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Preliminary Comment, Instruction, Trademark

The plaintiff, seeks damages against the defendant, for trademark/ mark infringement. The defendant denies infringing the trademark/ mark and/or contends the trademark/mark is invalid. To help you understand the evidence that will be presented in this case, I will explain some of the legal terms you will hear during this trial.

THE PLAINTIFF'S BURDEN OF PROOF

In this case, the plaintiff contends that the defendant has infringed plaintiff's trademark/mark. The plaintiff has the burden of proving by a preponderance of the evidence that plaintiff is the owner of a valid [trademark/mark and that the defendant infringed that trademark /mark. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the defendant infringed the plaintiff's trademark/mark.

DEFENDANT'S BURDEN OF PROOF

The defendant contends that the registered trademark/mark is invalid/the trademark/mark has been abandoned/or [other affirmative defense]. Defendant has the burden of proving by a preponderance of the evidence that the registered trademark/mark is invalid/the trademark/mark has been abandoned/or [other affirmative defense].

Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the registered trademark/mark is invalid/or [other affirmative defense.]

Trademark Interests, Assignee (15 U.S.C. 1060)

The owner of a trademark/mark may transfer/sell/give to another the owner's interest in the trademark/mark, that is, the right to exclude others from using the mark. This transfer/sale/gift is called an assignment, and the person to whom this right is transferred/sold/given is called an assignee.

The assignment must be in writing and signed. To be enforceable, the assignment must include the goodwill of the business connected with the mark.

An assignee may enforce this right to exclude others in an action for infringement/or [applicable form of unfair competition from 15 U.S.C. 1125(a)].

Plaintiff is an assignee.

Trademark Interests, Licensee

The owner of a trademark/mark may enter into an agreement that permits another person to use the trademark/mark. This type of agreement is called a license, and the person permitted to use the trademark/mark is called a licensee.

A license agreement may include the right to exclude others from using the trademark/mark. A licensee may enforce this right to exclude others in an action for infringement/or [insert applicable form of unfair competition from 15 U.S.C. 1125(a)].

Infringement of a Mark, Generally (15 U.S.C. 1114(1))

The owner/assignee/licensee may enforce the right to exclude others from using the trademark/mark in an action for trademark/mark infringement. Anyone who, without the consent of the owner/assignee/licensee, uses a trade mark/mark in connection with the sale of goods/services in a manner likely to cause confusion as to the source of the goods/services infringes that trademark/mark.

False Designation of Origin and False Description (15 U.S.C.1125(a))

Any person who makes commercial use of any word/term/name/symbol/or combination thereof/false or misleading designation of origin/description or representation of fact:

which is likely to cause confusion as to

1. the origin of that person's goods or services

2. that person's affiliation, connection or association with another person

3. endorsement or approval of the goods or services by another person or

which misrepresents in advertising the nature, characteristics, qualities, or geographic origin of [his/her/another person's goods or services is liable to any person who [is/or is likely to be damaged by the false designation of origin/or false description]. a person may recover for false designation of origin/description even though the person is not the owner/assignee/licensee of a trademark/mark for the word/term/name/symbol/or combination thereof used by another person.

A person who uses the trademark of another may be liable for damages.

xxxis a person as that term is used in these instructions.

A person who uses the service mark of another may be liable for damages.

xxx is a person as that term is used in these instructions.

Collective Trademark, Defined (15 U.S.C. 1127)

A collective trademark is any word/name/symbol/device/, or any combination thereof, used by a cooperative/an association/, or other collective group or organization to identify and distinguish its goods from those of others, and to indicate the source of the goods, even if that source is generally unknown.

A person who uses the collective trademark of a cooperative/an association/, or other collective group or organization may be liable for damages.

xxx is a person as that term is used in these instructions.

Collective Service Mark, Defined (15 U.S.C. 1127)

A collective service mark is any word/name/symbol/device/, or any combination thereof, used by a cooperative/an association/, or other collective group or organization to identify and distinguish its services from those of others, and to indicate the source of the services,/even if that source is generally unknown.

A person who uses the collective service mark of a cooperative/an association/, or other collective group or organization may be liable for damages.

A person who uses a certification mark without the owner's permission may be liable for damages.

Certification Mark, Services, Defined (15 U.S.C. 1127)

A certification mark is any word/name/symbol/device/, or any combination thereof, which its owner permits others to use to certify a service's [origin/quality/accuracy] [fill in other certifiable characteristics that a service is performed by members of a union or other organization.]

