The plaintiff, [name of plaintiff], seeks damages against the defendant, [name of defendant], for [trademark infringement] [unfair competition]. The defendant denies [infringing the trademark] [unfairly competing] [and] [contends the trademark is invalid].  To help you understand the evidence that will be presented in this case, I will explain some of the legal terms you will hear during this trial. 

DEFINITION AND FUNCTION OF A TRADEMARK 

            A trademark is a word, name, symbol, or device, or any combination of these items that indicates the source of goods.  The [owner] [assignee] [licensee] of a trademark has the right to exclude others from using that trademark or a similar mark that is likely to cause confusion in the marketplace. The main function of a trademark is to identify and distinguish goods or services as the product of a particular manufacturer or merchant and to protect its goodwill. 

[HOW A TRADEMARK IS OBTAINED] 

            [A person acquires the right to exclude others from using the same mark or a similar mark that is likely to cause confusion in the marketplace by being the first to use it in the marketplace, or by using it before the alleged infringer.  Rights in a trademark are obtained only through commercial use of the mark.] 

[TRADEMARK INTERESTS] 

            [The owner of a trademark may transfer, give, or sell to another person the owner’s interest in the trademark.  This type of [agreement] [gift] is called an assignment, and the person who receives the owner’s interest is called an assignee and becomes the owner of the mark.  An assignee has the right to exclude others from using the trademark or a similar mark that is likely to cause confusion in the marketplace.  To be enforceable, the assignment must be in writing and signed.  It must also include the goodwill of the business connected with the trademark.] 

            [The owner of a trademark may [also] enter into an agreement that permits another person to use the trademark.  This type of agreement is called a license, and the person permitted to use the trademark is called a licensee.] 

            A trademark [owner] [assignee] [licensee] may enforce the right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)]. 

[TRADEMARK REGISTRATION] 

            [After the owner of a trademark has obtained the right to exclude others from using the trademark, the owner may obtain a certificate of registration issued by the United States Patent and Trademark Office.  Thereafter, when the owner brings an action for infringement, the owner may rely solely on the registration certificate to prove that the owner has the right to exclude others from using the trademark or a similar mark that is likely to cause confusion in the marketplace in connection with the type of goods specified in the certificate.] [These presumptions in favor of the owner created by the certificate of registration can be overcome or rebutted only by certain types of evidence that I will describe to you later as appropriate.] 

[LIKELIHOOD OF CONFUSION] 

            [To prove infringement, the plaintiff must prove, by a preponderance of the evidence, that the defendant, without the plaintiff’s consent, used in commerce a reproduction, copy, counterfeit or colorable imitation of plaintiff’s mark in connection with the distribution or advertisement of goods, such that the defendant’s use of the mark is likely to cause confusion as to the source of the goods. It is not necessary that the mark used by the defendant be an exact copy of the plaintiff’s mark. Rather, the plaintiff must demonstrate that, viewed in its entirety, the mark used by the defendant is likely to cause confusion in the minds of reasonably prudent purchasers or users as to the source of the product in question.] 

THE PLAINTIFF’S BURDEN OF PROOF 

            In this case, the plaintiff, [name of plaintiff], contends that the defendant, [name of defendant], has infringed the plaintiff’s trademark.  The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of a valid trademark and that the defendant infringed that trademark.  Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the defendant infringed the plaintiff’s trademark. 

[THE DEFENDANT’S BURDEN OF PROOF] 

            [The defendant contends that [the [registered] trademark is invalid] [,] [the trademark has been abandoned] [or] [insert other affirmative defense].  The defendant has the burden of proving by a preponderance of the evidence that [the [registered] trademark] is invalid] [,] [the trademark has been abandoned] [or] [insert other affirmative defense].] 

            [Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the [[registered] trademark is invalid] [or] [insert other affirmative defense].] 

           Comment 

            This instruction is tailored to fit a classic trademark infringement case. If the case involves trade dress, trade name, or other unfair competition claims, this instruction will require modification. 

            Throughout these instructions, whenever the term “trademark” is used, as is appropriate for the facts of the case, a more specific term, such as “service mark,”  “collective mark" or “certification mark” may be substituted.  Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1194 n.1 (9th Cir. 2009) (“Under the Lanham Act, the only difference between a trademark and a service mark is that a trademark identifies goods while a service mark identifies services.” (internal quotation marks omitted)).

            See generally 15 U.S.C. § 1051 et seq.  The statute now protects both actual and intended use of a trademark. See 15 U.S.C. § 1051(b).  In a case involving merely intended use of a trademark, these instructions must be tailored to fit the case. 

            A trademark infringement case can be brought under three different causes of action: (1) statutory trademark infringement, (2) common law trademark infringement, and (3) unfair competition. 

            Although elements of a claim in trademark may overlap with a claim in copyright, the acts do not preempt each other. See Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 721 & n.18 (9th Cir. 2004) (“Copyright and trademark are related but distinct property rights, evidenced by different federal statutes governing their protection” so that “[a]lthough there is a general bar to double recovery, we caution that damages arising from a copyright violation do not necessarily overlap wholly with damages from a trademark violation, even though there might be only one underlying action.”); Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1011 (9th Cir. 1994) (upholding award for statutory damages under Copyright Act and actual damages under trademark statute). 

            Additional useful references include: (1) Model Jury Instructions: Copyright, Trademark and Trade Dress Litigation, Chapter Two, “Trademark” (Alan Nathan Harris & Todd S. Holbrook eds., American Bar Association 2008); and (2) Model Jury Instructions: Business Torts Litigation, Chapter Four, “Confusion of Source” (Brian A. Hill ed., American Bar Association 5th ed. 2022). 

Revised March 2024

            A trademark is any word, name, symbol, device [, or any combination thereof,] used by a person to identify and distinguish that person’s goods from those of others and to indicate the source of the goods [, even if that source is generally unknown]. 

            [Name of corporation, if a party] is a person as that term is used in these instructions.]

            [A person who uses the trademark of another may be liable for damages.] 

Comment 

            This instruction is a model for any case involving a trademark as defined by the Lanham Act, 15 U.S.C. § 1127. Under the Lanham Act, the term “mark” is often used to define the various types of mark protected by the trademark law, such as trade and service marks, collective trade and service marks, and certification trade and service marks. New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992). For instructions on other trade devices protected by trademark law, see Instruction 15.3 (Definition—Trade Dress) and Instruction 15.4 (Definition—Trade Name/Commercial Name). 

A corporation is a person.  See Instruction 4.2 (Liability of Corporations–Scope of Authority Not in Issue). 

            A trademark is a limited property right in a particular word, phrase or symbol. See New Kids on the Block, 971 F.2d at 306. It identifies the source of goods. See Brookfield Commc’ns Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1051 (9th Cir. 1999). But it fails to serve its source-identifying function when the public has never seen it, for instance when registered for an Internet domain name. Id. Accordingly, it is not protected until it is used in public in a manner that creates an association among consumers between the mark and the mark’s owner. Id. The ability of a trademark to distinguish the source of the goods it marks, not the uniqueness of its color, shape, fragrance, word, or sign, entitles it to protection. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164, 166 (1995). Accordingly, even “a color may sometimes meet the basic legal requirements for use as a trademark” if it can sufficiently serve the basic purpose of source identification. Id. 

            If other types of marks are involved in the case, adjustments to this instruction should be made as follows:

Service Mark Cases 

            If a service mark is at issue, the court should replace “goods” with “services” for the remaining instructions. Further, the court should substitute the following paragraph for the first paragraph of this instruction and substitute the word “service mark” for “trademark” in the second paragraph:

A service mark is any word, name, symbol, device [, or any combination thereof,] used by a person to identify and distinguish such person’s services from those of others and to indicate the source of the services [, even if that source is generally unknown]. [Titles, character names, and other distinctive features of radio or television programs may be registered as service marks as well]. 

“Generally speaking, a service mark is a distinctive mark used in connection with the sale or advertising of services . . . .” Am. Int’l Grp. v. Am. Int’l Bank, 926 F.2d 829, 830 n.1 (9th Cir. 1991).

Collective Trademark Cases 

            When a collective trademark is at issue, in lieu of this instruction, insert the following two paragraphs: 

A collective trademark is any [word] [name] [symbol] [device] [, or combination thereof,] used by [a cooperative] [an association] [, or other collective group or organization] to identify and distinguish its goods from those of others, and to indicate the source of the goods [, even if that source is generally unknown]. 

[A person who uses the collective trademark of a [cooperative] [an association] [, or another collective group or organization] may be liable for damages]. 

            For a description of a collective mark, see Sebastian Int’l v. Longs Drug Stores, 53 F.3d 1073, 1077-78 (9th Cir. 1995) (Ferguson, J., concurring). 

Collective Service Mark Cases 

            When a collective service mark is at issue, in lieu of this instruction, insert the following two paragraphs: 

A collective service mark is any [word] [name] [symbol] [device] [, or combination thereof,] used by [a cooperative] [an association] [, or other collective group or organization] to identify and distinguish its services from those of others, and to indicate the source of the services [, even if that source is generally unknown]. 

[A person who uses the collective service mark of a [cooperative] [an association] [, or another collective group or organization] may be liable for damages.]. 

            Regarding a collective service mark, see Robi v. Reed, 173 F.3d 736, 739-40 (9th Cir. 1999) (holding that musical group members, as collective owners of group’s service mark, do not retain right to use service mark when they leave group if members of original group continue to use service mark; manager of group, who was in position to control quality of its services, retained right to use service mark). 

Certification Mark for Goods Cases 

            When a certification mark for goods is at issue, in lieu of this instruction, insert the following two paragraphs: 

A certification mark for goods is any [word] [name] [symbol] [device] [, or any combination thereof,] which its owner permits others to use to certify [[a good’s [origin] [material] [mode of manufacture] [quality] [accuracy] [fill in other certifiable characteristics]] [that the work or labor on the goods was performed by members of a union or other organization]. 

[A person who uses the certification mark for goods of a [cooperative] [an association] [, or another collective group or organization] may be liable for damages.] 

Certification Mark for Services Cases 

            When a certification mark for services is at issue, in lieu of this instruction, insert the following two paragraphs: 

A certification mark for services is any [word] [name] [symbol] [device] [, or any combination thereof,] which its owner permits others to use to certify [a service’s [origin] [quality] [accuracy] [fill in other certifiable characteristics]] [that a service is performed by members of a union or other organization]. 

[A person who uses the certification mark of a [cooperative] [an association] [, or another collective group or organization] may be liable for damages.]

Revised March 2024

            Trade dress is the non-functional physical detail and design of a product or its packaging, which [indicates] [or] [identifies] the product’s source and distinguishes it from the products of others. 

            Trade dress is the product’s total image and overall appearance, and may include features such as size, shape, color, color combinations, texture, or graphics.  In other words, trade dress is the form in which a person presents a product to the market, its manner of display. 

           [Name of corporation, if a party] is a person as that term is used in these instructions.] 

Comment 

            In a trade dress case, it is reversible error to fail to give an instruction defining non-functionality. Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842–43 (9th Cir. 1987). For such an instruction, see Instruction 15.12 (Infringement–Elements–Validity–Trade Dress–Non-Functionality Requirement); Instruction 15.7 (Infringement–Elements and Burden of Proof–Trade Dress). 

            Trade dress encompasses the design of a product. Unregistered trade dress requires a showing of non-functionality, distinctiveness, and likelihood of confusion to support a finding of infringement.  See Wal-Mart Stores, Inc., v. Samara Bros., Inc., 520 U.S.205, 210 (2000); Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763, 765 n. 1 (1992) (noting that trade dress involves “the total image of a product and may include features such as size, shape, color or color combination, texture, graphics, or even particular sales techniques.”); Traffix Devices, Inc. v. Mktg. Displays, Inc. 532 U.S. 23, 28 (2001) (noting that “the design or packaging of a product may acquire a distinctiveness which serves to identify the product with its manufacturer or source; and a design or package which acquires this secondary meaning, assuming other requisites are met, is a trade dress which may not be used in a manner likely to cause confusion as to the origin, sponsorship, or approval of the goods. In these respects, protection for trade dress exists to promote competition.”).  See generally 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8 (5th ed. 2019).  

A corporation is a person.  See Instruction 4.2 (Liability of Corporations–Scope of Authority Not in Issue).

            Depending on the particular good or service to which the trade dress at issues applies, the instruction should be modified as indicated below: 

Product Packaging Cases

              Trade dress may involve the packaging or wrapping of the product at issue. This is the most frequent type of trade dress case.  If such trade dress is at issue, the court may add the following after the third paragraph of this instruction:

              In this case, you will hear evidence about the manner in which [insert description of good] was [packed] [wrapped] [boxed] [held in a container]. Trademark law protects such trade

dress from others using the same or similar presentation of another product if that trade dress is non-functional and if consumers identify the packaging with the source of the product, distinguishing it from other sources.

            Trade literature used in marketing constitutes trade dress. Unauthorized use by a competitor constitutes false designation of origin and unfair competition.

Product Design or Configuration Cases

            Trade dress may be other than the packaging of the product. It may constitute the design or overall appearance or configuration of the product itself. In such cases, because the source identifying aspect is part of the physical product itself, functionality is an important issue. If such trade dress is at issue, add the following after the third paragraph of this instruction:

Trade dress concerns the overall visual impression created in the consumer’s mind when viewing the non-functional aspects of the product and not from the utilitarian or useful aspects of the product. In considering the impact of these non-functional aspects, which are often a complex combination of many features, you must consider the appearance of features together, rather than separately.

            See Millenium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123 (9th. Cir. 2016) (holding that publication formats may be protectable trade dress); Two Pesos, Inc., v. Taco Cabana, Int’l Inc., 932 F.2d 1113 (5th Cir. 1991), aff’d, 505 U.S. 763, 770-73 (1992); Vision Sports, Inc. v. Meville Corp., 888 F.2d 609, 613 (9th Cir. 1989). 

Business Image Cases 

            Although this instruction addresses the trade dress of a product, the cases suggest that services might also have a protectable trade dress. See Two Pesos, Inc., 505 U.S. at 764-65 (noting that trade dress may include “even particular sales techniques”); Fuddruckers, Inc., 826 F.2d at 841-42.  This is treated much like trade dress comprised of product packaging.  If business image trade dress is at issue in the case, the following paragraph can be added after the third paragraph of the instruction: 

In this case, you will hear evidence about the manner in which [insert name of business] identifies its business and the product or services it sells. This is the total image of the business, suggested by the general shape and appearance of its business, such as its identifying signs, interior floor space, decor, equipment, dress of employees, and other features reflecting on the total image of the business.             

            See Taco Cabana Int’l, Inc., 932 F.2d at 1113; Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1258-59 (9th Cir. 2001) (providing definition of trade dress).

Revised November 2024

            A [trade name] [commercial name] is any word or words, a symbol, or combination of words and symbol, used by a person to identify that person’s [business] [vocation] [or] [occupation] and to distinguish it from the business of others.  A [trade name] [commercial name] symbolizes the reputation of a person’s [business] [vocation] [or] [occupation] as a whole.  [By comparison, a trademark identifies a person’s goods.] 

            Any person who uses the [trade name] [commercial name] of another may be liable for damages.

            [Name of corporation, if a party] is a person as that term is used in these instructions.] 

            [If a person owns a trade name, then that person has the exclusive right to use the name or to control the use of confusingly similar variations of the name by others in the market.] 

Comment 

            Use of a term as a trade name and use of the same term as a trademark are properly analyzed separately for infringement when the term serves as both identification for an organization (trade name) and as an identification of the source of a product (trademark).  See Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 903, 908-09 (9th Cir. 1995).  The right to use a term as a trade name is not necessarily coterminous with the right to use that term as a trademark for goods or services.  See Stephen W. Boney Inc. v. Boney Servs., Inc., 127 F.3d 821, 828-29 (9th Cir. 1997).  Accordingly, each should be analyzed and instructed separately. 

            “Trade names symbolize the reputation of a business as a whole.  In contrast, trademarks and service marks are designed to identify and distinguish a company’s goods and services…As a practical matter, courts are rarely called upon to distinguish between trade names, trademarks and service marks.  Trade names often function as trademarks or service marks as well . . . Perhaps because of this functional overlap, the same broad standards of protection apply to trademarks and trade names.”  Accuride Int’l v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir. 1989).

A corporation is a person.  See Instruction 4.2 (Liability of Corporations–Scope of Authority Not in Issue).

Revised March 2024

            Trademark laws balance three often-conflicting goals: (1) protecting the public from being misled about the nature and source of goods and services, so that the consumer is not confused or misled in the market; (2) protecting the rights of a business to identify itself to the public and its reputation in offering goods and services to the public; and (3) protecting the public interest in fair competition in the market. 

            The balance of these policy objectives vary from case to case, because they may often conflict.  Accordingly, each case must be decided by examining its specific facts and circumstances, of which you are to judge. 

