or services offered under the mark in this state;
• The extent of actual recognition of the mark in this state; and
• Whether the mark is registered in this state or in the United States Patent and Trademark Office.³⁶³

(2) The defendant's use of a mark or trade name is likely to cause dilution of the plaintiff's mark.³⁶⁴

1-13:2.3 Fraudulent Registration

(1) A person files for or obtains registration of a mark.³⁶⁵

(2) By knowingly making a false or fraudulent representation or declaration, oral or written, or by any other fraudulent means.³⁶⁶

1-13:3 Damages and Remedies

1-13:3.1 Actual Damages

An infringement plaintiff may be able to recover his actual damages resulting from the defendant's infringement if the defendant acted with intent to cause confusion or mistake or with intent to deceive.³⁶⁷

A fraudulent registration plaintiff may recover all damages resulting from the fraudulent filing or registration.³⁶⁸

1-13:3.2 Disgorgement

An infringement plaintiff may be able to recover the defendant's profits resulting from the infringement.³⁶⁹

1-13:3.3 Injunction

An infringement plaintiff is entitled to an injunction if he prevails.³⁷⁰

A dilution plaintiff is entitled to an injunction in the areas of the state in which the plaintiff's mark was famous before the defendant began using the dilutive mark.³⁷¹

1-13:3.4 Statutory Damages

A court may award an infringement plaintiff up to three times the combined amount of the defendant's profits and the plaintiff's damages if the defendant acted:

• With one of the following:

• With actual knowledge of the plaintiff's mark; or
• In bad faith;³⁷² and
• With the intent to cause confusion or mistake or with intent to deceive.³⁷³

1-13:3.5 Attorney's Fees

A court may award an infringement plaintiff reasonable attorney's fees if the defendant acted:

• With one of the following:

• With actual knowledge of the plaintiff's mark; or
• In bad faith;³⁷⁴ and
• With the intent to cause confusion or mistake or with intent to deceive.³⁷⁵

1-13:4...