Key Takeaways

  • 15 USC 1125 prohibits false designations of origin, misleading representations, and trademark dilution.
  • Injunctive relief is available even without consumer confusion if a famous mark is diluted.
  • Courts may award damages, profits, and costs in addition to injunctions for willful infringement.
  • Trade dress protection under this statute requires proof of distinctiveness and non-functionality.
  • Domain name misuse that exploits brand names or causes confusion may lead to liability under anti-cybersquatting rules.
  • Good faith, fair use, and news reporting are not violations under the statute.

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.

Applicability to Trade Dress Claims

Under 15 USC 1125, trade dress—defined as the visual appearance of a product or its packaging—may be protected similarly to trademarks if it meets specific legal criteria. Plaintiffs in trade dress claims must demonstrate:

  • The trade dress is distinctive or has acquired secondary meaning.
  • The design is non-functional, meaning it does not affect the product's utility.
  • There is a likelihood of consumer confusion caused by the defendant’s use of a similar trade dress.

Protection may apply even without formal registration, although registered trade dress enjoys a presumption of validity.

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.

Damages and Profits

In addition to injunctive relief, courts may award:

  • Monetary damages sustained by the plaintiff due to the infringement.
  • Profits earned by the infringer as a result of unauthorized use.
  • Costs of the action, including attorney’s fees in exceptional cases.

If the court finds the infringement was willful, it may award enhanced damages or treble the amount of actual damages. However, courts exercise discretion to avoid over-penalizing defendants when damages exceed actual harm.

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.

Interaction with Federal Registration

While federal trademark registration is not required to bring a claim under 15 USC 1125(a), owning a registered mark strengthens a plaintiff’s position. A registered trademark is presumed valid and places the burden on the defendant to prove otherwise. However, Section 1125 protects both registered and unregistered marks from false representations and unfair competition.

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.

Internet and Domain Name Infringement

15 USC 1125(d) addresses cybersquatting through the Anticybersquatting Consumer Protection Act (ACPA). Liability arises when a person registers, uses, or traffics in a domain name that is:

  • Identical or confusingly similar to a distinctive or famous mark.
  • Registered with a bad faith intent to profit.

Courts evaluate bad faith by examining factors such as:

  • Intent to divert consumers or tarnish the mark.
  • Offers to sell the domain to the trademark owner.
  • Use of false contact information in registration.

Remedies may include forfeiture of the domain name, monetary damages, and statutory damages up to $100,000 per domain name in some cases.

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

Exemptions and Defenses

Not all uses of similar marks or product representations violate 15 USC 1125. The statute allows for:

  • Fair use, including comparative advertising and descriptive use.
  • Parody and satire, particularly when the expressive use is non-commercial.
  • News reporting or commentary on the mark.
  • Noncommercial uses, such as artistic expression or educational purposes.

These exemptions help balance trademark enforcement with First Amendment protections and legitimate business practices.

Frequently Asked Questions

  1. What does 15 USC 1125 prohibit?
    It prohibits false designations of origin, misleading descriptions, trademark dilution, and cybersquatting.
  2. Do I need a registered trademark to sue under 15 USC 1125?
    No. Unregistered trademarks and trade dress may also be protected under the statute if they meet the required legal standards.
  3. What remedies are available for violations of 15 USC 1125?
    Remedies include injunctive relief, damages, profits, attorney’s fees in exceptional cases, and domain name forfeiture in cybersquatting cases.
  4. How does the law define dilution?
    Dilution occurs when a famous mark's distinctiveness is lessened (blurring) or when its reputation is harmed (tarnishment), even without consumer confusion.
  5. What counts as fair use under this law?
    Fair use may include descriptive use, parody, commentary, comparative advertising, and noncommercial uses such as educational or artistic content.

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