            In these instructions, I will identify types of facts you are to consider in deciding if the defendant is liable to the plaintiff for violating trademark law.  These facts are relevant to whether the defendant is liable for: 

[(1)      infringing plaintiff’s registered trademark rights, by using a trademark in a manner likely to cause confusion among consumers;]

[(2)      unfairly competing, by using a trademark in a manner likely to cause confusion as to the origin or quality of plaintiff’s goods;]

[(3)      unfairly competing, by using trade dress in a manner likely to cause confusion as to the origin or quality of plaintiff’s goods;]

[(4)      infringing plaintiff’s trade name, by using similar corporate, business or professional names in a manner likely to cause confusion about the source of products in the minds of consumers;]

[(5)       false advertising, by making a false statement that was material and that tended to deceive consumers, injuring the plaintiff in the market.]

Comment 

            Instruct the jury on one or more of the above theories based on the theories relied on by the parties.             

            “The limited purpose of trademark protections set forth in the Lanham Trade-Mark Act, is to ‘avoid confusion in the marketplace’ by allowing a trademark owner to ‘prevent [ ] others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner.’” Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003). See id. at 806-07 (“Generally, to assess whether a defendant has infringed on a plaintiff’s trademark, we apply a ‘likelihood of confusion’ test that asks whether use of the plaintiff’s trademark by the defendant is ‘likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association’ of the two products.”) (citations omitted)). Federal trademark law addresses “the dual purposes of infringement law: ensuring that owners of trademarks can benefit from the goodwill associated with their marks and that consumers can distinguish among competing producers.” Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894, 900-01 (9th Cir. 2002).

             The general test of liability under the trademark law is likelihood of confusion. See 15 U.S.C. §§ 1114(1), 1125(a). “[T]he ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks . . . . Whether we call the violation infringement, unfair competition or false designation of origin, the test is identical–is there a ‘likelihood of confusion?’” New W. Corp. v. NYM Co. of Cal., Inc., 595 F.2d 1194, 1201 (9th Cir. 1997). “[T]he single type of confusion most commonly in trademark law’s sights is confusion ‘about the source of a product or service.’”  Jack Daniel’s Props. v. VIP Prods. LLC,  143 S. Ct. 1578, 1584 (2023) (quoting Moseley v. V Secret Catalogue, Inc.,  537 U. S. 418, 428 (2003)).

             Generally, liability for infringement of a registered trademark is handled under 15 U.S.C. § 1114(1). Unfair competition through infringing an unregistered trademark or infringing trade dress is handled under 15 U.S. C. § 1125(a). A cause of action for false advertising is also found in 15 U.S.C. § 1125(a). See Harper House Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989); U-Haul Int’l v. Jartran, Inc., 601 F.Supp. 1140 (D. Ariz. 1984), aff’d in part, modified in part & rev’d in part, 793 F.2d 1034 (9th Cir. 1986). Elements required for a false advertising claim, cognizable under 15 U.S.C. § 1125(a)(1)(B), are set forth in Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1180 (9th Cir. 2003).

              For false endorsement claims under § 1125(a) based on the use of a celebrity’s likeness or persona, see Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1067-73 (9th Cir. 2015) (describing false endorsement claim and listing eight factors relevant to determination of likelihood of confusion as to sponsorship or approval and adding that when “plaintiff is not the celebrity himself, an additional factor becomes relevant: the strength of association between the mark and the plaintiff”). 

For a “false or misleading” description or representation of fact about “goods or services” in “commercial advertising or promotion,” 15 U.S.C. § 1125(a) “[c]omparative assertions about effectiveness, riskiness, and security are the kinds of generalized statements of product superiority that [the Ninth Circuit has] routinely found to be nonactionable.” Oracle Int’l Corp. v. Rimini St., Inc., 123 F.4th 986, 1001 (9th Cir. 2024) (holding that a company’s statements that its services were more effective than its competitor’s services amounted to mere “puffery,” and were not actionable factual statements under the Lanham Act’s false advertising provision, as “[w]ithout an objective measure of the difference between” the services, any statement about their comparative effectiveness “was necessarily tinged with subjectivity”).

              The Ninth Circuit recognizes two theories of consumer confusion that support a claim of trademark infringement: forward confusion and reverse confusion. Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder. By contrast, reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior mark holder. Reverse confusion is not a separate trademark claim that must be specifically pleaded. Instead, it is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 932, 937 (9th Cir. 2017).

              In LegalForce RAPC Worldwide, PC v. LegalForce, Inc., 124 F.4th 1122, 1125-26 (9th Cir. 2024), the Ninth Circuit held that using a mark to advertise and sell a defendant’s equity shares is not a sale of goods or services and does not constitute trademark infringement. Equity is not a good or a service for purposes of the Lanham Act. 

Revised March 2025

            On the plaintiff’s claim for trademark infringement, the plaintiff has the burden of proving each of the following elements by a preponderance of the evidence: 

     First, [describe the plaintiff’s symbol or term] is a valid, protectable trademark; 

     Second, the plaintiff owns [describe the plaintiff’s symbol or term] as a trademark;

     Third,  the defendant used [describe symbol or term used by the defendant] [a mark similar to [describe the plaintiff’s symbol or term]] in interstate commerce; and 

     Fourth, the defendant used [describe symbol or term used by the defendant] [a mark similar to [describe the plaintiff’s symbol or term ]] without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods. 

            If you find that each of the elements on which the plaintiff has the burden of proof has been proved, your verdict should be for the plaintiff.  If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant. 

Comment              

            This instruction sets out the general standard for trademark infringement liability under the Lanham Act. Modify this instruction as necessary when other marks (e.g., service mark, collective trade or service marks, or certification trade or service marks), are at issue by inserting such terms in lieu of the word “trademark” in this instruction and “services” in lieu of “goods.” When the defendant’s infringing action consists of using a mark similar, but not identical to the plaintiff’s, particular care should be exercised in the third numbered element of this instruction. Gracie v. Gracie, 217 F.3d 1060, 1066-67 (9th Cir. 2000) (noting that, when instructing jury to consider if defendant “used” plaintiff’s mark, trial court should make it clear jury can consider whether the marks were similar).

            To prove trademark infringement, a trademark holder must show that a defendant’s use of its trademark is likely to cause confusion, to cause mistake, or to deceive. See Adobe Sys. Inc. v. Christenson, 809 F.3d 1071, 1081 (9th Cir. 2015); see also Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074, 1079 (9th Cir. 2020) (holding that “a counterfeit claim requires a showing of likelihood of confusion under Section 1114.”). The second bracketed phrase in the third and fourth numbered elements of this instruction may be a sufficient specification in most cases involving defendant’s use of mark similar, rather than identical, to the plaintiff’s. In cases involving confusion “on the part of someone other than the purchaser” that occurs after the point of sale, the elements may be modified to reference members of the relevant public beyond the direct purchaser. See Abercrombie & Fitch, Inc. v. Moose Creek, Inc., 486 F.3d 629, 635 (9th Cir. 2007). 

            “The intent of the Congress in passing section 43(a) was to create a right of action for a competitor to stop . . . unfair competition in interstate commerce.” U-Haul Int'l, Inc. v. Jartran, Inc., 681 F.2d 1159, 1162 (9th Cir. 1982). 

Consult the following instructions to explain the elements identified by this instruction: Instruction 15.8 (Infringement—Elements–Presumed Validity and Ownership– Registered Trademark); Instruction 15.13 (Infringement—Elements–Ownership–Generally); Instruction 15.18 (Infringement—Likelihood of Confusion—Factors—Sleekcraft Test). 

            “In trademark cases, it is not necessary for plaintiff to prove actual damage or injury to state a prima facie case of infringement. Injunctive relief does not require that injury be proven. . . . All that must be proven to establish liability and the need for an injunction against infringement is the likelihood of confusion.” 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30:2.50 (5th ed. 2019). 

            Generally, the burden of proof in infringement rests with the plaintiff. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002) (“Overall, the plaintiff retains the ultimate burden of persuasion in a trademark infringement action, namely proof of infringement. A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.”). 

            Although 15 U.S.C. § 1114(1) provides protection only to registered marks and 15 U.S.C. § 1125(a)(1) protects against infringement of unregistered and registered marks, trade dress and false advertising, the Ninth Circuit has explained that “[d]espite these differences, the analysis [for infringement] under the two provisions is sometimes identical.” Brookfield Commc’ns, Inc., v. W. Coast Ent. Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir. 1999) (noting that trademark infringement elements under either § 1114 or § 1125(a) involve plaintiff showing (1) that defendant used mark confusingly similar to (2) valid, protectable trademark (3) that was owned by plaintiff).

In LegalForce RAPC Worldwide, PC v. LegalForce, Inc., 124 F.4th 1122, 1125-26 (9th Cir. 2024), the Ninth Circuit held that using a mark to advertise and sell a defendant’s equity shares is not a sale of goods or services and does not constitute trademark infringement. Equity is not a good or a service for purposes of the Lanham Act.

Revised March 2025

            On the plaintiff’s claim for trade dress infringement, the plaintiff has the burden of proving by a preponderance of the evidence each of the following elements: 

First, [describe the plaintiff’s trade dress] is distinctive; 

Second, the plaintiff owns [describe the plaintiff’s trade dress] as trade dress; 

Third, the [describe the plaintiff’s trade dress] is nonfunctional; and 

Fourth, the defendant used [describe trade dress used by the defendant] [trade dress similar to [describe the plaintiff’s trade dress]] without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the [plaintiff’s] [defendant’s] goods. 

            If you find that each of the elements on which the plaintiff has the burden of proof has been proved, your verdict should be for the plaintiff.  If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant. 

Comment

              To provide the jury further guidance on the first element of this instruction (distinctiveness), use Instruction 15.9 (Infringement—Elements—Validity—Unregistered Marks), Instruction 15.10 (Infringement–Elements—Validity—Unregistered Marks—Distinctiveness) (see the Comment to that instruction on Modifications for Trade Dress cases), and 15.11 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning). If the trade dress is registered, use Instruction 15.8 (Infringement—Elements—Presumed Validity and Ownership—Registered Trademark). For an instruction providing guidance on the third element of this instruction, see Instruction 15.12 (Infringement—Elements—Validity—Trade Dress—Non–Functionality Requirement). For an instruction covering the fourth element of this instruction, see Instruction 15.18 (Infringement—Likelihood of Confusion—Factors—Sleekcraft Test). 

            See Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 808 (9th Cir. 2003) (“Generally, to recover for trade dress infringement under [15 U.S.C.] § 1125, a plaintiff must show that ‘its trade dress is protectable and that defendant’s use of the same or similar trade dress is likely to confuse consumers.’ A trade dress is protectable if it is ‘nonfunctional and has acquired secondary meaning and if its imitation creates a likelihood of consumer confusion.’”) (citations omitted); Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (citing as elements of proof necessary to show infringement of bottle design: “(1) nonfunctionality, (2) distinctiveness and (3) likelihood of confusion”). 

            “In trademark cases, it is not necessary for plaintiff to prove actual damage or injury to state a prima facie case of infringement. Injunctive relief does not require that injury be proven. . . . All that must be proven to establish liability and the need for an injunction against infringement is the likelihood of confusion. ” 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30:2.50 (5th ed. 2019). 

Revised March 2024

            I gave you instruction number [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6] that requires the plaintiff to prove by a preponderance of the evidence [that the trademark is valid and protectable] [and] [that the plaintiff owns the trademark].  [A valid trademark is a word, name, symbol, device, or any combination of these, that indicates the source of goods and distinguishes those goods from the goods of others.  A trademark becomes protectable after it is used in commerce.] 

            One way for the plaintiff to prove trademark validity is to show that the trademark is registered.  An owner of a trademark may obtain a certificate of registration issued by the United States Patent and Trademark Office and may submit that certificate as evidence [of the validity and protectability of the trademark] [and] [of the certificate holder’s ownership of the trademark] covered by that certificate. 

            Exhibit __ is a certificate of registration from the United States Patent and Trademark Office. [It was submitted by the plaintiff as proof of the validity of the trademark [and] [that the plaintiff owns the trademark].] 

            The facts recited in this certificate are: [summarize certificate entries as to validity and ownership of trademark, as well as limitations on the registration].  However, the defendant submitted evidence to dispute these recitals. The defendant alleges that the certificate cannot be considered proof of [[validity] [and] [ownership]] of the trademark because [insert § 1115(b) defense[s] raised by defendant, e.g., the trademark had been abandoned, the defendant’s fair use of the trademark, etc.]. 

            [Unless the defendant proves by a preponderance of the evidence that [insert § 1115(b) defense[s] raised by defendant, e.g., that the trademark was abandoned], you must consider the trademark to be conclusively proved as [[valid] [and][owned by the plaintiff]].  However, if the defendant shows that [insert § 1115(b) defense[s] raised, e.g., the trademark was abandoned] by a preponderance of the evidence, then the facts stated in the certificate [summarize certificate entries disputed by defendant’s proof] are no longer conclusively presumed to be correct.  [You should then consider whether all of the evidence admitted in this case, in addition to this certificate of registration, shows by a preponderance of the evidence that the trademark is [[valid] [and] [owned by the plaintiff]], as I explain in Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6]. 

Comment 

           Use this instruction when the plaintiff relies on registration of the mark to show two elements of the plaintiff’s burden: ownership and validity. See Instruction 15.6 (Infringement–Elements and Burden of Proof–Trademark). This instruction is a model for any case involving an incontestable trademark in which the defendant introduces a defense or exception under 15 U.S.C. § 1115(b). If other types of registration are at issue in the case, modification should be made as indicated in the supplementary section of these comments, below. Modify this instruction as necessary in any case involving service marks, trade dress, collective trade or service marks, or certification trade or service marks, by inserting such terms in lieu of the word “trademark” in this instruction. 

            See 15 U.S.C. § 1115(b). When a trademark has been registered, the defendant has the burden of proving that its registration is defective or subject to a defense. The defendant must show such defect or defense by a preponderance of the evidence. See Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219-20 (9th Cir. 1996) (noting that registrant is granted presumption of ownership under the Lanham Act and “challenger must overcome this presumption by a preponderance of the evidence”); Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775-76 (9th Cir. 1981) (noting that presumption of validity of registered mark must be overcome by preponderance of the evidence); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002) (“Validity… is a threshold issue. On this point, the plaintiff in an infringement action with a registered mark is given the prima facie or presumptive advantage on the issue of validity, thus shifting the burden of production to the defendant to prove otherwise … Or, to put it as we did in Vuitton, the defendant then bears the burden with respect to invalidity. Once the presumption of validity is overcome, however, the mark’s registration is merely evidence ‘of registration,’ nothing more. This approach can be characterized as rebutting the prima facie case or ‘piercing the presumption.’”) (summary judgment case).  See also Social Techs. v. Apple, 4 F.4th 811, 821-22 (9th Cir. 2021) (discussing petition to cancel registration). 

Incontestability  

            This instruction treats the issue of incontestability as determined. When registered more than five years and if certain statutory formalities are met (e.g., timely filed affidavit of continuous use), a registration is considered “incontestable” evidence of the registrant’s right to use the mark. 15 U.S.C. § 1065. It is considered conclusive evidence of the validity of the registered mark as well as the registrant’s ownership. 15 U.S.C. § 1115(b). The “validity and legal protectability, as well as the [registrant’s] ownership therein, are all conclusively presumed,” when a mark’s registration becomes incontestable, subject to certain defenses. Brookfield Commc’ns Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1046-47 n.10 (9th Cir. 1999).  

            On the other hand, if the mark has been registered less than five years, it is considered “contestable” and provides only prima facie evidence of the validity and ownership of the mark, subject to any limitations stated in the registration. 15 U.S.C. §§ 1057(b) & 1115(a). See Applied Info. Sci. Corp. v. eBAY, Inc., 511 F.3d 966, 971 (9th Cir. 2007) (holding that plaintiff could not rely on mark’s registration for pants as applying to its use in shirt market).  

            If the judge decides to place the issue of contestability before the jury, the following paragraph should be added in lieu of the fifth paragraph:  

[Unless the defendant proves by a preponderance of the evidence that [insert § 1115(b) defense[s] raised by defendant, e.g., that the mark was abandoned], you must consider the trademark to be conclusively proved as [[valid] [and] [owned by the plaintiff]], [if the mark has been in continuous use for five consecutive years after the date of registration in the certificate and other statutory formalities have been observed]. However, if the defendant shows that [insert § 1115(b) defense[s] raised, e.g., that the mark was abandoned] by a preponderance of the evidence, then the facts stated in the certificate [summarize certificate entries disputed by defendant’s proof] are no longer conclusively presumed to be correct. [You should then consider whether all of the evidence admitted in this case, in addition to this certificate of registration, shows by a preponderance of the evidence that the mark is [[valid] [and] [owned by the plaintiff]], as I explain in Instruction] [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6].]  

            If the plaintiff is not the registrant of the mark, but a successor to the registrant, this instruction should be modified to explain the plaintiff’s claim of ownership of the mark, e.g., through assignment, exclusive license, etc. See, e.g., Instructions 15.15 (Trademark Ownership—Assignee); 15.16 (Trademark Ownership—Licensee); 15.17 (Trademark Ownership—Merchant or Distributor).  

