USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
the statute of limitations may reset with each new act of infringement. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark Trade mark owners can bring federal law, state law and common law claims. Generally, a claim for trade mark infringement requires the following: • The plaintiff has rights in a protectable trade mark. • The use is likely to cause confusion. Unfair competition law is broader. An unfair com - petition may be filed under federal law (under the Lanham Act (15 USC § 1125a)), state stat - utes or common law. Unfair competition law broadly covers trade mark infringement, false advertising, false designation of origin and false endorsement. Trade mark infringement and unfair competition law may be found through direct infringement, contributory infringement and vicarious infringe - ment. • Direct infringement is infringement by the defendant. • Contributory infringement may occur in vari - ous forms but generally occurs when a party knowingly encourages or facilitates unlawful activity. • Vicarious infringement generally imputes liability on a third party where the defend - ant has the right to control the activity or the infringing product, can bind the third party or the parties act as an apparent or actual “partnership”.
In addition, there are some other causes of action which may be available depending on the nature of the trade mark right. Dilution Dilution claims are only available if a mark is famous, that is, a “household name” to the gen - eral consuming public. Under dilution, there is no need to show a likeli - hood of confusion. • Dilution by tarnishment considers whether an association between the junior user and the famous mark is likely to reputationally harm the famous mark. • Dilution by blurringdetermines whether the junior users’ use of a mark will impair the distinctiveness of that famous mark. Dilution is governed the Lanham Act. Some states have somewhat broader dilution laws that cover marks that are famous in niche markets or False endorsement is when a defendant uses the persona of another to create the false impression that the individual approves, sponsors, endors - es, etc the defendant’s business and/or product. Cybersquatting Cybersquatting in the US is governed by the Anticybersquatting Consumer Protection Act (15 USC § 1125 (d)). The Act applies when a defendant in bad faith registers a domain that is confusingly similar to or dilutive of another’s mark for profit. Under the Act, a plaintiff can recover damages. in a particular locale. False Endorsement
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