A person who uses the certification mark without the owner's permission may be liable for damages.

Unregistered Mark, Common Law

A person who uses the trade dress of another may be liable for damages.

Any person who uses the trade name/commercial name of another may be liable for damages.

Infringement, Registered Trademark, Elements and Burden of Proof (15 U.S.C. 1114(1))

On plaintiff's claim for trademark/mark infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. [describe plaintiff's symbol or term] has been registered as a trademark/mark on the principal register in the United States Patent and Trademark Office;

2. plaintiff is the registrant of that trademark/mark; plaintiff is the assignee/licensee of the registrant of that trademark/mark; and

3. defendant used [describe symbol or term used by defendant] without the consent of the plaintiff/registrant in a manner that is likely to cause confusion among ordinary purchasers as to the source of the goods/services.

[Add appropriate concluding paragraphs.]

Infringement, Unregistered/or Invalidly Registered Trademark, Identical Mark, Elements and Burden of Proof

On plaintiff's claim for trademark/mark infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. plaintiff/owner began use of [describe symbol or term] on or about [insert date] as a trademark/mark for goods/services;

2. defendant began to use the mark after that date in an area where plaintiff/owner was selling the goods/services;

3. defendant's use of [describe symbol or term] was without the consent of the plaintiff/the owner;

4. [describe symbol or term] is inherently distinctive/or has acquired secondary meaning; and

5. defendant's use of [describe symbol or term] is likely to cause confusion among ordinary purchasers as to the source of the goods/services.

[Add appropriate concluding paragraphs.]

Infringement, Unregistered or Invalidly Registered Trademark, Similar Mark, Elements and Burden of Proof

On plaintiff's claim for trademark/mark infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. plaintiff/owner began use of [describe plaintiff's symbol or term] no later than [date] as a trademark/mark for goods/services;

2. defendant began to use [describe symbol or term] after that date in an area where plaintiff/owner was selling the goods/services;

3. defendant's use of [describe defendant's symbol or term] was without the consent of the plaintiff/the owner;

4. [describe plaintiff's symbol or term] is inherently distinctive/or has acquired secondary meaning; and

5. defendant's trademark/mark [describe defendant's symbol or term] is so similar in appearance/sound/meaning to plaintiff's trademark/mark that its use is likely to cause confusion among ordinary purchasers as to the source of goods/services.

[Add appropriate concluding paragraphs.]

Unfair Competition, Likelihood of Confusion, Word or Device, Elements and Burden of Proof (15 U.S.C. 1125(a)(1))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant used [describe symbol or term] on/or in connection with goods/services/or a container for goods;

2. the use of [describe symbol or term] is likely to cause confusion/or cause mistake/deceive as to

the origin of the defendant's goods/services;

the affiliation/connection/association of the defendant with another person;

the sponsorship/approval of the defendant's goods/services/commercial activities by another person; and

3. plaintiff was/is likely to be damaged by the actions of defendant.

[Add appropriate concluding paragraphs.]

Unfair Competition, Trade Dress Infringement, Elements and Burden of Proof (15 U.S.C. 1125(a))

On plaintiff's claim for trade dress infringement, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. plaintiff/owner began to use [describe plaintiff's trade dress] no later than [date] as a trade dress for goods/services;

2. defendant began to use [describe defendant's trade dress] after that date in an area where plaintiff/owner was selling the goods/services;

3. defendant's use of its trade dress was without the consent of the plaintiff/the owner;

4. plaintiff's trade dress is non-functional;

5. plaintiff's trade dress is inherently distinctive/or has acquired secondary meaning; and

6. defendant's trade dress is likely to cause confusion among ordinary purchasers as to the source of plaintiff's and defendant's goods/services.

[Add appropriate concluding paragraphs.]

Unfair Competition, Likelihood of Confusion, False or Misleading Representations, Elements and Burden of Proof (15 U.S.C. 1125(a)(1))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. defendant used in commerce a false designation of origin/false description of fact/misleading description of fact/false representation of fact/misleading representation of fact on/or in connection with any goods/services/or/container for goods;

2. the use of the false designation of origin/false description of fact/misleading description of fact/false representation of fact/misleading representation of fact is likely to cause confusion/or cause a mistake/deceive as to

the origin of the defendant's goods/services;

the affiliation/connection/association of the defendant with another person;

the sponsorship/approval] of the defendant's goods/services/commercial activities by another person; and

3. plaintiff was/is likely to be damaged by defendant's actions.