            If the defendant’s proof of an exception or defense to incontestability includes the same elements as a defense to infringement, the last paragraph of the instruction should be modified so that if the jury finds the defense or exception to incontestability true by a preponderance of the evidence, the defendant is entitled to a verdict on the infringement charge.  

            Incontestable Marks: If registered more than five years and if certain statutory formalities are met (e.g., timely filed affidavit of continuous use), the registration is considered “incontestable” evidence of the registrant’s right to use the mark. See 15 U.S.C.§ 1065. It is considered conclusive evidence of the validity of the registered mark as well as the registrant’s ownership. See 15 U.S.C.§ 1115(b). Although a mark may become incontestable, it is still subject to certain defenses or defects, set forth in 15 U.S.C. § 1115.  6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:147 (5th ed. 2019). McCarthy suggests that there are at least twenty-one exceptions to incontestability provided in 15 U.S.C. §§ 1115(b), 1065 and 1064. Id. The most frequently asserted exceptions include (1) fraud in obtaining the registration or incontestable status; (2) abandonment; (3) use of the mark to misrepresent source; (4) fair use of the mark; (5) limited territorial defense by a junior user; (6) prior registration by the defendant; (7) use of mark to violate federal antitrust law; (8) the mark is functional; and (9) equitable defenses, such as laches, estoppel and acquiescence. See 15 U.S.C. § 1115(b). See also 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:149 (5th ed. 2019).  

            Incontestability Exceptions and Defenses: If one of the exceptions to incontestable registration is proven, the registration is no longer conclusive but merely prima facie evidence of the registrant’s right to ownership and the mark’s validity (i.e., it becomes simply a contestable registration). See 15 U.S.C. § 1115(b). See also Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 199 n.6 (1985). Accordingly, the fact-finder must still consider whether the defendant has met the defendant’s burden of showing by a preponderance of the evidence that the mark is not valid or that the plaintiff does not own it. See 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:153 (5th ed. 2019). Similarly, if the defendant asserts and presents sufficient proof of an exception or defense to incontestability, the court will have to instruct the jury on the elements of these exceptions or defenses. As a practical matter, proof of an “exception to incontestability” may be sufficient to prove a defense to infringement as well.  

           Contestable Marks: The effect of a contestable registration is to shift the burden of proof of ownership and validity from the plaintiff to the defendant. The defendant must rebut the presumption of plaintiff’s exclusive right to use the trademark by a preponderance of the evidence. See Vuitton et Fils S.A., 644 F.2d at 775; Maktab Tarighe Oveyssi Shah Maghsoudi v. Kianfar, 179 F.3d 1244, 1249 (9th Cir. 1999) (noting that registration of mark constitutes prima facie evidence that registrant owns mark and is constructive notice of claimed ownership of mark by registrant).  

Other Registration Issues  

            Use this instruction in any case involving an incontestable trademark in which the defendant introduces a defense or exception under 15 U.S.C. § 1115(b). If other types of registration are at issue in the case, modification to the instruction should be made as follows:  

            A. Disputed Incontestable Registration: When the defendant disputes the incontestability of a trademark, use this instruction.  

            B. Disputed Contestable Registration: When a trademark registration is still contestable because the trademark has not been in continuous use for five consecutive years after the date of registration under 15 U.S.C. § 1065, substitute the following after the third paragraph of this instruction, if the defendant disputes the facts stated in the registration certificate:  

The law presumes that the facts noted in the certificate are true, that is that [summarize certificate entries as to validity and ownership of trademark, as well as limitations on the registration]. But this presumption can be overcome by sufficient evidence to the contrary. Here, the defendant has presented evidence that [summarize defendant’s contentions, e.g., that the trademark was abandoned, the registration was fraudulently obtained, etc.]. If the defendant can show this evidence by a preponderance of the evidence, then you cannot rely on the registration as stating the truth of the matters contained therein.  

            C. Undisputed Incontestable Registration: When defendant does not dispute an incontestable trademark, substitute the following paragraph in lieu of the fourth and fifth paragraphs of this instruction:  

In this case, there is no dispute that the plaintiff received a registration for the trademark [identify the trademark] and this registration is now “incontestable” under the trademark laws. This means that the plaintiff’s registration of the trademark is conclusive evidence of plaintiff’s ownership of that trademark and that the trademark is valid and protectable. [I instruct you that for purposes of Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6], you must find that the plaintiff owned the trademark and that the trademark was valid and protectable.]  

            D. Undisputed Contestable Registration: When a trademark registration is still “contestable” because the trademark has not been in continuous use for five consecutive years after the date of registration under 15 U.S.C. § 1065, but the defendant does not dispute the facts stated in the contestable registration certificate, substitute the following after the first and second paragraphs of this instruction:  

The law presumes that the facts noted in the certificate are true. This means you must find that the plaintiff owned the trademark and that the trademark was valid and protectable as indicated by the registration certificate.  

Revised June 2024

            [Describe plaintiff’s alleged trademark] is not registered.  Unregistered trademarks can be valid and provide the trademark owner with the exclusive right to use that mark.  Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6] requires the plaintiff to prove by a preponderance of the evidence that [describe plaintiff’s alleged trademark] is valid.  A valid trademark is a [word, name, symbol, device, or any combination of these items] that is either: 

(1)         inherently distinctive; or 

(2)         descriptive but has acquired a secondary meaning. 

            [Only a valid trademark can be infringed.] [Only if you determine plaintiff proved by a preponderance of the evidence that the [describe plaintiff’s alleged trademark] is a valid trademark should you consider whether plaintiff owns it or whether defendant’s actions infringed it.] 

            Only if you determine that [describe plaintiff’s alleged trademark] is not inherently distinctive should you consider whether it is descriptive but became distinctive through the development of secondary meaning, as I will direct in Instruction [insert number of instruction regarding Distinctiveness and Secondary Meaning, e.g., 15.11]. 

Comment 

             A trademark is valid only if it is inherently distinctive or if it became distinctive through development of secondary meaning. Two Pesos, Inc. v. Taco Cabana, Int’l Inc., 932 F.2d 1113 (5th Cir. 1991), aff’d, 505 U.S. 763, 769 (1992). Whether a symbol acquired secondary meaning is a question of fact for the jury.  See Transgo, Inc. v. Ajac Transmissions Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985).

             In trademark law, the Supreme Court has noted that using the term “secondary meaning” when referring to descriptive non-word marks that have acquired “source-identifying meaning” “is often a misnomer in that context, since non-word marks ordinarily have no ‘primary’ meaning” and “[c]larity might well be served by using the term ‘acquired meaning’ in both the word-mark and the non-word-mark contexts.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 n.* (2000). However, the Ninth Circuit continues to use the term “secondary meaning.” See Jason Scott Collection, Inc. v. Trendily Furniture, LLC, 68 F.4th 1203, 1212 (9th Cir. 2023) (“To obtain a judgment for trade dress infringement, a plaintiff must prove: (1) that its claimed trade dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (citation omitted)); P & P Imps. LLC v. Johnson Enters., LLC, 46 F.4th 953, 958 (9th Cir. 2022) (enumerating elements for trade dress infringement as “(1) the trade dress is nonfunctional, (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between [the parties’] products.” (citation omitted)). If using the term “acquired meaning” would provide clarity for the jury in trademark cases involving non-word marks, the court may opt to use “acquired meaning” throughout its instructions in place of or in addition to “secondary meaning.” 

            See also Instruction 15.11 (Infringement—Elements—Validity—Distinctiveness— Secondary Meaning).

Revised June 2024

             In deciding whether there is infringement, an important factor is how strong and well-known a trademark is. [See Instruction insert number of instruction regarding Sleekcraft Test, e.g., 15.18 for determining whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark].] 

             The plaintiff asserts [insert claimed trademark] is a valid and protectable trademark for its [insert goods used in connection with the trademark].  [The plaintiff contends that the defendant’s use of [those] [similar] words in connection with the defendant’s [insert the defendant’s product or service or business] [[infringes plaintiff’s trademark] [and] [is likely to cause confusion about the [origin of goods] [business] associated with that trademark.]] To determine if the plaintiff has met its burden of showing that [insert claimed trademark] is a valid trademark, you should classify it on the spectrum of trademark distinctiveness that I will explain in this instruction. 

            [An inherently distinctive trademark is a word, symbol or device, or combination of them, which intrinsically identifies a particular source of a good in the market.  The law assumes that an inherently distinctive trademark is one that almost automatically tells a consumer that it refers to a brand or a source for a product, and that consumers will be predisposed to equate the trademark with the source of a product.]

Spectrum of Marks 

            Trademark law provides [great] protection to distinctive or strong trademarks. Conversely, trademarks that are not as distinctive or strong are called “weak” trademarks and receive less protection from infringing uses. Trademarks that are not distinctive are not entitled to any trademark protection. To decide trademark protectability you must consider whether a trademark is inherently distinctive. Trademarks are grouped into five categories according to their relative [strength] [distinctiveness]. These five categories are, in order of strength or distinctiveness: arbitrary (which is inherently distinctive), fanciful (also inherently distinctive), suggestive (also inherently distinctive), descriptive (which is protected only if it acquires in consumers’ minds a “secondary meaning” which I explain in Instruction [insert number of instruction regarding secondary meaning, e.g., 15.11] and generic names (which are entitled to no protection).  

            Arbitrary Trademarks. The first category is arbitrary trademarks. They are considered strong marks and are automatically protectable. They involve the arbitrary use of a word to designate the source of a product. Such a trademark is a word that in no way describes or has any relevance to the particular product it is meant to identify. It may be a common word used in an unfamiliar way.  

            For instance, the common word “apple” became a strong and inherently distinctive trademark when used by a company to identify the personal computers that company sold.  The company’s use of the word “apple” was arbitrary because “apple” did not describe and was not related to what the computer was, its components, ingredients, quality, or characteristics.  “Apple” was being used in an arbitrary way to designate for consumers that the computer comes from a particular manufacturer or source.  

           Fanciful (or Coined) Trademarks. The next category is fanciful (or coined) trademarks. These trademarks are also inherently distinctive and have the same level of strength as arbitrary marks.  They are therefore automatically protectable.  Fanciful trademarks involve the use of a fanciful or fictitious word to designate the source of a product. Such a trademark is a word that in no way describes or has any relevance to the particular product it is meant to identify.  It is a newly created (coined) word, which is used solely as a trademark.  For instance, the fanciful trademark “Google” is a strong and inherently distinctive trademark, identifying a prominent technology company.  “Google” is a coined word that had no meaning or application prior to its use as the name of this company.  

            Suggestive Trademarks. The third category is suggestive trademarks. These trademarks are inherently distinctive but are considered weaker than arbitrary and fanciful trademarks. Unlike arbitrary trademarks, [which are in no way related to what the product is or its components, quality, or characteristics,] suggestive trademarks imply some characteristic or quality of the product to which they are attached. If the consumer must use imagination or any type of multi-stage reasoning to understand the trademark’s significance, then the trademark does not describe the product’s features, but merely suggests them.  

            A suggestive use of a word involves consumers associating the qualities the word suggests to the product to which the word is attached. For example, when “apple” is used not to indicate a certain company’s computers, but rather “Apple–A–Day” Vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, consumers may come to associate the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple–A–Day” Vitamins.   

            Descriptive Trademarks. The fourth category is descriptive trademarks. These trademarks directly identify or describe some aspect, characteristic, or quality of the product to which they are affixed in a straightforward way that requires no exercise of imagination to be understood.   

            For instance, the word “apple” is descriptive when used in the trademark “CranApple" to designate a cranberry-apple juice. It directly describes ingredients of the juice. Other common types of descriptive trademarks identify where a product comes from, or the name of the person who makes or sells the product. Thus, the words “Apple Valley Juice” affixed to cider from the California town of Apple Valley is a descriptive trademark because it geographically describes where the cider comes from. Similarly, a descriptive trademark can be the personal name of the person who makes or sells the product. So, if a farmer in Apple Valley, Judy Brown, sold her cider under the label “Judy’s Juice” (rather than “Apple Valley Juice”) she is making a descriptive use of her personal name to indicate and describe who produced the apple cider [and she is using her first name as a descriptive trademark.]   

            Generic Names. The fifth and final category is entitled to no protection at all.  They are called generic terms and are the names of a product, as opposed to a term that designates the source of a product. Generic names are part of our common language that we need to identify all such similar products.  A generic name is a name for the product on which it appears.   

            If the primary significance of the alleged mark is to name the type of product rather than the manufacturer, the term is a generic name and cannot be a valid

trademark. If the majority of [relevant] consumers would understand the term to name the type of product rather than the manufacturer, the primary significance of the term is generic and not entitled to protection as a trademark. 

            The word “apple” can be used as a generic name and not be entitled to any trademark protection. This occurs when the word is used to identify the fruit from an apple tree. 

            The computer maker who uses the word “apple” as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against the grocer who used that same word to indicate the fruit sold in a store. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, “apple” is simply a commonly used name for what is being sold. 

Mark Distinctiveness and Validity 

            If you decide that [insert the plaintiff’s claimed trademark] is arbitrary or suggestive, it is considered inherently distinctive. An inherently distinctive trademark is valid and protectable.  

            On the other hand, if you determine that [insert the plaintiff’s claimed trademark] is generic, it cannot be distinctive and therefore is not valid nor protectable. You must render a verdict for the defendant on the charge of infringement in Instruction [insert number of instruction regarding Trademark Elements and Burden of Proof, e.g., 15.6].   

            If you decide that [insert the plaintiff’s claimed trademark] is descriptive, you will not know if the trademark is valid or invalid until you consider whether it has gained distinctiveness by the acquisition of secondary meaning, which I explain in Instruction [insert number of instruction regarding secondary meaning, e.g., 15.11].

Comment 

            This instruction sets forth the first prong of the two-prong test of mark strength used in the Ninth Circuit. The second prong of the test is found in Instruction 15.11 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning). This instruction sets out the general standard for assessing the strength of a trademark. It may require modifications in a case involving service marks, collective trade or service marks, or certification trade or service marks. Often this adjustment is possible by inserting the term service, service mark, collective mark, etc., in lieu of the words “product” and “trademark” in this instruction.    

            While the elements of mark distinctiveness are the same in determining mark validity or likelihood of confusion, use Instruction 15.19 (Infringement—Likelihood of Confusion— Factor—Strength [Distinctiveness] of Trademark) for assessing distinctiveness in the context of alleged infringement of a valid mark; usethis instruction (15.10) if distinctiveness goes to the question of whether a mark can be protected as a valid mark. 

            This instruction is based upon the test in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10-11 (2d Cir.1976) (setting forth spectrum of marks from arbitrary to generic).  The Supreme Court notes this case sets out a “classic test” of trademark strength. Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 210 (2000).  It sets out the traditional spectrum of marks.  See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (“Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation ... they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.”); Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631-32 (9th Cir. 2005) (noting that trademarks are divided into five categories: arbitrary, fanciful, suggestive, descriptive, and generic).  See also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061, 1067 (9th Cir. 2003) (noting that trademark categories of arbitrary and fanciful “are deemed inherently distinctive and are automatically entitled to protection”), vacated on other grounds, 543 U.S. 111 (2004). U.S. Pat. & Trademark Off. v. Booking.com B.V., 140 S. Ct. 2298, 2308 (2020) (rejecting proposition that combining generic term with “.com” yields generic composite). 

            A mark’s strength is equivalent to its distinctiveness.  E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992).  Since 1988, the Ninth Circuit has utilized a two-prong test of mark strength. See GoTo.Com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000) (“‘strength’ of the trademark is evaluated in terms of its conceptual strength and commercial strength”). Generally, use of the second prong is appropriate in cases of descriptive or suggestive marks. See, e.g., Japan Telecom, Inc. v. Japan Telecom Am., Inc., 287 F.3d 866, 873-74 (9th Cir. 2002) (noting that descriptive trade name is not protectable unless owner shows it acquired secondary meaning and applying strength of mark analysis to tradename).   

            Traditionally, the Ninth Circuit has found that even though a mark has become incontestable, this status does not necessarily mean that it is a strong mark. See Miss World (UK) Ltd. v. Mrs. Am. Pageants, 856 F.2d 1445, 1449 (9th Cir. 1988). However, in 2003, the Ninth Circuit appeared to indicate that when a mark has become incontestable, it is presumed to be a strong mark as well. The Circuit noted that “[a] descriptive mark that has become incontestable is conclusively presumed to have acquired secondary meaning. Entrepreneur Media, [Inc. v. Smith,] 279 F.3d [1135, 1142 n.3 (9th Cir. 2002)]. This means that a defendant in a trademark infringement action cannot assert that an incontestable mark is invalid because it is descriptive and lacks secondary meaning. Park ’N Fly, 469 U.S. at 205.” KP Permanent Make-Up, Inc., 328 F.3d at 1071. See id. (holding that trademark’s “incontestable registration is conclusive evidence that the mark is non-descriptive or has acquired secondary meaning, and there is no need to require a showing of secondary meaning” of the mark), vacated on other grounds, 543 U.S. 111 (2004).

