Trademarks Class 23

1. Trademarks Class 23 Remedies

2. Remedies for infringement • injunction [§ 1116(a)] • monetary awards, “subject to the principles of equity”: [§ 1117(a)] • defendant’s profits • plaintiff’s damages • costs • treble damages for counterfeits [§ 1117(b)] • attorney’s fees “in exceptional cases” [§ 1117(a)] • seizure and destruction [§1118]

3. North Am. Medical v. Axiom “[W]e decline to decide whether the district court was correct in its holding that the nature of the trademark infringement gives rise to a presumption of irreparable injury. In other words, we decline to address whether such a presumption is the equivalent of the categorical rules rejected by the Court in eBay.” [692-93]

4. Maltina v. Cawy • “Some courts view the award of an accounting as simply a means of compensating a markholder for loss or diverted sales. • “Other courts view an accounting not as compensation for lost or diverted sales, but as redress for the defendant’s unjust enrichment and as a deterrent to further infringement.” [699]

5. Proving defendant’s profits “In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.” [§ 1117(a)]

6. “Today, diners can still get an over sized piece of Texas Toast, giant onion rings, a milkshake, and a tasty Pig Sandwich,” he says. “The best part is that we still sell the same Pig Sandwich made the same way that it was made so many years ago.” — http://michaelwitzel.com/wordpress/the-texas-pig-stands-drive-in/

7. Texas Pig Stands v. Hard Rock “While the diversion of sales is not a prerequisite to an award of profits, Maltina Corp. v. Cawy Bottling Co., it is one of the factors to be considered. The same is true of palming off—while it is not a prerequisite to finding unjust enrichment, it is an important circumstance bearing on the determination.” [705]

8. No good will to hog “[T]he closing of practically all the Texas Pig Stands, and all outlets in Dallas well prior to Hard Rock’s entry into that market, evidences the fact that TPS’ good will there is between low and nill. The trial court correctly concluded, therefore, that Hard Rock ‘would have sold just as many pig sandwiches by any other name’ and that ‘there is no basis for inferring that any of the profits received by [Hard Rock] from the sale of pig sandwiches are attributable to infringement.’ ” [705]

9. What makes a case “exceptional”? • “an ‘exceptional case’ is one in which the defendant’s trademark infringement ‘can be characterized as “malicious,” “fraudulent,” “deliberate,” or “willful”’ ” • “The statutory provision has been interpreted by courts to require a showing of a high degree of culpability on the part of the infringer, for example, bad faith or fraud.” [706]

10. Dissent: this makes infringement profitable “The message conveyed by the majority’s determination here is that despite what this Court has heretofore written, it may now be permissible and profitable to infringe on the trademark of another. While the Fifth Circuit might eventually put a stop to that illegal infringement, that infringement nonetheless still could be profitable.” [708]

11. What’s a “counterfeit”? • “It is an imitation made with the intention of deceiving consumers as to its source.” • “Often the product itself or its packaging will also be copied, not simply the trademark or logo, in order to mislead the consumer.” • “In a typical counterfeiting case the producer of the fake merchandise intends its ‘trademark’ to be impossible or very difficult to tell apart from the genuine article.”

12. Counterfeiting, not infringement • “Creating a label that simulates the genuine label for SIMILAC baby formula, affixing it on a container with white powder inside, and offering it for sale is counterfeiting and not merely infringement. “ • “Packaging disks inside a box with the authentic MICROSOFT label copied where Microsoft did not authorize the use of its mark, and offering that package for sale is counterfeiting and not merely infringement.” • “Manufacturing STAR WARS action figures, putting them in a package copied from the actual STAR WARS action figure box, and offering them for sale is counterfeiting and not merely infringement.”

13. Infringement, not counterfeiting • “If consumer confusion is not evident and the court would need to balance the likelihood of confusion factors to determine whether the copied trademark is likely to confuse consumers, the mark is likely not a counterfeit. “ • “Where a consumer buys a container of FUNDOUGH modeling clay for her kids, erroneously believing it to be produced by the makers of PLAY-DOH, that is infringement and not counterfeiting.” • “Where a consumer buys HERBROZAC pills, incorrectly believing them to be an herbal remedy made by the manufacturer of PROZAC prescription medication, that is infringement and not counterfeiting.” — Gilson on Trademarks