Infringement

• Jurisdiction: Maryland

XVII. INFRINGEMENT

A. Determining Infringement

To establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) that it owns a valid mark; (2) that the defendant used the mark "in commerce" and without plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) "in connection with the sale, offering for sale, distribution, or advertising" of goods or services; and (4) that the defendant's use of the mark is likely to confuse consumers.¹⁹⁹ Likelihood of confusion exists if "the defendant's actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question."²⁰⁰ Confusion can also exist as to affiliation and association under 15 U.S.C. § 1125(a). Competition between the parties often exists, but that element is not necessary for a cause of action to exist. Once an owner of a mark is satisfied that it can meet the test for infringement, it should proceed with protecting its mark.

B. Anticybersquatting Consumer Protection Act

The Lanham Act now includes provisions to aid a trademark owner if a third party uses the owner's mark in a domain name. The Anticybersquatting Consumer Protection Act (ACPA)²⁰¹ seeks to prevent "the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks."²⁰² The standard under the ACPA is not whether there is a likelihood of...