Supplemental Instructions 

Trade Dress Adjustments

            In Wal-Mart Stores Inc. v. Samara Brothers, Inc., 529 U.S. 205, 212-13 (2000), the Supreme Court distinguished between two types of trade dress: product packaging and product design. Product packaging can be inherently distinctive, product design trade dress can never be classified as “inherently distinctive.” Id. at 212-14 (noting that product packaging “is most often to identify the source of the product,” while product design is “almost invariably . . . intended not to identify the source, but to render the product itself more useful or more appealing”). To be protected under § 43(a) of the Lanham Act, a product design must have secondary meaning. 

            Wal-Mart requires courts to distinguish between trade dress that is product packaging and trade dress that is product design. Courts generally “use[] a common sense approach” in making that classification, “asking what is the primary product that the buyer is purchasing.” 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:12 (5th ed. 2019) (collecting cases). In close cases, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Wal-Mart Stores, 529 U.S. at 215. See Instruction 15.11 (Infringement—Elements—Validity—Distinctiveness—Secondary Meaning). 

            In cases involving product packaging, neither the Supreme Court nor the Ninth Circuit has adopted a specific test for determining inherent distinctiveness. The Ninth Circuit has generally suggested that inherently distinctive trade dress involves an overall impression that is arbitrary or uncommon. Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987) (“Fuddruckers claims trade dress protection for the impression created by a collection of common or functional elements of restaurant decor. Such an overall impression may receive protection, but it is simply not the sort of arbitrary or uncommon trade dress that might qualify as inherently distinctive.” (citation omitted)). A combination of individual elements “that are separately unprotectable can be protected together as part of a trade dress.” Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1259 (9th Cir. 2001).

            Some courts apply the Abercrombie spectrum for word marks to assess whether product packaging is inherently distinctive. E.g., Fun-Damental Too, Ltd. v. Gemmy Indus., 111 F.3d 993, 1000-01 (2d Cir. 1997) (“We see no reason to abandon the Abercrombie distinctiveness spectrum in this [product packaging] case.”). But courts and scholars have noted that the Abercrombie categories are not always useful outside the word mark context. E.g., Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 243 (5th Cir. 2010) (holding that Abercrombie test was unhelpful in assessing whether star symbol was inherently distinctive but declining to hold that Abercrombie test was never appropriate outside word mark context); McCarthy on Trademarks § 8:13 (“Only in rare cases do the word categories make sense when applied to the shapes, images and colors of product packaging.”). 

            Other courts have used the test announced in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344-46 (C.C.P.A. 1977), either alone or in combination with the Abercrombie categories, to assess whether product packaging is inherently distinctive. E.g., Mattel, Inc. v. MGA Entertainment, Inc., 782 F. Supp. 2d 911, 1004 (C.D. Cal. 2011) (applying Seabrook test and observing that Seabrook test is the “predominant test for inherent distinctiveness” of product packaging); Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 42 (1st Cir. 2001) (“[W]e have found it appropriate to supplement the somewhat bare-boned Abercrombie categories with the questions asked in Seabrook.”). The Seabrook test requires that packaging trade dress meet four elements to be inherently distinctive: (1) the design or shape should not be a common, basic shape or design; (2) it should be unique or unusual in a particular field; (3) it should not be a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services which consumers would view as mere ornamentation; (4) it should create a separate commercial impression apart from any accompanying words. Seabrook Foods, 568 F.2d at 1344-46. But see McCarthy on Trademarks § 8:13 (contending that fourth element does not belong on the list because it does not relate to inherent distinctiveness).           

            This instruction can be modified for trade dress cases involving packaging by inserting the words “trade dress” in lieu of “trademark” and the words “symbol” or “design” in lieu of the term “word” when they are used in this instruction. Courts might also remove references to the “Spectrum of Marks,” including everything that follows the “Spectrum of Marks” heading. After the first three paragraphs, the following should be added for trade dress cases: 

Trade dress is inherently distinctive if the total impression it gives the consumer is one that identifies it as coming from a specific origin or source, whether or not that source is known to the consumer. Inherently distinctive trade dress helps consumers identify the product, distinguishing the plaintiff’s product from that produced by others, such as the defendant. 

You should consider the total visual impression of the trade dress, not each element of it in isolation. Inherently distinctive trade dress often uses common, non-distinctive elements when considered individually. However, it is the combination of elements and the total impression that the dress conveys to the consumer that shows if it is distinctive. 

Revised November 2024

         If you determined in Instruction [insert number of instruction e.g. 15.10] that [identify plaintiff’s claimed trademark] is descriptive, you must consider the recognition that the mark has among prospective consumers in order to determine whether it is valid and protectable even though it is descriptive.  This market recognition is called the trademark’s “secondary meaning.”

            A [word] [name] [symbol] [device] [or any combination of these items] acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective consumers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is.  You must find that the preponderance of the evidence shows that a significant number of the consuming public associates the [identify the alleged trademark] with a single source, to find that it has acquired secondary meaning. 

            When you are determining whether [describe symbol or term] has acquired a secondary meaning, consider the following factors: 

            (1)        Consumer Perception.  Whether the people who purchase the product that bears the
                         claimed trademark associate the trademark with the [[owner] [assignee] [licensee]];

            (2)        Advertisement.  To what degree and in what manner the [[owner] [assignee] [licensee]] may have
                         advertised under the claimed trademark;

            (3)        Demonstrated Utility.  Whether the [[owner] [assignee] [licensee]] successfully used this trademark
                         to increase the sales of its product;

            (4)        Extent of Use.  The length of time and manner in which the [[owner] [assignee] [licensee]] used the
                         claimed trademark;

             (5)       Exclusivity.  Whether the [[owner’ s] [assignee’ s] [licensee’ s]] use of the claimed trademark was
                         exclusive;

            (6)        Copying.  Whether the defendant intentionally copied the [[owner’ s] [assignee’s] [licensee’ s]]
                         trademark;

            (7)        Actual Confusion.  Whether the defendant’s use of the plaintiff’s trademark has led to actual
                         confusion among a significant number of consumers; and

             (8)        [Insert any other factors that bear on secondary meaning] 

            Descriptive marks are protectable only to the extent you find they acquired distinctiveness [[through secondary meaning] [by the public coming to associate the mark with the [owner of the mark] [a particular source]]]. Descriptive marks are entitled to protection only as broad as the secondary meaning they have acquired, if any. If they have acquired no secondary meaning, they are entitled to no protection and cannot be considered a valid mark. 

            [The plaintiff has the burden of proving that the [identify plaintiff’s trademark] has acquired a secondary meaning.] [The defendant has the burden of proving that the [identify plaintiff’s trademark] lacks a secondary meaning.] 

            The mere fact that the plaintiff is using [describe symbol or term], or that the plaintiff began using it before the defendant, does not mean that the trademark has acquired secondary meaning. There is no particular length of time that a trademark must be used before it acquires a secondary meaning. 

Comment 

            The test for secondary meaning is the same whether for product configuration or trade dress or trademark cases. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 876 n. 6 (9th Cir. 1999).  The penultimate paragraph to this instruction specifies two different burdens of persuasion as to secondary meaning.  The burden is on the plaintiff if the mark is not registered, in which case part of the plaintiff’s burden is to show the mark is distinctive (either by being inherently distinctive or by having acquired secondary meaning), and hence protectable.  See Self–Realization Fellowship Church v. Ananda, 59 F.3d 902, 910-12 (9th Cir. 1995) (finding that plaintiff’s unregistered mark was descriptive and lacked secondary meaning, and therefore, was invalid).  See also Filipino Yellow Pages. v. Asian J. Publ’ns, 198 F.3d 1143, 1151-52 (9th Cir. 1999). On the other hand, if the mark is validly registered but has not yet attained incontestable status, the plaintiff’s registration carries a presumption of secondary meaning, because registered marks are presumed distinctive. Americana Trading, Inc., v. Russ Berrie & Co., 966 F.2d 1284, 1287 (9th Cir. 1992). In that case, if the defendant wishes to argue that the plaintiff’s mark was weak (e.g., was descriptive) and not entitled to trademark protection, the burden is on the defendant to prove that secondary meaning has not attached. Id. 

            Failure to list actual confusion as one of the factors the jury should consider in determining whether the plaintiff had established secondary meaning is not harmless error. See Adray v. Adry-Mart, Inc., 76 F.3d 984, 987 (9th Cir. 1995). See also Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 822-23 (9th Cir. 1996) (“Factors considered in determining whether a secondary meaning has been achieved include: (1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive.” (citation omitted)). 

Secondary meaning can be proved in a variety of ways, including “direct consumer testimony; survey evidence; exclusivity, manner, and length of use of mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant.” P & P Imps. LLC v. Johnson Enters., LLC, 46 F.4th 953, 961 (9th Cir. 2022). Because “[t]here is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence,” Audio Fid., Inc. v. High Fid. Recordings, Inc., 283 F.2d 551, 558 (9th Cir. 1960), “[p]roof of copying strongly supports an inference of secondary meaning,” P & P Imps. LLC,  46 F.4that 961.  The plaintiff does not have to prove that the defendant intended to confuse consumers and pass off its products as the plaintiffs to raise such an inference.  Secondary meaning can also be established by evidence of a likelihood of confusion.  Id.  Evidence of retailer confusion may be appropriate when a market involves specialized distributors that leads to retailers functionally operating as consumers. Jason Scott Collection, Inc. v. Trendily Furniture, LLC, 68 F.4th 1203, 1217 (9th Cir. 2023).

            When a mark is not in the public domain, a showing of secondary meaning requires a mark to be associated in common thought, not merely with the thing produced, but with the source or origin of the production, even if anonymous.  See Maljack Prods. v. Goodtimes Home Video Corp., 81 F.3d 881, 887 (9th Cir. 1996) (holding that when movie title is not in public domain, showing of secondary meaning only requires proof that public associates movie title with single source, even if anonymous); Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1095-96 (9th Cir. 2004) (“Secondary meaning refers to a mark’s actual ability to trigger in consumers’ minds a link between a product or service and the source of that product or service. That is, a mark has secondary meaning ‘when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.’ Determining whether a mark has secondary meaning requires taking into account at least seven considerations”) (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000)).  This rule also applies in trade dress infringement cases. See P & P Imps. LLC, 46 F.4th at 960 (holding with respect to trade dress that “[s]econdary meaning exists when in the minds of the public, the primary significance of [the trade dress] is to identify the source of the product rather thanthe product itself,” and this requirement is satisfied by evidence establishing “association with only a single—even anonymous—source” (internal quotationmarks omitted)). 

“While evidence of a manufacturer’s sales, advertising and promotional activities may be relevant in determining secondary meaning, the true test of secondary meaning is the effectiveness of this effort to create it. ” International Jensen v. Metrosound U.S.A., 4 F.3d 819, 824-25 (9th Cir. 1993) (citation omitted).  The Ninth Circuit has said that when a descriptive mark is especially weak, “we require a ‘strong showing of strong secondary meaning.’” Japan Telecom, Inc., 287 F.3d at 873 (citations omitted).

            Regarding how a descriptive word acquires a secondary meaning, the following text may be added to the second paragraph of this instruction:
 

Only if a descriptive word acquires secondary meaning will the law protect it as a trademark. For instance, the words a business might use for its special oil change service, “10-Minute Oil Change,” are descriptive when used in connection with this service because it literally describes a feature or attribute of the product or service available there.  However, over time, the consuming public may come to associate those four words with a service offered only by that particular garage.  The words would no longer designate their original ordinary, descriptive meaning.  Instead the words have taken on a new, “secondary” meaning to identify the particular garage that performs the oil change. 

            “Secondary meaning” may be referred to as “acquired meaning.” See Wal-Mart Stores, Inc., 529 U.S. at 211, n.*. If it is not inherently distinctive, a mark may acquire distinctiveness if it has developed secondary meaning. Id. at 211.  This means the mark’s primary significance in the public mind is to identify the source of the product rather than the product itself. Id. But the term secondary meaning “is often a misnomer,” particularly when applied to non-word marks. Id. “Clarity might well be served by using the term ‘acquired meaning’ in both the word-mark and the non-word mark contexts” rather than the term “secondary meaning.” Id. However, the Ninth Circuit continues to use the term “secondary meaning.” See Jason Scott Collection, Inc. v. Trendily Furniture, LLC, 68 F.4th 1203, 1212 (9th Cir. 2023) (“To obtain a judgment for trade dress infringement, a plaintiff must prove: (1) that its claimed trade dress is nonfunctional; (2) that its claimed dress serves a source-identifying role either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s product or service creates a likelihood of consumer confusion.” (citation omitted)); P & P Imps. LLC v. Johnson Enters., LLC, 46 F.4th 953, 958 (9th Cir. 2022) (enumerating elements for trade dress infringement as “(1) the trade dress is nonfunctional, (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between [the parties’] products.” (citation omitted)). If using the term “acquired meaning” would provide clarity for the jury in trademark cases involving non-word marks, the court may opt to use “acquired meaning” throughout its instructions in place of or in addition to “secondary meaning.” 

Revised June 2024

            For a product’s design to be protected under trademark law, the design must be non-functional. 

            [A product may be functional in either of two ways. They are referred to as “utilitarian functionality” and “aesthetic functionality.”] 

            A claimed trade dress has [utilitarian] functionality if it is essential to the use or purpose of a product or affects its cost or quality.  To determine whether this definition is satisfied, you should consider the following factors: 

            (1)       whether the design yields a utilitarian advantage in how well the product works; 

            (2)       whether alternative designs are available; 

            (3)       whether advertising touts the utilitarian advantages of the design; and 

            (4)       whether the particular design results from a comparatively simple or inexpensive method of manufacture.  

            No one factor is dispositive; all should be weighed together. 

            [A claimed trade dress has aesthetic functionality if it serves an aesthetic purpose wholly independent of any source identifying function, such that the trade dress’s protection under trademark law would impose a significant non-reputation-related competitive disadvantage on its owner’s competitors.  The inquiry is whether, if one seller were given exclusive rights to use the claimed trade dress, other sellers would be forced to use alternative designs that make their products more costly to sell, or for which consumers’ willingness to pay would be lower for reasons having nothing to do with the reputation of any source (e.g., the alternative designs would not have as much intrinsic aesthetic appeal).] 

            [The plaintiff has the burden of proving non-functionality by a preponderance of the evidence [to show that the trade dress is valid and protected from infringement].] 

Comment 

            In Blumenthal Distributing, Inc. v. Herman Miller, Inc., 963 F.3d 859 (9th Cir. 2020), the Ninth Circuit rejected a portion of an earlier version of this model instruction.  Accordingly, this instruction has been completely revised to reflect the holding in that case.  Also, the district court should consider modifying this instruction if only utilitarian or aesthetic functionality is at issue, and not both. 

            It is reversible error to fail to give an instruction defining non-functionality in a trade dress case.  Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 842-43 (9th Cir. 1987). Functionality is a question of fact.  Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989). 

            “The relationship between trademark protection and functionality is well established: ‘The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional.” Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 782 (9th Cir. 2002).  For a description of the four-factor test of functionality, see Disc Gold Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006-09 (9th Cir. 1998). See also Int'l Jensen v. Metrosound U.S.A., 4 F.3d 819, 822-23 (9th Cir. 1993) (setting forth a three-factor test); Talking Rain Beverage Co. Inc. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (applying four factor test from Disc Gold).  The definition of functionality is reflected in TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001) (referring to the “traditional rule” set forth in Inwood  Lab’ys, Inc. v. Ives  Lab’ys, Inc., 456 U.S. 844, 850 n. 10 (1982)). 

            The plaintiff asserting infringement of unregistered trade dress has the burden of proving nonfunctionality. 15 U.S.C. § 1125(a)(3) (“In a civil action for trade dress infringement … for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.”). Because registration is prima facie evidence of validity, the defendant has the burden of proving functionality when the trade dress in question is registered on the principal register. Vuitton Et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 775 (9th Cir. 1981) (with functionality at issue, explaining that, “under the Lanham Act, registration and entry of a trademark on the Principal Register … shifts the burden of proof from the plaintiff, who would have to establish his right to exclusive use in a common law infringement action, to the defendant, who must introduce sufficient evidence to rebut the presumption of plaintiff's right to such protected use”); 15 U.S.C. § 1115(a) (providing that any registration issued under the Act “shall be prima facie evidence of registrant's exclusive right to use the registered mark in commerce”). Functionality is an issue of fact. Vuitton Et Fils S.A., 644 F.2d at 775. 

