Is there a “Proof of Use in Commerce” Test for Purposes of Proving Trademark Infringement?
April 30, 2019 by Barbara Berschler
The Federal Circuit in Versatop Support Systems v. Georgia Expo (2018-1208), examined another aspect of the “proof of use in commerce” requirement in federal trademark law under the Lanham Act. Unlike the conclusion it reached in the Simy Corp case that I recently mused upon (i.e., an applicant must provide the USPTO with sufficient evidence of its “the bona fide use of the mark in the ordinary course of trade, and not a use made merely to reserve rights in a mark.” 15 USC §1127). Here the Federal Circuit considered whether a similar “use in commerce” test applies when a trademark owner alleges infringement of its mark by another. The resounding answer was “No.”
The rival companies manufacture and sell tradeshow booth setups. Since 2011, Versatop used “PIPE & DRAPE 2.0” as a trademark, and later federally registered it. In brochures and advertising, Georgia Expo included phrases such as: Announcing Pipe & Drape 2.0; In Development Expected 01 2016; Stay Tuned for More Information about Pipe & Drape 2.0; and What Is Pipe & Drape 2.0? Georgia Expo’s defense was that their uses of the mark were not affixed to any goods it sold in commerce and that such would be a necessary finding to conclude it had infringed.
The district court agreed with that interpretation of the law and concluded that Georgia Expos’ uses of the marks did not qualify as infringement, granting summary judgment. In doing so, the district court failed to consider whether Georgia Expos’ uses were likely to cause confusion for consumers, which is a main test for deciding whether a particular use of a mark amounts to infringement.
For purposes of federal trademark protection, Congress’ authority is limited to regulating activity that affects interstate commerce (i.e., commerce that crosses state lines) by making actionable deceptive and misleading uses of a mark in commerce. Once a mark achieves federal registration status, it is entitled to protection from any use that could cause consumers to be confused about the source of the underlying product.
In reversing and remanding the trial court’s decision, the Federal Circuit clarified that the “proof of use in commerce” test is limited to the registration of a mark. However, because one of the main purposes of the Lanham Act is to prevent the deceptive and misleading use of marks in interstate commerce, various factors have been identified to decide whether a particular use is deceptive or misleading. The three principal factors are the similarity of the marks, the similarity of the goods or services offered, and the identity of the marketing and advertising channels. In the instant case, Georgia Expos’ use touched on all three points.
While there are legitimate reasons for one competitor to use the mark of another in its marketing, such uses are limited and I shall save any discussion as to that subject for another of my musings.