The Elements for a Claim of Trademark Infringement

11071126154_db6bcd405a_bIn Nevada, the elements for a claim trademark infringement are:

  1. Plaintiff has a valid, protectable symbol or name described as:______ (the “Mark”);
  2. Plaintiff owns the Mark as a trademark;
  3. Defendant used the Mark in commerce in connection with the sale or advertising of goods or services 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; and
  4. Causation and damages.

15 U.S.C. § 1114; Inwood Labs. v. Ives Labs, 456 U.S. 844, 858 (1982); Abercrombie & Fitch, Inc. v. Moose Creek, Inc., 486 F.3d 629, 635 (9th Cir. 2007); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005) (“[T]rademark infringement law prevents only unauthorized uses of a trademark in connection with a commercial transaction…”); Gracie v. Gracie, 217 F.3d 1060, 1066–67 (9th Cir. 2000); Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036, 1051 (9th Cir. 1999); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987) (explaining that “[l]ikelihood of confusion requires that confusion be probable, not simply a possibility”); AMF, Inc v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)(Eight specific elements measure likelihood of confusion: Strength of the mark, Proximity of the goods, Similarity of the marks, Evidence of actual confusion, Marketing channels used, Type of goods and the degree of care likely to be exercised by the purchaser, Defendant’s intent in selecting the mark, Likelihood of expansion of the product lines); 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406-07 (2d Cir. 2005); People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir. 2001); Holiday Inns v. 800 Reservation, 86 F.3d 619, 626 (6th Cir. 1996) (“[T]he defendants’ use of a protected mark . . . is a prerequisite to the finding of a Lanham Act violation.”); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 467 n.15 (4th Cir. 1996) (“We may infer from the case law that survey evidence clearly favors the defendant when it demonstrates a level of confusion much below ten percent.”); International Ass’n of Machinists & Aerospace Workers v. Winship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996); Fisons Horticulture v. Vigoro Indus., 30 F.3d 466, 472 (3d Cir. 1994); Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987) (“As to incidents of actual confusion, Mutual produced evidence of actual confusion in the form of a survey conducted by Sorenson Marketing and Management Corporation of New York. We consider this appropriate, for surveys are often used to demonstrate actual consumer confusion.”); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981); Wells Fargo & Co. v., Inc., 293 F. Supp. 2d 734, 757 (E.D. Mich. 2003) (“There can be no liability under the Lanham Act absent the use of a trademark in a way that identifies the products and services being advertised by the defendant.”).  Miss Dig Sys., Inc. v. Power Plus Eng’g, Inc., 944 F. Supp. 600, 602 (E.D. Mich. 1996) (“As the language of these statutory provisions shows . . . the court . . . must first find that the defendant . . . has made an actual ‘use’ of the plaintiff’s trademark. In the absence of this preliminary finding, there can be no liability for trademark infringement or unfair competition under the Lanham Act.”); IDV. N. Am. v. S&M Brands, 26 F. Supp. 2d 815, 824 (E.D. Va. 1998) (citation omitted); ALMN, Inc. v. Rusoff, 104 Nev. 274, 757 P.2d 1319 (1988).  “It is not necessary for plaintiff in a trademark or unfair competition case to prove any past or present actual damages since one of the major benefits of injunctive relief is that it can be obtained prior to actual damage so as to prevent that damage from occurring.” 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2007).

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’n, Inc., v. W. Coast Enter. Corp., 174 F.3d 1036, 1046–47 n.8 (9th Cir. 1999) (trademark infringement elements under either § 1114 or §1125(a) involve a plaintiff showing 1) that defendant used a mark confusingly similar to 2) a valid, protectable trademark 3) that was owned by the plaintiff).

See elements for other claims at the Nevada Law Library



The information provided on this site does not, and is not intended to constitute legal advice. You understand each legal matter should be considered to be unique and subject to varying results. You should not take or refrain from taking action based on any information contained on this website without first consulting legal counsel, as it is not intended to advise you on your particular matter. Further, you understand that no guarantee is given that the information contained herein is an accurate statement of the law at any given point in time, as the law is constantly changing. Guest bloggers are responsible for their own content, which is not to be construed as an article authored by NLB. Please see

Leave a comment