            In the Ninth Circuit, the plaintiff bears the burden of proving nonfunctionality. See Sega Enters. Ltd., v. Accolade, Inc., 977 F.2d 1510, 1530-31 (9th Cir. 1992) (holding that nonfunctionality is question of fact, which plaintiff bears burden of proving); 15 U.S.C. § 1125(a)(3) (“In a civil action for trade dress infringement … for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.”). However, in some circuits, functionality is treated as an affirmative defense. See, e.g., Vaughan Mfg. Co. v. Brikam Int’l, 814 F.2d 346, 349 (7th Cir. 1987); Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987). 

              “[I]f exclusive use of a feature would put competitors at a significant non-reputation-related disadvantage, the feature in general terms is functional.”  Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165 (1995).  See also Inwood Lab’ys, Inc.., 456 U.S. at 850 n.10 (“In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”); Vuitton et Fils S.A.v. J. Young Enters., 644 F.2d 769, 774 (9th Cir. 1981) (“Functional features of a product are features ‘which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.”’) (quoting Int’l Ord. of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980)). 

            Functionality usually arises in cases of non-word symbols or devices, such as designs or container shapes. In the Ninth Circuit, functionality involves measuring the effect of a design or physical detail in the marketplace. A functional design has aesthetic appeal, or increases the utility or practicality of the product, or saves the consumer or producer time or money.  See Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890 (9th Cir. 1983); TrafFix Devices, Inc., 532 U.S. at 29–30 (noting that it is a “well-established rule that trade dress protection may not be claimed for product features that are functional” and that a prior patent for features claimed as trade dress can be “strong evidence” of functionality which adds “great weight to the statutory presumption” that trade dress features “are deemed functional until proved otherwise by the party seeking trade dress protection” and who will carry a “heavy burden” of showing that the feature “is merely an ornamental, incidental, or arbitrary aspect” of the trade dress rather than functional to the trade dress). 

            If features of claimed trade dress are all functional, plaintiff must show that the features are combined in a nonfunctional way to avoid finding of functionality. HWE, Inc. v. JB Rsch., Inc., 993 F.2d 694, 696 (9th Cir. 1993). 

            On the trademark registration of trade dress and its implications for infringement litigation, see Tie Tech, Inc., 296 F.3d at 782-83. 

Revised November 2024

            The law entitles the trademark owner to exclude others from using that trademark.  A person acquires the right to exclude others from using a trademark by lawfully using it first in the marketplace or by lawfully using it before the alleged infringer.  [A person also acquires the right to exclude others from using a trademark if industry or public usage creates, for a majority of [relevant] consumers, an association between the person and the mark prior to the alleged infringer’s use.] 

            [If you find the plaintiff’s [describe trademark] to be valid [that is, inherently distinctive] you must consider whether the plaintiff used the [describe trademark] as a trademark for plaintiff’s [identify the plaintiff’s product] before the defendant began to use the [describe trademark] to market its [identify the defendant’s product] in the area where the plaintiff sells its [identify the plaintiff’s product].] 

            [A trademark is “used” for purposes of this instruction when it is transported or sold in commerce and the trademark is attached to the product, or placed on its label or container [or if that is not practical, placed on documents associated with the goods or their sale].] 

            [If the plaintiff has not shown by a preponderance of the evidence that the plaintiff used [describe trademark] before the defendant, then you cannot conclude that the plaintiff is the owner of the trademark [for purposes of Instruction [insert number of instruction regarding Infringement—Elements—Presumed Validity and Ownership—Registered Marks, e.g., 15.8].] 

Comment            

            This instruction is for use in a case involving an inherently distinctive mark. It reflects the traditional concept that trademark rights belong to the party who first makes an actual use of the trademark in business. See Rolley v. Younghusband, 204 F.2d 209 (9th Cir. 1953). However, if the trademark at issue is not inherently distinctive (but its validity was shown by proof of it acquiring secondary meaning), this instruction is not appropriate. In such a case, priority is established by the party who first uses the mark with secondary meaning. Accordingly, the plaintiff must prove the existence of secondary meaning in its trademark at the time and place that the junior user first began use of that mark. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970). 

In trademark law, the standard test of ownership is priority of use. See Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). “To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” Id. A person also acquires the right to exclude others from using a trademark if a person acquires a “constructive use date” under 15 U.S.C. § 1051, or an “extension of protection” under 15 U.S.C. § 1141. Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228, 1237-38 (9th Cir. 2022). The test of ownership is different if a person acquires a right to exclude under either of those statutes. See id. 

Sometimes, mark ownership is a jury question.  When the jury is to determine the ownership of a mark between manufacturer and distributor, see Sengoku Works Ltd., 96 F.3d at 1219 (reviewing jury instructions and factors for determining such mark ownership). See Comment following Instruction 15.17 (Trademark Ownership—Merchant or Distributor). See also Instruction 15.16 (Trademark Ownership—Licensee). In such a case, this instruction should be revised accordingly. The determination of priority of ownership is a question for the jury when it is a genuine issue of material fact. See Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1093-94, 1098-99, 1106-07 (9th Cir. 2004) (expressing no opinion as to whether evidence presented in case was sufficient as matter of law to establish that mark was famous for application of trademark priority principles). 

            In cases when the validity of the trademark is a result of its acquiring secondary meaning (e.g., a descriptive mark with secondary meaning), add the following in lieu of the third and fourth paragraphs: 

If the plaintiff’s [describe trademark] is not inherently distinctive, but the plaintiff has shown that the trademark is descriptive and that the trademark has acquired secondary meaning, the plaintiff has the burden of showing by a preponderance of the evidence that the plaintiff’s [describe trademark] had gained secondary meaning before the defendant first began to use the [describe trademark]. 

Trademark priority and the right to exclude others from using a trademark depend not merely on first use but on lawful first use. See AK Futures LLC v. Boyd Street Distro, LLC, 35 F.4th 682, 689 (9th Cir. 2022) (citing CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630 (9th Cir. 2007)). However, “illegal activity of insufficient gravity orconnection to a mark’s use in commerce might not defeat an otherwise valid trademark.” Id. 

Under the “Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks,” June 27, 1989, T.I.A.S. No. 03-1102, commonly known as the “Madrid Protocol,” an individual or entity that possesses trademark protection in another country can apply for an extension of protection in the U.S., which will function like trademark registration in the U.S., without requiring use of the mark in U.S. commerce. Lodestar Anstalt, 31 F.4th at 1237–38. Any such applicant will receive protection, even if the applicant is unable to show that it has used the relevant mark in U.S. commerce, so long as the applicant declares a bona fide intent to use the mark in U.S. commerce.  Id. at 1238. However, a failure to file a statement of use in commerce within the applicable time period will result in the cancellation of the extension of protection under 15 U.S.C. § 1141. Id. at 1238.  See 15 U.S.C. § 1127 (defining “commerce” to include “all commerce which may lawfully be regulated by Congress.”).

However, under the Madrid Protocol, an entity or individual with a right of priority will only be entitled to bring an infringement action after it begins actual use (as opposed to mere constructive use) of the mark in question. Id. at 1250. Moreover, that entity or individual will be entitled to bring an infringement action, even if it only began to use the mark after the competing user had already begun to do so. Id. That said, to retain a right of priority, the mark’s use must be a bona fide use and a genuine commercial endeavor, rather than a mere effort to retain rights in the mark. Id. at 1255. And, in order to assert a claim for infringement, the individual with a right of priority would still have to demonstrate the requisite likelihood ofconfusion and prevail against the defendant’s applicable defenses. Id. at 1251. When considering likelihood of confusion, theNinth Circuit has held it is erroneous to adopt a categorical temporal rule that excludes consideration of uses of the trademark made by the seniortrademark holder after the infringer uses the mark. Id. at 1253.

Revised March 2024

            Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users, and the [plaintiff] [defendant] asserts that [his] [her] [other pronoun] mark has priority through the doctrine of “tacking.” Tacking recognizes that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority. 

Tacking is available when the original and revised marks are “legal equivalents” in that they create the same, continuing commercial impression without material differences between them so that consumers would consider them the same mark. In other words, viewing the marks in context and in their entirety, an ordinary purchaser could perceive them as conveying the same idea or meaning. 

Comment 

             The standard for tacking is exceedingly strict and applies only in “exceptionally narrow” circumstances. Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1164 (9th Cir. 2013), aff’d, 574 U.S. 418 (2015). A trademark user may tack the date of the user’s first use of an earlier mark onto a subsequent mark only when “two marks are so similar that consumers generally would regard them as essentially the same.” Id. (quoting Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1048 (9th Cir. 1999)). The standard for tacking is considerably higher than the standard for likelihood of confusion. Id. at 1164-65. For examples of types of marks that have been properly and improperly tacked, see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 17:26-28 (5th ed. 2019). 

Revised March 2024

            The owner of a trademark may [transfer] [sell] [give] to another the owner’s interest in the trademark, that is, the right to exclude others from using the mark. This [transfer] [sale] [gift] is called an assignment, and the person to whom this right is assigned is called an assignee and becomes the owner of the trademark. 

            [The assignment must be in writing and signed.] To be enforceable, the assignment must include the goodwill of the business connected with the mark. 

            An assignee may enforce this right to exclude others from using the trademark in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)]. 

            [The plaintiff is an assignee, who has received an enforceable ownership interest.]

Comment

            “The purpose behind requiring that goodwill accompany the assigned mark is to maintain the continuity of the product or service symbolized by the mark and thereby avoid deceiving or confusing customers.” E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1289 (9th Cir. 1992). Whether goodwill is transferred is a factual issue. Id. 

            A trademark assigned without the underlying goodwill (including a transfer of underlying assets or rights) is sometimes referred to as a trademark “assigned in gross,” which fails to transfer enforceable trademark rights. “The law is well settled that there are no rights in a trademark alone and that no rights can be transferred apart from the business with which the mark has been associated.” Mister Donut of Am., Inc. v. Mr. Donut, Inc., 418 F.2d 838, 842 (9th Cir. 1969). For a discussion of the goodwill requirement, see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 18:2 (5th ed. 2019). 

            In a case brought under the Lanham Act, a signed writing is necessary for an assignment to be valid. 15 U.S.C. § 1060. A signed writing is not required to prove an assignment in a common law trademark infringement claim. McCarthy, supra, § 18:11. 

Revised March 2024

            Although 15 U.S.C. § 1060 requires that assignments of registrations be written, a license can be oral. 

            The Ninth Circuit Court of Appeals has not addressed whether a licensee of a registered mark can bring a trademark infringement lawsuit under § 32 of the Lanham Act. But the plain text of that section and the majority view strongly suggest that a licensee cannot. See15 U.S.C. § 1114(1) (An infringer “shall be liable in a civil action by the registrant.”); 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:3 (5th ed. 2019) (collecting cases). But see Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d 154, 158-59 (1st Cir. 1977) (indicating, in dictum, that licensee would be able to bring trademark infringement claim under § 32 of the Lanham Act if it was an “exclusive licensee”).  

For trademark infringement actions of unregistered marks, a licensee has a right to sue under Section 43(a) of the Lanham Act. See 15 U.S.C. § 1125(a)(1) (allowing for a trademark action “by any person who believes that he or she is likely to be damaged by” trademark infringement).   

For a definition of licensee, see Instruction 15.1 (Preliminary Instruction—Trademark). 

Revised March 2025

            A [merchant] [distributor] may own a trademark that identifies products the [merchant] [distributor] sells even though the products are manufactured by someone else. 

Comment 

              When a dispute arises between a manufacturer and distributor, the courts first look to any agreement between the parties regarding trademark rights. Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1220-21 (9th Cir. 1996). In the absence of an agreement, the manufacturer is presumed to own the trademark. Id. See also Watec Co., Ltd. v. Liu,  403 F.3d 645, 652 (9th Cir. 2005) (noting that, in a case between a foreign manufacturer and a former exclusive American distributor who had an incontestably registered mark in U.S., one issue to consider as to ownership of the mark was whether the parties had entered into a contract that disposed of rights in the mark, and that issue was properly determined by the jury). 

            That presumption—in the absence of an agreement the manufacturer is presumed to own the trademark—can be rebutted. To rebut the presumption, the following factors may be considered: 

(1)       which party invented and first affixed the mark to the product; 

(2)       which party’s name appeared with the trademark; 

(3)       which party maintained the product’s quality and uniformity; 

(4)       which party does the public identify with the product and make complaints to; and 

(5)       which party possesses the goodwill associated with the product. 

            See Sengoku Works Ltd., 96 F.3d at 1220-21, and Premier Dental Prods. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853-54 (3d Cir. 1986). 

Revised March 2024

           The plaintiff asserts that [insert trademark] is a trademark for its goods. The plaintiff contends that the defendant’s use of[insert the defendant’s mark] in connection with the defendant’s [insert the defendant’s product] infringes the plaintiff’s trademark because it is likely to cause confusion. 

You must consider whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the goods bearing one of the marks. 

            I will suggest some factors you should consider. You should not focus on any one factor toresolve whether there was a likelihood of confusion, because you must consider all relevant evidence. As you consider the likelihood of confusion you should examine the following: 

(1)       Strength or Weakness of the Plaintiff’s Mark. The more distinctive the plaintiff’s mark is and the more the consuming public recognizes the plaintiff’s trademark, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark. 

(2)       The Defendant’s Use of the Mark. If the defendant and the plaintiff use their trademarks on the same, related, or complementary kinds of goods, there may be a greater likelihood of confusion about the source of the goods than otherwise. 

(3)       Similarity of the Plaintiff’s and the Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in [appearance] [sound] [or] [meaning], there is a greater chance [that consumers are likely to be confused by the defendant’s use of a mark] [of likelihood of confusion]. [Similarities in appearance, sound or meaning weigh more heavily than differences in finding the marks are similar.] 

(4)       Actual Confusion. If the defendant’s use of the plaintiff’s trademark has led to instances of actual confusion, this strongly suggests a likelihood of confusion. However, actual confusion is not required for a finding of likelihood of confusion. Even if actual confusion did not occur, the defendant’s use of the trademark may still be likely to cause confusion. As you consider whether the trademark used by the defendant creates for consumers a likelihood of confusion with the plaintiff’s trademark, you should weigh any instances of actual confusion against the opportunities for such confusion. If the instances of actual confusion have been relatively frequent, you may find that there has been substantial actual confusion. If, by contrast, there is a very large volume of sales, but only a few isolated instances of actual confusion, you may find that there has not been substantial actual confusion. 

(5)       The Defendant’s Intent. Knowing use by the defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive

benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. On the other hand, even in the absence of proof that the defendant acted knowingly, the use of the plaintiff’s trademark to identify similar goods may indicate a likelihood of confusion. 

(6)       Marketing/Advertising Channels. If the plaintiff’s and the defendant’s goods are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion. 

(7)       Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. They may be less likely to be confused by similarities in the plaintiff’s and the defendant’s trademarks. 

(8)       Product Line Expansion. When the parties’ products differ, you may consider how likely the plaintiff is to begin selling the products for which the defendant is using the plaintiff’s trademark. If there is a strong possibility of expanding into the other party’s market, there is a greater likelihood of confusion. 

            [(9)      Other Factors. Insert any other factors that bear on likelihood of confusion.] 

Comment 

            The Ninth Circuit has often reaffirmed the validity of the eight-factor test from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated in part on other grounds by Mattel, Inc., v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), that is covered in this instruction. See, e.g., Multi Time Mach., Inc. v. Amazon.com, Inc.,  804 F.3d 930, 935 & n.1 (9th Cir. 2015) (“To analyze likelihood of confusion, we utilize the eight-factor test set forth in Sleekcraft. However, ‘[w]e have long cautioned that applying the Sleekcraft test is not like counting beans.’” (quoting One Indus. LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1162 (9th Cir. 2009))). 

            Because the eight likelihood-of-confusion factors identified in Sleekcraft are neither exclusive nor exhaustive, the Committee recommends that the judge instruct only on the factors that are relevant in the case presented to the jury. See Brookfield Commc’ns Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) (“[I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the [Sleekcraft] factors[,] . . .  [which do] not purport to be exhaustive, and non-listed variables may often be quite important.”); Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637, 640 (9th Cir. 1993) (“Because each [Sleekcraft] factor  is not necessarily relevant to every case, this list functions as a guide and is neither exhaustive nor exclusive.” (citation and internal quotation omitted)), abrogated in part on other grounds by Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 (1990). 

            Moreover, the third paragraph in this instruction warns that a jury should not focus on any one factor and to consider all relevant evidence in assessing likelihood of confusion. See Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1052 n.13 (9th Cir. 1998) (elaborating further on instructions on Sleekcraft factors dealing with defendant’s intent to cause confusion and causing actual confusion); Brookfield Commc’ns,174 F.3d at 1054 (“A word of caution: This eight-factor [Sleekcraft] test for likelihood of confusion is pliant. Some factors are much more important than others, and the relative importance of each individual factor will be case-specific.”).

            Although a plaintiff “should not be automatically penalized for failing to present evidence that is not required,” a jury is “free [to] use its common sense and experience when weighing the evidence offered by the parties, including the absence of a survey supporting [the plaintiff’s] position.” BillFloat Inc. v. Collins Cash Inc., 105 F.4th 1269, 1276-77 (9th Cir. 2024) (holding that a district court does not abuse its discretion by declining to instruct the jury, after the defendant offered survey evidence showing the absence of consumer confusion, that the jury “should not draw any inference about the existence or absence of consumer confusion from the fact that Plaintiff did not also offer market survey evidence”). 

