Misrepresentation of Goods and Services

Misrepresentation of good and services occurs when anyone uses a name, word, symbol, or combination of elements in commerce with a misleading or false description that meets one of the following descriptions:

  • Will likely cause marketplace confusion about the origin of the goods and services advertised.
  • Misrepresents the quality or nature of the goods and services in question.

When someone misrepresents their goods or services, they can be sued in civil court by a person who claims he or she has been damaged by these actions.

Anyone, in this case, refers to any state, officer, employee, or anyone else acting on behalf of the state.

When a civil action is taken under this law for trade dress infringement, the burden of proof falls on the person who claims trade dress protection.

Injunctive Relief for Distinctive Marks

The owner of a distinctive mark can seek an injunction against anyone else who begins using this mark after it is already famous, regardless of whether confusion or economic injury results, because this use dilutes the reputation of the mark by "blurring" or "tarnishment."

A mark is considered distinctive if the U.S. public widely recognizes it as representative of a specific source of goods or services. To make this determination, the court will consider:

  • How long the mark has been used and the geographic reach and extent of its publicity
  • The volume, geographic extent, and amount of revenue from sales of goods or services covered by the mark
  • The extent of recognition
  • Whether and how the mark was registered

Dilution

"Dilution by blurring" is defined by this law as any use that makes the original mark less distinguished. To determine whether trademark dilution by blurring has occurred, the court will consider:

  • How similar the infringing mark is to the famous mark
  • The extent to which the famous mark is inherently distinctive
  • The exclusivity of use of the famous mark
  • How well-recognized the famous mark is
  • Whether an association was intended with use of the infringing mark
  • Whether an actual association between the two exists

"Dilution by tarnishment" exists when the famous mark's reputation is harmed by the alleged infringement.

The following uses of a famous mark are not considered dilution by blurring or tarnishment:

  • Fair use, including in connection with advertising, promotion, parody, comment, or identification
  • News coverage or commentary
  • Noncommercial use

Burden of Proof

The person bringing this type of civil action for trade dress has the burden of proof and must show that:

  • The trade dress in question is famous.
  • The trade dress in question is not functional.
  • The trade dress is famous separate from any registered mark.

Additional Remedies

The mark's owner is eligible for additional remedies beyond injunctive relief if:

  • The infringing mark was first used after October 6, 2006.
  • The infringing party willfully used dilution by blurring to trade on the famous mark's reputation.
  • The infringing party willfully used dilution by tarnishment to harm the famous mark's reputation.

Ownership of Valid Registration

If a person holds valid registration for a mark, he or she is protected against civil action by another person claiming infringement who seeks to prevent dilution or asserts damage to finances or reputation. The laws described here do not modify or supersede existing U.S. patent laws.

Liability

A person can be found liable in a civil action for trademark infringement if he or she:

  • Intends to profit from the mark or personal name in bad faith.
  • Uses or registers a domain name that is identical or similar to a distinctive mark, dilutes a famous mark, or contains a registered name, word, or mark.

Bad Faith

To determine bad faith in a case involving a web domain, the court may consider factors including but not limited to:

  • Existing trademark or intellectual property (IP) rights
  • Whether the domain consists of a person's legal name
  • Whether the domain has already been used to sell goods or services
  • Whether the use is noncommercial or otherwise fair use
  • The existence of intent to divert customers from the trademark owner's website
  • Any offer to sell or transfer the domain to the trademark owner

If you need help with 15 USC 1125, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.