[Add appropriate concluding paragraphs.]

Likelihood of Confusion, Factors (15 U.S.C. 1114(1), 1125(a)(1))

You may consider the following factors in determining whether the use of the trademark/mark by the defendant is likely to cause confusion concerning the source of the plaintiff's or the defendant's goods/services:

1. whether the plaintiff's trademark/mark is strong or weak depending on its distinctiveness or public recognition.

2. whether the defendant has used the plaintiff's trademark/mark on the same/or related/goods/or services.

3. whether the trademark/mark used by the defendant is similar to the defendant's trademark/mark in appearance/sound/or meaning].

4. whether the evidence shows the use by the defendant of the plaintiff's trademark/mark has led to actual confusion.

5. whether the evidence shows that the defendant knowingly adopted the plaintiff's trademark/mark to identify similar goods/services.

[6.] whether the goods/services of the plaintiff and the defendant are likely to be sold in the same or similar stores or outlets.

[7.] whether the goods/services sold by the plaintiff and the defendant are expensive/or whether the consumers of such goods/services have expertise in the field.

[8.] whether the plaintiff is expanding/diversifying his/her/its product lines to compete with others providing the same/or related goods/or services.

[9.] any other factors that bear on likelihood of confusion.

You may consider the following when you determine whether [describe symbol or term has achieved a secondary meaning:

1. whether the people who purchase the product/service that bears the claimed trademark/mark associate the trademark/mark with the owner/assignee/licensee;

2. to what degree and in what manner the owner/assignee/licensee may have advertised under the claimed trademark/mark;

3. whether the owner/assignee/licensee successfully used this trademark/mark to increase the sales of its product/service;

4. the length of time and manner in which the owner/assignee/ licensee used the claimed trademark/mark;

5. whether the owner's/assignee's/licensee's use of the claimed trademark/mark was exclusive;

6. whether the defendant intentionally copied the owner's/assignee's /licensee's trademark/mark; and

7. any other factors that bear on secondary meaning.

The plaintiff has the burden of proving secondary meaning. The mere fact that the plaintiff is using [describe symbol or term], or that the plaintiff began using it before the defendant, does not mean that the trademark/mark has obtained secondary meaning. There is no particular length of time that a trademark/mark must be used before it obtains a secondary meaning.

Unfair Competition, Misrepresentation by Word or Device, Elements and Burden of Proof (15 U.S.C. 1125(a)(2))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving the following by a preponderance of the evidence:

1. defendant used [symbol or term] on/or in connection with goods/services/or container for goods in a commercial advertisement/promotion;

2. the use of [symbol or term] misrepresented the nature, characteristics, qualities/geographic origin of defendant's/or another person's goods/services/commercial activities; and

3. plaintiff was/is likely to be damaged by the misrepresentation.

[Add appropriate concluding paragraphs.]

Unfair Competition, False Advertising, Elements and Burden of Proof (15 U.S.C. 1125(a)(2))

On plaintiff's claim for unfair competition, the plaintiff has the burden of proving the following by a preponderance of the evidence:

1. defendant made a false designation of origin/false description of fact/misleading description of fact/false representation of fact/misleading representation of fact on/in connection with any goods/services/container for goods in a commercial advertisement/promotion;

2. the use of the false designation of origin/false description of fact/misleading description of fact/false representation of fact/misleading representation of fact/misrepresented the [nature, characteristics, qualities geographic origin of [defendant's/another person's goods/services/commercial activities; and

3. plaintiff was/is likely to be damaged by the misrepresentation.

[Add appropriate concluding paragraphs.]

Inducing Infringement, Elements and Burden of Proof

A person is liable for trademark/mark infringement by another if the person intentionally induced another to infringe the trademark/mark.

The plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. direct infringer infringed the plaintiff's trademark/mark; and

2. defendant intentionally induced direct infringer to infringe plaintiff's trademark/mark.

[Add appropriate concluding paragraphs]

Contributory Infringement, Elements and Burden of Proof

A person is liable for trademark/mark infringement by another if the person sells/supplies goods to another knowing or having reason to know that the other person will use the goods to infringe the plaintiff's trademark/mark.