            Domain Names. In trademark infringement cases involving domain names, the Ninth Circuit has affirmed the use of an additional instruction indicating that three of the Sleekcraft factors: (i) similarity of plaintiff’s and defendant’s mark; (ii) relatedness of services; and (iii) simultaneous use of the Internet as a marketing channel, otherwise known as the “Internet Troika,” are of greater importance. Internet Specialties W., Inc. v. Milon-Digiorgio Enters., Inc., 559 F.3d 985, 989 (9th Cir. 2009) (holding that law of Ninth Circuit “places greater import on the ‘Internet Troika’ in Internet cases”). 

Relevant Consumer Market. In Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012), the Ninth Circuit assessed the relevant market as it examined one of the Sleekcraft factors—evidence of actual confusion. 683 F.3d at 1214. This instruction does not ask the jury or the court to first define the relevant consumer market before proceeding to the Sleekcraft factors; but see Ironhawk Techs., Inc. v. Dropbox 2 F.4th 1150 (9th Cir. 2021). 

            Counterfeit Marks. There is a presumption of a likelihood of confusion “when the offending mark is a counterfeit mark, or a mark virtually identical to a previously registered mark coupled with the intent to pass off or borrow from established good will.” Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 945 (9th Cir. 2011) (approving instruction). A counterfeit mark is “a counterfeit of a mark that is registered . . . , whether or not the person against whom relief is sought knew such mark was so registered.” Id. (quoting 15 U.S.C. § 1116(d)(1)(B)(i)).

            Reverse Confusion. The Ninth Circuit recognizes two theories of consumer confusion that support a claim of trademark infringement: forward confusion and reverse confusion. Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder. By contrast, reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior mark holder. Reverse confusion is not a separate trademark claim that must be specifically pleaded. Instead, it is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927, 932, 937 (9th Cir. 2017); see also Ironhawk Techs.,2 F.4th at 1165 (“Evidence of actual confusion by consumers is strong evidence of likelihood of confusion.” Nevertheless, “failure to prove instances of actual confusion is not dispositive.” (citations omitted)). 

Revised September 2024

            As I have instructed you, one factor to consider in determining whether the trademark used by the defendant is likely to cause confusion with the plaintiff’s mark is the strength of the plaintiff’s mark.  The strength of the trademark is determined by its distinctiveness and recognition in the marketplace. How strongly the plaintiff’s trademark indicates that the goods or services come from a particular source is an important factor to consider in determining whether the trademark used by the defendant is likely to cause confusion with the plaintiff’s mark.

The Strength of Marks 

            The strength of a trademark is determined by its distinctiveness and recognition in the marketplace. The stronger a mark is, the greater the scope of protection the law provides. Measuring the strength of a trademark requires two steps. 

First, consider its conceptual strength. This is where the mark is placed on the spectrum of distinctiveness of marks. 

Second, consider the trademark’s commercial strength. This is how much marketplace recognition the mark has. 

            Conceptual Strength: What is “conceptual strength?” All trademarks are grouped into two categories: either inherently distinctive or not inherently distinctive. If a mark is inherently distinctive it is immediately protected when first used. If it is not inherently distinctive, to become a legally protected mark, a designation must acquire distinctiveness in consumers’ minds by becoming known as an indication of source of goods or services. The law calls this “secondary meaning.” [See Instruction 15.11 (Infringement—Elements—Validity— Distinctiveness—Secondary Meaning). If the plaintiff’s mark is determined to be inherently distinctive, there will be no need to instruct the jury on acquiring a secondary meaning for the mark.] 

            For determining the conceptual strength of a mark, trademarks are grouped on a spectrum according to the nature of the mark. In the spectrum, there are three categories of word marks that the law regards as being inherently distinctive: arbitrary, fanciful (or coined), and suggestive. Descriptive word marks are regarded as not being inherently distinctive and require a secondary meaning to become a valid trademark. Finally, generic names have no conceptual strength. 

            Arbitrary marks are words that in no way describe or suggest the nature of the goods or services with which they are used. For example, “apple” is a common word, but it does not describe or suggest anything about the nature of “Apple” brand computers or smart phones. It is an arbitrary word when used as a mark on those products. Arbitrary trademarks are regarded as conceptually strong marks. 

            Fanciful (or Coined) marks are words that are created solely to serve as trademarks. For example, “Clorox” and “Exxon” are coined marks for cleaning products and gasoline, respectively. Fanciful trademarks are regarded as conceptually strong marks and are equal to arbitrary marks in conceptual strength. 

            Suggestive word marks are not as conceptually strong as arbitrary or fanciful marks. Suggestive trademarks suggest some characteristic or quality of the goods or services with which they are used. If the consumer must use her imagination or think through a series of steps to understand what the trademark is telling about the product, then the trademark does not directly describe the product’s features, but merely suggests them. For example, the trademark “Tail Wagger” for dog food merely suggests that your dog will like the food. As another example, when “apple” is used in the mark “Apple-A-Day” for vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, it suggests the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple-A-Day” vitamins. 

            Descriptive word marks are not inherently distinctive. These marks directly describe some characteristic, or quality of the goods or services with which they are used in a straightforward way that requires no exercise of imagination. For instance, the word “apple” is descriptive when used in the trademark “Tomapple” to designate a tomato-apple juice. It directly describes one of the ingredients of the juice. 

Generic Names. If the primary significance of an alleged mark is to name the type of product or service on offer, rather than to name the manufacturer or provider, the primary significance of the term is generic, and it cannot be a valid trademark. Such terms are known as generic names. 

The word “apple” can be used as a generic name. This occurs when the word is used to identify the fruit of an apple tree. The computer maker who uses the word “apple” as a trademark to identify its personal computer, or the vitamin maker who uses that word as a trademark on vitamins, has no claim for trademark infringement against a grocer who uses that same word to indicate fruit sold in its stores. As used by the grocer, the word is generic and does not indicate any particular source of the product. As applied to the fruit, “apple” is simply a commonly used name for what is being sold. Generic names have no conceptual strength. 

Commercial Strength: What is “commercial strength?” Not all marks are equally well known. Trademark strength is somewhat like the renown of people. Only a very few people are famous enough to be widely known and recognized around the world. Most people are known and recognized only by a small circle of family and friends. 

            Some trademarks have commercial strength” in the sense they are widely known and recognized. A few trademarks are in the clearly “famous” category. Examples of “famous” marks include “Apple” for computers and smart phones, “Google” for a search engine, “Coca-Cola” for beverages, and “Toyota” for vehicles. Some trademarks have commercial strength only in a certain market niche such as mountain climbing gear, plumbing supplies, or commercial airplane electronics equipment, but relatively weak outside that field. How well known a trademark is determined by actual marketplace recognition, which includes advertising expenditures and number of sales. 

Commercial strength can transform a mark that is not conceptually strong into a strong mark.

Comment 

            These instructions relate to the strength of a trademark in the likelihood of confusion context. For strength of trademark analysis in the context of a mark validity determination, see Instruction 15.10 (Infringement—Elements—Validity—Unregistered Mark—Distinctiveness). Modify this instruction as necessary in any case involving service marks, collective trade or service marks, or certification trade or service marks, by inserting such terms in lieu of the word “trademark.” An adjustment will also be necessary when the mark consists of a designation other than a word, such as an image, package appearance, or the shape of a product. 

            This instruction uses a two-prong test of mark strength. See One Industries, LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1164 (9th Cir. 2009) (noting that after placing mark on spectrum of distinctiveness, “[t]he second step is to determine the strength of this mark in the marketplace”);Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1126-27 (9th Cir. 2014) (“To determine the strength of Pom Wonderful’s ‘POM’ mark, we begin by placing it on the conceptual distinctiveness spectrum …. [W]e next consider whether the ‘POM’ mark has achieved sufficient marketplace recognition to transform it into a strong mark.” (citations omitted)); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:83 (5th ed. 2019). 

            This instruction supplements Instruction 15.18 (Infringement—Elements—Likelihood of Confusion—Factors—Sleekcraft Test) by explaining how one Sleekcraft factor–strength of mark–is determined and describing the traditional spectrum of marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (“Marks are often classified in categories of generally increasing distinctiveness; following the classical formulation  . . . they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.”); SurfvivorMedia, Inc. v. Survivor Prods., 406 F.3d 625, 631-32 (9th Cir. 2005) (noting that trademarks are divided into five categories: arbitrary, fanciful, suggestive, descriptive, and generic); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 (9th Cir. 1992) (holding that strength of mark is determined by its placement on continuum of marks from “generic,” afforded no protection; through “descriptive” or “suggestive,” given moderate protection; to “arbitrary” or “fanciful,” awarded maximum protection). See also U.S. Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2307-08 (2020) (rejecting proposition that combining generic term with “.com” yields generic composite). 

            The examples of the multiple uses of the word “apple” given in this instruction when used on a variety of different products are from 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:71 (5th ed. 2019). 

Commercial strength takes into account a mark’s “actual marketplace recognition.” See Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1034-35 (9th Cir. 2010) (observing that advertising expenditures, number of sales of shoes, and placement in a variety of popular magazines supported a finding of commercial strength). 

For evaluating the strength of a mark in reverse confusion cases, the questions are “whether consumers doing business with the senior user might mistakenly believe that they are dealing with the junior user” and what the conceptual strength of the senior mark is compared to the commercial strength of the junior mark. Ironhawk Techs., Inc. v. Dropbox, Inc.,2 F.4th 1150, 1162 (9th Cir. 2021) (quoting JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1107 (9th Cir. 2016)). 

Revised March 2024

The defendant’s work, [insert name of allegedly infringing work], is an expressive work that is protected by the First Amendment.

Therefore, you may proceed to the likelihood-of-confusion test for trademark infringement only if the plaintiff proves by a preponderance of the evidence that the defendant’s use of the plaintiff’s mark is explicitly misleading as to the source or content of [insert name of allegedly infringing work]. The defendant’s use of the mark is explicitly misleading if it is an explicit indication, overt claim, or explicit misstatement that the [insert name of allegedly infringing work] is sponsored by or somehow associated with the plaintiff.

Comment 

            This instruction concerns the Ninth Circuit’s adoption of the Second Circuit’s Rogers test, see Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which applies to cases involving “expressive works,” Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018), and “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function,” Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 154 (2023). “[P]recedents applying Rogers were borne of the idea that some trademarks have expressive value and that in those situations, trademark law’s traditional likelihood-of-confusion test ‘fails to account for the full weight of the public’s interest in free expression.’” Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022, 1027-28 (9th Cir. 2024) (quoting Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002)). If Rogers applies to an allegedly infringing mark, “it often precludes claims of trademark infringement.”Id. at 1028.

When faced with a Rogers-test challenge by a defendant, the court must make two threshold determinations. First, the court must determine if the alleged infringing trademark is used “at least in part” as a trademark. Jack Daniel’s, 599 U.S. at 155-56 (holding that where the alleged infringing mark is used as a trademark, meaning “to identify or brand [a defendant’s] goods or services,” the Rogers test is not to be applied, even if the use is also expressive). That determination is informed by looking at the context in which the alleged infringing mark is being used, including “the way the product is marketed.” Id. at 160; see also Punchbowl, 90 F.4th at 1031 (stating that, because the alleged infringer had filed trademark applications to register its mark and used its mark to identify and distinguish its new products, it was using its mark to “designate the source of its own goods—in other words, has used a trademark as a trademark.” (quoting Jack Daniel’s, 599 U.S. at 145)).  Trademark use may require factual findings made by jury. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 3:4 (5th ed. 2019) (“The key question is whether, as actually used, the designation is likely to be recognized … as an indication of origin for this particular product or service.”).

Second, if the alleged infringing mark is not used as a trademark, the court must determine if the defendant met its burden by showing that “its allegedly infringing use is part of an expressive work protected by the First Amendment.” Punchbowl, 90 F.4th 1022, 1028; Twentieth Century Fox Television v. Empire Distrib., 875 F.3d 1192, 1196 (9th Cir. 2017) (noting that whether a mark is an expressive work is a legal question); Punchbowl, 90 F.4th at 1031 (observing that, because Jack Daniel’s was confined to a “narrow” point of law (that is, Rogers does not apply when a mark is used as a mark), “preexisting Ninth Circuit precedent adopting and applying Rogers otherwise remains intact”). A work is expressive if it “is communicating ideas or expressing points of view.” Mattel, 296 F.3d at 900 (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987)). See also Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013) (observing that the Rogers test protects an expressive work even if it is “not the expressive equal of Anna Karenina or Citizen Kane”).

If the alleged infringing mark is not used as a trademark and is an expressive work, the Rogers test tasks the plaintiff with proving that the defendant’s use of the plaintiff’s mark is not artistically relevant to the work or explicitly misleads consumers as to the source or the content of the work. Punchbowl, 90 F.4th at 1028 (citing Gordon, 909 F.3d at 264). Because “the level of artistic relevance of the trademark or other identifying material to the work merely must be above zero,” this instruction assumes that the artistic relevance prong will have been decided by the trial court. See Gordon, 909 F.3d at 269 (noting that “the slightest artistic relevance” will suffice to prove first prong of Rogers test).

If the plaintiff has not met its burden of proving no artistic relevance, then the jury must decide if the alleged infringing mark is explicitly misleading. The defendant’s use of the mark is explicitly misleading only if it explicitly misleads consumers into believing that the plaintiff sponsored or is somehow associated with the allegedly infringing mark. Gordon, 909 F.3d at 270; see also Punchbowl, 90 F.4th at 1028 (observing that to be explicitly misleading, “there must be an explicit indication, overt claim, or explicit misstatement about the source of the work” (citation and internal quotation marks omitted)).

If the plaintiff meets this burden, the plaintiff must proceed to prove trademark infringement under the Lanham Act. See Instructions 15.6, 15.8, 15.9, and 15.8. If the jury finds that the allegedly infringing mark was not explicitly misleading, the trademark infringement claim falls outside the Lanham Act. 

Revised June 2024

            A person is liable for trademark infringement by another if the person intentionally induced another to infringe the trademark. 

           The plaintiff has the burden of proving each of the following by a preponderance of the evidence: 

First, [name of direct infringer] infringed the plaintiff’s trademark; 

Second, the defendant intentionally induced [name of direct infringer] to infringe plaintiff’s trademark; and 

Third, the plaintiff was damaged by the infringement. 

            If you find that the plaintiff has proved all these elements, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant. 

Comment 

            Regarding liability for inducing another to infringe a trademark, see Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 853-54 (1982) (“[I]f a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer is contributorily responsible for any harm done as a result of the deceit [by the direct infringer].”). See also Lockheed Martin Corp. v. Network Sols., Inc., 194 F.3d 980, 983-84 (9th Cir. 1999) (noting that one branch of contributory infringement occurs when defendant “intentionally induces a third party to infringe the plaintiff’s mark”). 

Revised March 2024

            A person is liable for trademark infringement by another if the person [sells] [supplies] [goods] [services] to another knowing or having reason to know that the other person will use the [goods] [services] to infringe the plaintiff’s trademark. 

            The plaintiff has the burden of proving each of the following by a preponderance of the evidence: 

            First, the defendant [sold] [supplied] [goods] [services] to [name of direct infringer]; 

Second, [name of direct infringer] used the [goods] [services] the defendant [sold] [supplied] to infringe the plaintiff’s trademark; 

Third, the defendant knew or had reason to know [name of direct infringer] [would use the goods to infringe the plaintiff’s trademark] [was infringing the plaintiff’s trademark and continued to supply its services]; [and] 

[Fourth, the defendant providing the services to [name of direct infringer] had direct control and monitoring of the instrumentality used by [name of direct infringer] to infringe; and] 

[Fourth] [Fifth], the plaintiff was damaged by the infringement. 

            If you find that the plaintiff has proved all these elements, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant. 

Comment 

            See Comment following Instruction 15.20 (Derivative Liability—Inducing Infringement) and4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25.17 (5th ed. 2019) (discussing contributory infringement). 

            Regarding the elements of contributory infringement, see Lockheed Martin Corp. v. Network Sols., Inc., 194 F.3d 980, 984-85 (9th Cir. 1999) (discussing elements of contributory infringement); Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 712-13 (9th Cir. 1999) (discussing intent element of contributory infringement). See also Mini Maid Servs. Co. v. Maid Brigade Sys., 967 F.2d 1516, 1521 (11th Cir.1992) (noting that although Inwood Labs. Inc. v. Ives Labs., Inc.,456 U.S. 844 (1982), involved relationship between manufacturers and retailers, its analysis is equally applicable to relationship between franchisor and franchisees). 

