Lanham Act (Intellectual Property Law Series)
Book Details
Author(s)LandMark Publications
PublisherLandMark Publications
ISBN / ASINB00F2WYC2S
ISBN-13978B00F2WYC20
MarketplaceFrance 🇫🇷
Description
THIS CASEBOOK contains a selection of 203 U. S. Court of Appeals decisions that analyze and interpret provisions of the Lanham Act. The selection of decisions spans from 2005 to the date of publication. For each circuit, the cases are listed in the order of frequency of citation. The most cited decisions appear first.
Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a), provides:
§ 43(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's p.1366 goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Hall v. Bed Bath & Beyond, Inc., 705 F. 3d 1357 (Fed. Cir. 2013)
[T]he text of the Lanham Act makes it clear that a false advertising claim can properly be brought against a defendant who misrepresents the quality of its own goods as well." Societe Des Hotels Meridien v. LaSalle Hotel Operating P'ship, L.P., 380 F.3d 126, 132 (2d Cir.2004). Lanham Act § 43(a)(1) may be violated by advertising that is either "literally false," or when "the advertisement, while not literally false, is nevertheless likely to mislead or confuse consumers." Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 112 (2d Cir.2010); Merck Consumer Pharms. Co. v. Smithkline Beecham Corp., 960 F.2d 294, 297 (2d Cir.1992) ("[A] plaintiff must show that either: 1) the challenged advertisement is literally false, or 2) while the advertisement is literally true it is nevertheless likely to mislead or confuse consumers."). Ibid.
To meet the Lanham Act provision, [the plaintiff] need not plead actual harm; the likelihood of harm is the statutory criterion. See § 43(a)(1) (a false advertiser "shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."). Ibid.
When the parties are competitors and the advertising tends to mislead, dismissal on the pleadings is not appropriate. For a Lanham Act § 43(a) count, a "flexible approach" to injury and causation analysis is appropriate, so that "while a plaintiff must show more than a 'subjective belief' that it will be damaged, it need not demonstrate that it is in direct competition with the defendant or that it has definitely lost sales because of the defendant's advertisements." Ortho Pharm. Corp. v. Cosprophar, Inc., 32 F.3d 690, 694 (2d Cir. 1994); see also Kuklachev v. Gelfman, 600 F.Supp.2d 437, 470 (E.D.N.Y.2009) (at the pleading stage for § 43(a), "plaintiffs need only state that there was confusion and offer facts to support that claim."). Hall v. Bed Bath & Beyond, Inc., 705 F. 3d 1357 (Fed. Cir. 2013)
Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a), provides:
§ 43(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's p.1366 goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Hall v. Bed Bath & Beyond, Inc., 705 F. 3d 1357 (Fed. Cir. 2013)
[T]he text of the Lanham Act makes it clear that a false advertising claim can properly be brought against a defendant who misrepresents the quality of its own goods as well." Societe Des Hotels Meridien v. LaSalle Hotel Operating P'ship, L.P., 380 F.3d 126, 132 (2d Cir.2004). Lanham Act § 43(a)(1) may be violated by advertising that is either "literally false," or when "the advertisement, while not literally false, is nevertheless likely to mislead or confuse consumers." Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 112 (2d Cir.2010); Merck Consumer Pharms. Co. v. Smithkline Beecham Corp., 960 F.2d 294, 297 (2d Cir.1992) ("[A] plaintiff must show that either: 1) the challenged advertisement is literally false, or 2) while the advertisement is literally true it is nevertheless likely to mislead or confuse consumers."). Ibid.
To meet the Lanham Act provision, [the plaintiff] need not plead actual harm; the likelihood of harm is the statutory criterion. See § 43(a)(1) (a false advertiser "shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."). Ibid.
When the parties are competitors and the advertising tends to mislead, dismissal on the pleadings is not appropriate. For a Lanham Act § 43(a) count, a "flexible approach" to injury and causation analysis is appropriate, so that "while a plaintiff must show more than a 'subjective belief' that it will be damaged, it need not demonstrate that it is in direct competition with the defendant or that it has definitely lost sales because of the defendant's advertisements." Ortho Pharm. Corp. v. Cosprophar, Inc., 32 F.3d 690, 694 (2d Cir. 1994); see also Kuklachev v. Gelfman, 600 F.Supp.2d 437, 470 (E.D.N.Y.2009) (at the pleading stage for § 43(a), "plaintiffs need only state that there was confusion and offer facts to support that claim."). Hall v. Bed Bath & Beyond, Inc., 705 F. 3d 1357 (Fed. Cir. 2013)
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