CAFC reverses D. Oregon on trademark issue

From the opinion by Judge Newman:


The district court held that Georgia Expo’s use of VersaTop’s trademarks
in advertising and brochures did not
violate the Trademark Act because Georgia Expo had not
“affixed” the VersaTop trademarks to goods that were “sold
or transported in commerce.” The court held that such “use
in commerce” was required for trademark infringement liability,
and therefore the relevant statutory provision concerning likelihood of confusion was not applicable.
Summary judgment of noninfringement in favor of Georgia
Expo was granted on this ground.
We conclude that the district court erred in law. On
the correct law, violation of the Trademark Act was established
on the admitted facts. We reverse the district court’s
judgment, and remand for appropriate further proceedings.




Of relevance



The treatise McCarthy on Trademarks and Unfair
Competition explains that the “use in commerce” definition
in § 1127—
was clearly drafted to define the types of “use” that
are needed to qualify a mark for federal registration—not as a candidate for infringement. It defines the kinds of “use” needed to acquire
registerable trademark rights—not to infringe
them.
4 McCarthy § 23:11.50 (5th ed. 2018) (footnote omitted); see
id. (“This statutory anachronism certainly was never intended to limit the scope of ‘uses’ that would constitute infringement.”).
In Hasbro, Inc. v. Sweetpea Entertainment, Inc.,
No. 13-3406, 2014 WL 12586021 (C.D. Cal. Feb. 25, 2014),
the district court again stated the distinction between infringing use and the “use in commerce” requirement for
federal registration:

Sweetpea’s statement of the law is incorrect. The
Ninth Circuit has explained that the definition of
“use in commerce” in Section 1127 “applies to the
required use a plaintiff must make in order to have
rights in a mark . . . .” Playboy Enterprises, Inc. v.
Netscape Commc’ns Corp., 354 F.3d 1020, 1024
n.11 (9th Cir. 2004). Section 1127 is not, however,
the legal standard for proving infringement.
Id. at *9 (omission in original).
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. See Network Automation, 638 F.3d at 1144–
45; Playboy, 354 F.3d at 1024 n.11