Willful Blindness. A party meets the “knows or has reason to know” standard for contributory infringement if it is willfully blind to the infringement by a direct infringer. Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995, 1001 (9th Cir. 2023) (citing Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 265 (9th Cir. 1996)), cert. denied, (U.S. Feb. 20, 2024). Willful blindness requires both subjective belief that trademark infringement was likely occurring and deliberate actions to avoid learning about the infringement. Id. (citing Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068, 1073 (9th Cir. 2013)). Willful blindness also requires more than general awareness of trademark infringement—the defendant must have specific knowledge of infringers or instances of infringement. Id. at 1002 (holding that an online marketplace need not search for trademark infringement on its website because contributory infringement based on a willful blindness theory requires the defendant to be aware of specific instances of infringement or specific infringers). 

            Services. When a defendant provides services to a direct infringer, a plaintiff may prevail on a claim of contributory trademark infringement if the defendant “continued to supply its services to one who it knew or had reason to know was engaging in trademark infringement” and the defendant had “[d]irect control and monitoring of the instrumentality used by a third party to infringe.” Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 942 (9th Cir. 2011) (citation omitted). This applies to defendants providing servers or other Internet services. Id. In addition, there is no requirement that contributory infringement be intentional for liability to arise; it is sufficient if the defendants provided their services “with actual or constructive knowledge that the users of their services were engaging in trademark infringement.” Id. at 943 (“An express finding of intent is not required.”). 

Statutory Damages. Statutory damages may be awarded against contributory infringers. Id. at 944-45. 

Revised March 2024

            The [owner] [assignee] [licensee] of a trademark cannot exclude others from using the trademark if it has been abandoned.  

            The defendant contends that the trademark has become unenforceable because the [owner] [assignee] [licensee] abandoned it. The defendant has the burden of proving abandonment by [clear and convincing] [a preponderance of the] evidence.  

            The [owner] [assignor] [licensor] of a trademark abandons the right to exclusive use of the trademark when the [owner] [assignor] [licensor] does any one of the following:  

First, discontinues its [good faith] use in the ordinary course of trade, intending not to resume using it;  

Second, [acts] [or] [fails to act] so that the trademark’s [primary significance] [primary meaning] [principal significance] [principal meaning] to prospective consumers has become the [good] itself and not the [producer of the good]; or  

Third, fails to exercise adequate quality control over the [goods] sold under the trademark by a licensee.

Comment 

            Abandonment is defined in 15 U.S.C. § 1127, paragraph 16. See also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 17:18 (5th ed. 2019); Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 938 (9th Cir. 2006) (“[A]bandonment requires complete cessation or discontinuance of trademark use.”). Abandonment “is generally a factual issue.” Id. at 937. As to abandonment by uncontrolled or “naked” licensing, see Barcamerica Int’l USA Trust v. Tyfield Imps., Inc., 289 F.3d 589, 595-96 (9th Cir. 2002).  

            The defendant has the burden of proving abandonment. Evidence of non-use of the mark for three consecutive years is prima facie evidence of abandonment. See 15 U.S.C. § 1127; Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407, 411-12 (9th Cir. 1996) (holding that prima facie showing of abandonment creates only a rebuttable presumption of abandonment). When the defendant proves the necessary consecutive years of non-use, the burden shifts to the plaintiff to go forward with evidence to prove that circumstances do not justify the inference of intent not to resume use. Exxon Corp. v. Humble Expl. Co., 695 F.2d 96, 99 (5th Cir. 1983).  

            No Ninth Circuit case establishes the standard of proof required to prove abandonment as between “clear and convincing” and “preponderance.” See Electro Source, LLC, 458 F.3d at 935 n.2 (noting that defendant, “as the party asserting abandonment, is required to ‘strictly prove’ its claim. . . . We do not need to flesh out the contours of the ‘strict proof’ standard because our resolution of this summary judgment appeal rests on the proper legal construction of § 1127.”) (collecting other “strict proof” cases); Grocery Outlet, Inc. v. Albertson’s Inc., 497 F.3d 949, 951 (9th Cir. 2007) (stating that because appellant waived its challenge to clear and convincing standard, the Ninth Circuit “need not resolve the burden of proof issue”). Except for the Federal Circuit’s view that in inter-partes proceedings before the Trademark Trial and Appeal Board preponderance of the evidence is the standard of proof, “all” courts follow a clear and convincing standard of proof of abandonment. See McCarthy, supra, § 17:12. 

Revised March 2024

            An owner of a registered trademark may not exclude others who began using [that] [a confusingly similar] trademark in a geographic area, without knowledge of the owner’s prior use of [the] [a similar] trademark elsewhere, and before the owner had [applied for registration of the] [registered the] [published the registered] trademark. 

            The defendant contends that defendant has the right to use the trademark within the [specify geographic region] area. 

            The defendant has the burden of proving each of the following by a preponderance of the evidence: 

First, the [defendant] [defendant’s assignor] [defendant’s licensor] continuously used the trademark, without interruption, in [geographic region where defendant claims prior use]; 

Second, the [defendant] [defendant’s assignor] [defendant’s licensor] began using the trademark without knowledge of the plaintiff’s prior use elsewhere; and 

Third, the defendant used the trademark before the plaintiff [applied for registration of the] [registered the] [published the registered] trademark. 

Comment 

            The defendant has the burden of pleading and proving the elements of this defense. See Philip Morris, Inc. v. Imperial Tobacco Co., 251 F. Supp. 362, 379 (E.D. Va. 1965), aff’d, 401 F.2d 179 (4th Cir. 1968); 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:44 (5th ed. 2019). 

            “Continuous” means lack of interruption. See Casual Corner Assocs., Inc. v. Casual Stores of Nev., Inc., 493 F.2d 709, 712 (9th Cir. 1974). The dimensions of the geographic area are a question of fact, determined in terms of the relevant zones of sales, advertising, and reputation as of the date of the plaintiff’s registration. Consol. Freightways Corp. v. Consol. Forwarding, Inc., 156 U.S.P.Q. (BL) 99 (N.D. Ill. 1967); see also Watec Co., Ltd. v. Liu, 403 F.3d 645, 653 (9th Cir. 2005) (approving trial court jury instruction that claimant of senior rights to trademark “must demonstrate that it has sufficient market penetration in a specific locality or localities. Market penetration must consider such factors as the total dollar value of sales, the proportion or percentage of the [trademark] claimants’ sales of trademarked products in relation to the marketplace in the locality in question. The actual doing of business rather than the mere use of a flyer or advertisement is required [f]or the establishment of common-law rights in any locality.”). 

            Even if marks are precisely identical, there may be no infringement if the marks are in different geographic areas.  See Brookfield Commc’ns Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1054 (9th Cir. 1999) (acknowledging that some courts permit the use of identical marks if in distinct geographic area). 

Revised March 2024

            The [owner] [assignee] [licensee] of a trademark cannot exclude others from making a fair use of that trademark. A defendant makes fair use of a mark when the defendant uses it as other than a trademark, to accurately describe the [geographic location] [maker] of the defendant’s own [product] [services]. 

            The defendant contends that it fairly used the trademark to describe the defendant’s [product] [service]. The defendant has the burden of proving its fair use of the mark by a preponderance of the evidence. 

            The defendant makes fair use of a trademark when the defendant: 

First, used the mark [other than as a trademark] [other than to distinguish the defendant’s goods from the plaintiff’s and to indicate the source of the defendant’s goods]; 

Second, used the mark fairly and in good faith; and

Third, used the mark only to describe the defendant’s good and services [or their geographic location] as those of the defendant’s [and not at all to describe the plantiff’s product

Comment 

            The Ninth Circuit identifies two types of fair use - classic and nominative. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (“We distinguish two types of fair use: ‘classic fair use,’ in which ‘the defendant has used the plaintiff’s mark to describe the defendant’s own product,’ and ‘nominative fair use,’ in which the defendant has used the plaintiff’smark ‘to describe the plaintiff’s product’ for the purpose of, for example, comparison to the defendant’s product.”). See Instruction 15.25 (Defenses—Nominative Fair Use). 

            The elements of the classic fair use defense set out in this instruction are drawn from: Cairns, 292 F.3d at 1150-51 (noting that to establish a classic fair use defense under 15 U.S.C. § 1115, a defendant must prove: “1. Defendant’s use of the term is not as a trademark or service mark; 2. Defendant uses the term ‘fairly and in good faith’; and 3. [Defendant uses the term] “[o]nly to describe” its goods or services.”); see also Horphag Rsch. Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir. 2003). 

            The first element of the instruction reflects the limitation of the statute, requiring that the mark at issue be descriptive. The classic fair use defense applies only when the trademark at issue has both a primary meaning and a secondary meaning. Horphag, 337 F.3d at 1041 (“The classic fair use defense ‘applies only to marks that possess both a primary meaning and a secondary meaning–and only when the mark is used in its primary descriptive sense rather than its secondary trademark sense.’” (quoting Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-06 (9th Cir. 2003))).

            In considering the second element of fair use, the Ninth Circuit suggests as “relevant factors for consideration by the jury in determining the fairness of the use are the degree of likely confusion, the strength of the trademark, the descriptive nature of the term for the product or service being offered by [plaintiff] and the availability of alternate descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the times and contexts in which [plaintiff] has used the term.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608-09 (9th Cir. 2005). 

            The third element of the instruction is drawn from the definition of “classic” fair use involving a defendant’s use of “the plaintiff’s mark only to describe his [defendant’s] own product, and not at all to describe the plaintiff’s product.” Cairns, 292 F.3d at 1151. 

            Prior to 2004, the Ninth Circuit applied fair use analysis only when it had been shown that there was no likelihood of confusion. Cairns, 292 F.3d at 1150-1151 (“In our Circuit, the classic fair use defense is not available if there is a likelihood of customer confusion…The classic fair use analysis, therefore, only complements the likelihood of customer confusion analysis . . . .”). The circuit subsequently revisited this application to find that “[t]he fair use defense only comes into play once the party alleging infringement has shown by a preponderance of the evidence that confusion is likely.” KP Permanent Make-Up, Inc., 408 F.3d at 608-09 (citing KP Permanent Make-Up v. Lasting Impression I, Inc., 543 U.S. 111, 118, 121-22 (2004) (holding that application of classic fair use as complement to determining likelihood of confusion is “a long stretch” because it requires defendant to prove no likelihood of confusion, reversing proper allocation of burden in which “the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no free-standing need to show confusion unlikely”; determining that it follows (contrary to Court of Appeals’ view) that “some possibility of consumer confusion must be compatible with fair use, and so it is”)). 

            The fair use defense also applies in the trade dress infringement context. Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 809-10 (9th Cir. 2003) (“Applying…fair use standards to the trade dress context, we hold that a defendant’s use is classic fair use where the defendant has used the plaintiff’s dress to describe or identify the defendant’s own product and not at all to describe or identify the plaintiff’s product.” (emphasis omitted)). 

            The circuit occasionally refers to other types of “fair use” besides the classic or nominative fair use tests. For example, the doctrine of trade dress functionality (rendering a feature of trade dress non-infringing) was described as “one form of fair use.” See id. at 809 n.18 (“It is well-established that use of a product feature or trade dress that has become functional will qualify as one form of fair use.”). An instruction governing functionality is provided at Civil Instruction 15.12 (Infringement—Elements—Validity—Trade Dress—Non-Functionality Requirement). Similarly, First Amendment considerations may also be referred to under the rubric of “fair use” and defeat a claim of infringement. See, e.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002) (noting that the Lanham Act applies “to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression”; adopting the Second Circuit’s First Amendment balancing test for whether title of artistic work infringes). Parody may also be characterized as a form of fair use because such use is non-commercial. See Walking Mountain Prods., 353 F.3d at 812 (holding that trademark owner “cannot use ‘trademark laws to ... censor all parodies or satires which use [its] name’ or dress” (quoting New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 309 (9th Cir. 1992))). 

            In cases involving a fair use defense to a theory claiming reverse confusion, see Marketquest Group, Inc. v. BIC Corp., 862 F.3d 927, 932, 937 (9th Cir. 2017). 

            Although federal registration presumptively entitles the senior user to nationwide protection, 15 U.S.C. § 1057(b), the Lanham Act preserves legal and equitable defenses that could have been asserted prior to registration, id. § 1115(a). Under this rule, already-established common law rights are carved out of the registrant’s scope of protection. Stone Creek, Inc. Omnia Italian Design, Inc., 875 F.3d 426, 436 (9th Cir. 2017). The Tea Rose-Rectanus doctrine is a common law affirmative defense separate and apart from an underlying infringement claim, and the doctrine provides that common law trademark rights extend only to the territory where a mark is known and recognized, so a later user may sometimes acquire rights in pockets geographically remote from the first user’s territory. Id. Addressing a split in the circuits, the Ninth Circuit concluded “that there is no good faith if the junior user had knowledge of the senior user’s prior use.” Id. at 437. 

Revised March 2024

            The [owner] [assignee] [licensee] of a trademark cannot exclude others from making a nominative fair use of that trademark. A defendant makes nominative fair use of a mark when the defendant uses it as other than a trademark, to accurately [describe] [name] [identify] the plaintiff’s product, even if the defendant’s ultimate goal was to describe its own product. 

            The defendant contends that it did not infringe the trademark because the alleged infringement was a nominative fair use of the trademark to [describe] [name] [identify] the plaintiff’s product. The plaintiff has the burden of proving, by a preponderance of the evidence, that the defendant’s use of the mark does not meet the requirements of nominative fair use. 

            A defendant makes nominative fair use of a trademark when: 

            First, the product in question was not readily identifiable without use of the trademark; 

Second, the defendant used only so much of the trademark] as was reasonably necessary to identify the product in question; and 

            Third, the defendant did not do anything in connection with the trademark that would suggest sponsorship or endorsement by the plaintiff. 

            [A product is not readily identified without use of its trademark when there would be no other effective way to compare, criticize, refer to, or identify it without using the trademark.] 

            [A reasonably necessary use of a trademark occurs when no more of the mark’s appearance is used than is necessary to identify the product and make the reference intelligible to the consumer. For example, if a particular word is the plaintiff’s trademark, the defendant reasonably uses it when the defendant does not use any distinctive color, logo, abbreviation, or graphic that the plaintiff uses to display the trademark.] 

            [A use of the plaintiff’s trademark does not suggest sponsorship or endorsement of the defendant’s product when the defendant does not attempt to deceive, mislead, or capitalize on consumer confusion, or when the defendant does not appropriate the cachet of the plaintiff’s product for the defendant’s.] 

            [The fact that the defendant’s use of the trademark may bring the defendant a profit or help in competing with the mark owner does not mean the use was not a fair use.] 

Comment 

            The Ninth Circuit identifies two types of fair use: classic and nominative. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (“We distinguish two types of fair use: ‘classic fair use,’ in which ‘the defendant has used the plaintiff’s mark to describe the defendant’s own product,’ and ‘nominative fair use,’ in which the defendant has used the plaintiff’s mark ‘to describe the plaintiff’s product’ for the purpose of, for example, comparison to the defendant’s product.”). See Instruction 15.24 (Defenses— “Classic” Fair Use). 

The nominative fair use test is “designed to address the risk that nominative use of the mark will inspire a mistaken belief on the part of consumers that the speaker is sponsored or endorsed by the trademark holder.” Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010). The elements of the nominative fair use defense set out in this instruction are described in Adobe Sys. Inc. v. Christenson, 809 F.3d 1071, 1081 (9th Cir. 2015). If the nominative use elements are met, the nominative use does not infringe. Toyota Motor Sales, 610 F.3d 1176. If the nominative use does not satisfy all the elements, “the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether.” Id. “A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good …. The burden then reverts to the plaintiff” to show that the nominative fair use elements are not met. Id. at 1183. The nominative fair use defense is unavailable if the marks are not identical. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002) (“When a defendant uses a trademark nominally, the trademark will be identical to the plaintiff's mark, at least in terms of the words in question.”). 

            Earlier versions of this instruction placed the burden on the defendant to show that it made nominative fair use of the plaintiff’s trademark. Despite being frequently referred to as a “defense,” nominative fair use is an alternative test “to evaluate the likelihood of confusion” (an element of an infringement claim). Adobe, 809 F.3d at 1081. The nominative fair use analysis replaces the usual test for likelihood of confusion (the Sleekcraft factors) in cases where the defendant used the plaintiff’s trademark to “refer[] to the trademarked good itself.” Toyota, 610 F.3d at 1182; Adobe, 809 F.3d at 1081.Because it is the plaintiff’s burden to show likelihood of confusion, “[the plaintiff] must bear the burden of establishing that the [defendant’s] use of [the plaintiff’s] mark was not nominative fair use.” Toyota, 610 F.3d at 1182-83. See also 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition§ 23:11 (5th ed. 2019). 

The nominative fair use defense applies only if the defendant “does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.”  Horphag Rsch. Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir. 2003) (finding nominative fair use defense unavailable where record showed that defendant’s use of plaintiff’s trademark suggested sponsorship or endorsement by trademark holder of defendant’s product) (citing New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 306 (9th Cir. 1992)); see also Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-08 (9th Cir. 2003) (discussing cases and application of nominative and classic fair use defenses, and finding neither available because defendant’s use of trademark was not in primary descriptive sense, but instead suggested sponsorship or endorsement by trademark holder); Cairns, 292 F.3d at 1151 (“The nominative fair use analysis is appropriate where a defendant has used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product.” (emphasis omitted)). 

