Federal Circuit Construes “Use In Commerce” Requirement Of Federal Trademark Infringement
On April 19, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the U.S. District Court for the District of Oregon. Versatop Support Sys. v. Georgia Expo, Inc., —F.3d—, (Fed. Cir. April 19, 2019). The CAFC ruled that the district court had incorrectly found no infringement based on the “use in commerce” requirement of the Lanham Act.
The Lanham Act, at 15 U.S.C. § 1125, provides that “[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device … which … is likely to cause confusion … shall be liable in a civil action …” (emphasis added). At 15 U.S.C. § 1127 (titled “Construction and definitions, intent of chapter”), the Lanham Act states, “For purposes of this chapter, a mark shall be deemed to be in use in commerce—(1) on goods when—(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce ….”
In this case, the accused infringer used plaintiff’s mark only on flyers, not on goods (or documents associated with goods) sold or transported in commerce. The District Court therefore ruled that the “uses in commerce” portion of § 1125 was not met, and granted summary judgment for the accused infringer.
The CAFC reversed. The Court noted the definition of “use in commerce” in § 1127, but also noted legislative history that the definition of “use in commerce” was “intended” to apply to the trademark registration process, and that “use of any type will continue to be considered in an infringement action.” The Court also referred to 9th Circuit cases to the same effect (e.g., Playboy Enters., Inc. v. Netscape Comm’ns Corp., 354 F.3d 1020 (9th Cir. 2004)), as well as to a trademark treatise.
Thus, on this issue, the Court concluded, “Contrary to this precedent, the district court in this case incorrectly applied the definition of ‘use in commerce’ that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement.”