Trademark Infringement Statutes: Mind Your T’s and M’s

The proliferation of social media has resulted in a similar (although not nearly as vast) proliferation of trademark infringement and trademark infringement lawsuits. And while parties may bring claims for “common law” trademark infringement or trademark infringement under state law, the vast–almost exclusive–basis for a standard infringement suit is federal law.

But, as lawyers, what do we do with all those Lanham Act statutes? There are a whole bunch of trademark sections to deal with after all. (Okay, fine, it really isn’t that difficult but, apparently, confusion does arise.) Seriously. You have 15 U.S.C. §§ 1114, 1115, 1117, 1125, and more!

Well, a florida federal district court recently gave the parties a remedial lesson in trademark statutory law:

The Court notes that Roca Labs erroneously cites to 15 U.S.C. § 1117 as the statute supporting its claim for trademark infringement. However, section 1117 enumerates remedies available to plaintiffs who prevail under other sections of the Lanham Act; section 1117 alone does not provide a cause of action. Because Boogie Media does not challenge Roca Labs’ erroneous use of this section, and because Roca Labs states elsewhere in the Amended Complaint that it seeks relief for trademark infringement under section 1114, the Court construes Count I as a claim under 15 U.S.C. § 1114(1).

Roca Labs, Inc. v. Boogie Media, LLC, 2013 WL 2025806, at *8 n.2 (M.D.Fla. May 14, 2013). Don’t ask me why I changed all the hyperlinks from Westlaw to Cornell’s awesome Legal Information Institute when my citation to the case is still a Westlaw citation. But hey, at least you have easy access to the relevant statutes. I’m sure the parties in this matter wish they did.

About Tyson Snow

Tyson B. Snow is a partner at Pia Anderson Dorius Reynard & Moss, LLC, in Salt Lake City. He is considered an expert on social media law, particularly social media law's impact on the workplace and employment. His practice involves all areas of federal court litigation with an emphasis in employment litigation, commercial litigation, and intellectual property litigation, including trademark disputes, cybersquatting, copyrights, and other technology related issues. He also frequently litigates in Utah’s state district and appellate courts. Email: tsnow@padrm.com Twitter: @tysonESQ

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