            For application of fair use defense in trade dress cases or for application of First Amendment doctrines as a “fair use,” see Comment to Instruction 15.24 (Defenses— “Classic” Fair Use (15 U.S.C. § 1115(b)(4))). 

Revised March 2024

         The defendant contends that [he] [she] [other pronoun] is not liable for trademark infringement for [distributing] [selling] [stocking] [displaying] the plaintiff’s product under the plaintiff’s trademark because there was previously an authorized sale of the item. After the first authorized sale of an item, the holder of the item’s trademark may not claim trademark infringement for subsequent [sales] [distributions] [displays] of the item under that mark. 

If you find that the item the defendant [distributed] [sold] [stocked] [displayed] was previously subject to an authorized sale, your verdict should be for the defendant on the plaintiff’s trademark infringement claim. 

Comment

The first sale doctrine is an affirmative defense to trademark infringement. See Bluetooth SIG Inc. v. FCA US LLC, 30 F.4th 870, 871 (9th Cir. 2022). “Under the first sale doctrine, ‘with certain well-defined exceptions, the right of a producer to control the distribution of its trademarked product does not extend beyond the first sale of the product.’”  Id. at 872 (quoting Sebastian Int’l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 1074 (9th Cir. 1995) (per curiam)). “Trademark rights are ‘exhausted’ as to a given item upon the first authorized sale of that item.” Bluetooth, 30 F.4th at 872 (quoting 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition§ 25:41 (5th ed. 2019)).

Application of the first sale doctrine “has generally focused on the likelihood of confusion among consumers.” Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc., 603 F.3d 1133, 1136 (9th Cir. 2010). Its “essence” is that “a purchaser who does no more than stock, display, and resell a producer’s product under the producer’s trademark violates no right conferred upon the producer by the Lanham Act.” Sebastian, 53 F.3d at 1076. However, “[b]inding precedent extends the first sale doctrine beyond what Sebastian described as the doctrine’s ‘essence.’” Bluetooth, 30 F.4th at 873. The first sale doctrine’s accommodation between the policies of protecting good will and preventing confusion on the one hand, and preserving an area for competition on the other, raises different issues in the context of pure resales (where confusion ordinarily does not exist), than in the context of incorporated products, where the likelihood of confusion “will depend in some way on how a seller uses the mark of the incorporated product in connection with a new product.” Id. at 874. 

For instance, a retailer may repackage a producer’s trademarked goods, so long as it discloses the fact of repackaging to the public. Enesco Corp. v. Price/Costco Inc., 146 F.3d 1083, 1086-87 (9th Cir. 1998). Similarly, a manufacturer may modify a producer’s trademarked product and use the mark to indicate that the “[trademarked] product is a constituent in the article now offered as new and changed.” Prestonettes, Inc., v. Coty, 264 U.S. 359, 369 (1924). The first sale doctrine permits use of a mark “to refer to a component incorporated into a new end product,” such as an auto manufacturer’s display of the word “Bluetooth” in a vehicle containing a Bluetooth-equipped head unit. Bluetooth, 30 F.4th at 872-73. However, the seller’s disclosure of how a trademarked product was incorporated must be adequate, and a seller’s liability is limited by the first sale doctrine only “to the extent that adequate disclosures are made.” Id.

Revised March 2024

            If you find for the plaintiff on the plaintiff’s [infringement] [unfair competition] claim [and find that the defendant had statutory notice or actual notice of the plaintiff’s registered trademark], you must determine the plaintiff’s actual damages. 

            The plaintiff has the burden of proving that [he][she][other pronoun] sustained actual damages by a preponderance of the evidence. If you find that the plaintiff proved actual damages, you may make reasonable inferences from the evidence to calculate the amount of damages. Damages means the amount of money which will reasonably and fairly compensate the plaintiff for any [injury] [and] [or] [property damage] you find was caused by the defendant’s infringement of the plaintiff’s registered trademark. 

            You should consider the following: 

(1)       [The [injury to] [loss of] the plaintiff’s reputation][;] 

(2)       [The [injury to] [loss of] the plaintiff’s goodwill, including injury to the plaintiff’s general business reputation][;] 

(3)       [The lost profits that the plaintiff would have earned but for the defendant’s infringement. Profit is determined by deducting all expenses from gross revenue][;] 

(4)       [The expense of preventing customers from being deceived][;] 

(5)       [The cost of future corrective advertising reasonably required to correct any public confusion caused by the infringement][;] [and] 

(6)       [Insert any other factors that bear on the plaintiff’s actual damages]. 

            When considering prospective costs (e.g., cost of future advertising, expense of preventing customers from being deceived), you must not overcompensate. Accordingly, your award of such future costs should not exceed the actual damage to the value of the plaintiff’s mark at the time of the infringement by the defendant. 

Comment 

            The plaintiff must prove both the fact and the amount of damages. Intel Corp. v. Terabyte Int’l, Inc., 6 F.3d 614, 620 (9th Cir. 1993); Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1407 (9th Cir. 1993).  “The trier of fact must distinguish between proof of the fact of damages and the amount of damages because a mark holder is held to a lower standard in proving the exact amount of actual damages.” Jason Scott Collection, Inc. v. Trendily Furniture, LLC, 68 F.4th 1203, 1220-21 (9th Cir. 2023) (quoting Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105, 1112 (9th Cir. 2012)). The amount of damages need only be supported by “substantial evidence to permit the jury to draw reasonable inferences and make a fair and reasonable assessment.”  Skydive Ariz., 673 F.3d at 1112 (emphasis omitted).

            The plaintiff’s actual damages are measured by any direct injury that plaintiff proves, and any lost profits plaintiff would have earned but for the infringement. Lindy Pen Co, 982 F.2d at 1407. Trademark damages, like tort damages, are assessed by the reasonably foreseeable harm caused by the infringement. Jason Scott Collection 68 F.4th 1220-21.  A court may grant a monetary award based on “any damages sustained by the plaintiff.” 15 U.S.C. § 1117(a)(2); see also Jason Scott Collection, 68 F.4that 1221-22 (holding that “the district court did not abuse its wide discretion when it found that [plaintiff] suffered a compensable harm” in the form of “[d]amaged business relationships” due to defendant’s infringement).  An award of speculative damages is inappropriate. See McClaran v. Plastic Indus., Inc., 97 F.3d 347, 361 (9th Cir. 1996) (holding that jury’s finding of lost profits, based on theory that designer would have entered market but for infringement, was too speculative when no one had in fact profited from designed products). Where the parties are competitors, the defendant’s profits can serve as a rough measure of the plaintiff’s lost profits. Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 121 (9th Cir. 1968); 5 J. Thomas Mccarthy, Mccarthy On Trademarks And Unfair Competition § 30:59 (5th ed. 2019).

             However, the fact that the infringer did not profit from the infringement does not preclude an award of damages. See Intel Corp., 6 F.3d at 621 (holding that damages for mislabeling computer chips as faster, more expensive chips made by the same manufacturer were properly calculated by multiplying infringer’s sales by plaintiff’s lost profits and taking 95% of product, based on inference that great majority of chips were counterfeit).

             For a general discussion of plaintiff’s actual damages, see 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30:72 (5th ed. 2019). See also 2 Anne Gilson LaLonde & Jerome Gilson, Gilson on Trademarks § 8.04(2) (2023) (listing examples of recoverable damages). 

            To avoid the risk of overcompensation in the award of prospective costs, damage instructions should inform the jury that the award of prospective costs should not exceed the damage to the value of the infringed mark. See Adray v. Adry-Mart, Inc., 76 F.3d 984, 989 (9th Cir. 1995). 

            Defendant may argue that plaintiff’s loss in sales may be caused by other market factors and not as a result of defendant’s infringement. If defendant makes such an argument, an appropriate instruction should be drafted. 

            “[A] court may grant ‘a just monetary award’ under § 1117 even where a plaintiff cannot prove actual damages, ‘so long as [the award] constitutes compensation for the plaintiff’s losses or the defendant’s unjust enrichment and is not simply a penalty for the defendant’s conduct.’” Jason Scott Collection, 68 F.4th at 1222 (quoting Southland Sod Farms v. Stover Seed Co., 108F.3d 1134, 1146 (9th Cir. 1997)).When proof of actual damage is difficult, the court may order disgorgement of defendant’s profits, on a theory of unjust enrichment. Lindy Pen Co., 982 F.2d at 1407.  See Instruction 15.29 Trademark Damages—Defendant’s Profits (15 U.S.C. § 1117(a)). 

            See Instructions 5.2 (Measure of Types of Damages), 5.3 (Damages—Mitigation), and 5.4 (Damages Arising in the Future—Discount to Present Cash Value). 

Revised June 2024

Comment 

            In cases involving the use of a counterfeit mark, the plaintiff may elect to receive statutory damages instead of actual damages and profits. 15 U.S.C. § 1117(c). Statutory damages are also available for “cybersquatting” in violation of 15 U.S.C. 1125(d)(1). 15 U.S.C. § 1117(d).

            Statutory damages are available under 15 U.S.C. § 1117(c) and (d). Statutory damages may be awarded against contributory infringers. Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc.,  658 F.3d 936, 944-45 (9th Cir. 2011). A prevailing party who elects to receive statutory damages under § 1117(c) cannot also receive prejudgment interest under § 1117(b). Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995, 1007-09 (9th Cir. 2023). 

Revised November 2024

           In addition to actual damages, the plaintiff is entitled to any profits earned by the defendant that are attributable to the infringement, which the plaintiff proves by a preponderance of the evidence. You may not, however, include in any award of profits any amount that you took into account in determining actual damages. 

            Profit is determined by deducting all expenses from gross revenue. 

            Gross revenue is all the defendant’s receipts from using the trademark in the sale of a [product]. The plaintiff has the burden of proving the defendant’s gross revenue by a preponderance of the evidence. 

            Expenses are all the defendant’s [operating] [overhead] and production costs incurred in producing the gross revenue. The defendant has the burden of proving the expenses [and the portion of the profit attributable to factors other than use of the infringed trademark] by a preponderance of the evidence. 

            Unless you find that a portion of the profit from the sale of the [specify goods] using the trademark is attributable to factors other than use of the trademark, you should find that the total profit is attributable to the infringement. 

Comment 

            “[D]isgorgement of profits is a traditional trademark remedy.” Jerry’s Famous Deli, Inc. v. Papanicolaou, 383 F.3d 998, 1004 (9th Cir. 2004).  Besides seeking actual damages, see Instruction 15.27 Trademark Damages—Plaintiff’s Actual Damages (15 U.S.C. § 1117(a)), a trademark holder can seek disgorgement of a defendant’s profits under a theory of unjust enrichment. Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1407 (1993); Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 123 (9th Cir. 1968). A plaintiff is not required to choose between actual damages and disgorgement: a plaintiff can recover both. See, e.g., Playboy Enters., Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 1274 (9th Cir. 1982) (holding that district court abused its discretion by failing to award defendant’s profits where the actual damages awarded were inadequate to remove defendant’s incentive to infringe). But “recovery of both plaintiff’s lost profits and disgorgement of defendant’s profits is generally considered a double recovery under the Lanham Act.” Nintendo of Am., Inc. v. Dragon Pac. Int’l, 40 F.3d 1007, 1010 (9th Cir. 1994).

              The Ninth Circuit has held that the Seventh Amendment does not provide a right to a jury trial on the amount of profits to be disgorged. Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1074-76 (9th Cir. 2015). That is, “disgorgement of profits is an equitable issue ordinarily left to the court.” Harbor Breeze Corp. v. Newport Landing Sportfishing, Inc., 28 F.4th 35, 39 (9th Cir. 2022).Therefore, this instruction is being provided if the trial judge wants to impanel an advisory jury on this question. 

             Regarding establishing and calculating defendant’s profits, see Jerry’s Famous Deli, 383 F.3d at 1004-05 (9th Cir. 2004) (describing remedy, in enforcement of trademark injunction case, as “akin to an award of the infringer’s profits under trademark law” and noting “[u]nder established law, once gross profits related to the infringement are established, [infringer] has the burden of documenting any legitimate offsets”); 15 U.S.C. § 1117(a) (“In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.”). See also Am. Honda Motor Co. v. Two Wheel Corp., 918 F.2d 1060, 1063 (2d Cir. 1990) (holding that plaintiff is entitled to amount of gross sales unless defendant adequately proves amount of costs to be deducted from it);  Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966, 973 (2d Cir.1985) (holding that defendant’s own statements as to profits provided sufficient basis for calculation of defendant’s profits under 15 U.S.C. § 1117(a));5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30.65 (5th ed. 2019) (discussing computation of defendant’s profits from infringing sales).Plaintiff has the burden of proof to show with “reasonable certainty” a defendant’s gross sales from infringing activity.  Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 712 (9th Cir. 1999). 

In addition to the defendant’s burden of proving deductible costs and expenses to offset gross sales, the defendant can also prove that some sales, if any, were not attributable to the infringing activity. See Lindy Pen Co.,982 F.2d at 1408 (“Once the plaintiff demonstrates gross profits, they are presumed to be the result of the infringing activity. The defendant thereafter bears the burden of showing which, if any, of its total sales are not attributable to the infringing activity, and, additionally, any permissible deductions for overhead. 15 U.S.C. 1117(a).” (citation omitted)); Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206-07 (1942) (“The plaintiff of course is not entitled to profits demonstrably not attributable to the unlawful use of his mark. The burden is the infringer’s to prove that his infringement had no cash value in sales made by him.” (citations omitted)). 

            A district court “has discretion to increase the profit award above the net profits proven ‘[i]f the court shall find . . . the amount of the recovery . . . inadequate.’” Fifty-Six Hope Road Music, 778 F.3d at 1077 (“district court should award actual, proven profits unless the defendant infringer gained more from the infringement than the defendant’s profits reflect”). However, the court “ought to tread lightly . . . because granting an increase could easily transfigure an otherwise-acceptable compensatory award into an impermissible punitive measure.” Id. See also Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir. 1986) (awarding receipts from at-cost sales when a profits calculation was inadequate to “take all the economic incentive out of trademark infringement,” which is the purpose of 15 U.S.C. § 1117(a)). 

When infringing and noninfringing elements of a work cannot be readily separated, all the defendant’s profits from the infringing sales should be awarded to the plaintiff. Nintendo of Am.,40 F.3d at 1012. 

“[A] trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.” Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. 1492, 1497 (2020); Lindy Pen, 982 F.2d at 1406 (“The intent of the infringer is relevant evidence on the issue of awarding profits and damages and the amount.”). However, a plaintiff need not show that a defendant acted with a particular mental state, such as willfulness, to be entitled to an award of profits. Romag Fasteners, 140 S. Ct. at 1497 (noting that willfulness is not an “inflexible precondition” to recover a defendant’s profits); Harbor Breeze Corp., 28 F.4th at 38 (same). 

Revised June 2024

Comment 

            In 1995, Congress passed the Federal Trademark Dilution Act (“FTDA”), which remained in effect until 2006, when Congress passed the Trademark Dilution Revision Act of 2006 (“TDRA”). The TDRA significantly modified the FTDA, including overturning Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which held that a plaintiff must prove actual dilution under the FTDA. Among other things, the TDRA established a “likelihood of dilution” standard (providing relief for “likely” dilution), eliminated the definition of “dilution,” added definitions of “dilution by tarnishment” and “dilution by blurring,” and modified the “fair use” exclusion. See generally Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1165-71 (9th Cir. 2011). Thus, case law that pre-dates the TDRA generally should not be relied on in a dilution case. 

            In Blumenthal Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 869-71 (9th Cir. 2020), the Ninth Circuit provided an extensive discussion of the concept of trade dress dilution. 

In Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140 (2023), the Supreme Court held that the “noncommercial use” exclusion to trademark dilution does not include “every parody or humorous commentary.” 599 U.S. at 162. That is, the fair-use exclusion, 15 U.S.C. § 1125(c)(3)(A), “has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own goods or services.’” Id. (quoting 15 U.S.C. § 1125(c)(3)(A)). Put differently, if the alleged diluting mark is used as a trademark, the defendant cannot avail itself of the fair-use exclusion for trademark dilution. 

Revised March 2024

Comment

            In 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (“ACPA”). The ACPA “establishes civil liability for ‘cyberpiracy’ where a plaintiff proves that (1) the defendant registered, trafficked in, or used a domain name; (2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and (3) the defendant acted ‘with bad faith intent to profit from that mark.’” DSPT Int’l., Inc. v. Nahum, 624 F.3d 1213, 1218-19 (9th Cir. 2010). In addition, using in a domain name another’s protected mark “to get leverage in a business dispute” is sufficient to establish “bad faith intent.”  Id. at 1219-20.

Revised March 2024