The plaintiff has the burden of proving each of the following by a preponderance of the evidence:

1. the defendant sold/supplied goods to [insert name of direct infringer];

2. [name of direct infringer] used the goods defendant sold/supplied to infringe plaintiff's trademark/mark; and

3. defendant knew or should have known [name of direct infringer] would use the goods to infringe plaintiff's trademark/mark.

[Add appropriate concluding paragraphs.]

Mark Invalidity, Registered Trademark, Affirmative Defense, Defendant's Burden of Proof

It is a defense to an action for infringement that the plaintiff's registered trademark is invalid. A trademark/mark is invalid if:

it is/has become a generic word/or term;

it is a merely descriptive word/or term;

it is a deceptively misdescriptive word/or term;

it is a primarily geographically descriptive word/or term;

it is a deceptively misdescriptive geographical word/or term;

it is primarily a surname.

The defendant has the burden of proving invalidity of the trademark/mark by a preponderance of the evidence.

[Add appropriate concluding paragraph.]

Invalidity, Unregistered Trademark, Plaintiff's Burden of Proof

The defendant contends that the plaintiff's trademark/mark is invalid. A trademark/mark is invalid if:

it is/has become a generic word/or term;

it is a merely descriptive word/or term;

it is a deceptively misdescriptive word/or term;

it is a primarily geographically descriptive word/or term;

it is a deceptively misdescriptive geographical word/or term;

it is primarily a surname.

The plaintiff has the burden of proving the validity of the trademark/mark by a preponderance of the evidence.

Mark Invalidity, Lack of Distinctiveness, Merely Descriptive Marks, Definition

An owner of a trademark/mark may not exclude others from using a word/term which is merely descriptive of goods/services unless the word/term has acquired a secondary meaning because the prospective purchasers have begun to consider the trademark/mark as an indication of the source of the goods/services.

A trademark/mark is merely descriptive if it is understood by prospective purchasers to describe only the functions/characteristics/use/or ingredients of the goods/services.

Mark Invalidity, Deceptively Misdescriptive Marks, Definition

An owner of a deceptively misdescriptive trademark/mark may not exclude others from using it unless it acquired secondary meaning.

A trademark/mark is deceptively misdescriptive if:

1. the word/term does not accurately describe the character, quality, function, composition or use of the goods/services; and

2. prospective purchasers are likely to believe the word/term describes the goods/services or their character, quality, function, composition, or use and the word/term is likely to affect the decision to purchase the goods/services.

Mark Unenforceability, Abandonment, Affirmative Defense, Defendant's Burden of Proof (15 U.S.C. 1127)

The owner/assignee/licensee of a trademark/mark cannot exclude others from using the trademark/mark if it has been abandoned.

The defendant contends that the trademark/mark has become unenforceable because the plaintiff abandoned it. The defendant has the burden of proving abandonment by a preponderance of the/ clear and convincing evidence.

The owner/assignee/licensee of a trademark/mark has abandoned the right to exclusive use of the trademark/mark when the owner/assignee/licensee discontinues its use, intending not to resume using it.

[Add appropriate concluding paragraphs.]

Continuous Prior Use Within Remote Geographic Area, Affirmative Defenses (15 U.S.C. 1115(b)(5))

An owner of a registered trademark/mark may not exclude others who began using that] a confusingly similar trademark/mark in a geographic area, without knowledge of the owner's prior use of the a similar trademark/mark elsewhere, and before the owner had applied for registration of the/registered the published the registered/trademark/mark.

The defendant contends that defendant has the right to use the trademark/mark within the [geographic region area].

The defendant has the burden of proving each of the following by a preponderance of the evidence:

1. the defendant/defendant's assignor defendant's licensor continuously used the trademark/mark, without interruption, in [insert geographic region where defendant claims prior use;

2. the defendant/defendant's assignor defendant's licensor began using the trademark/mark without knowledge of the plaintiff's prior use elsewhere; and

3. the defendant used the trademark/mark before the plaintiff applied for registration of the registered/the published mark.

[Add appropriate concluding paragraphs.]

Trademark Damages, Actual or Statutory Notice (15 U.S.C. 1111)

In order for plaintiff to recover damages, the plaintiff has the burden of proving by a preponderance of the evidence that defendant had either statutory or actual notice that plaintiff's trademark/mark was registered.

Defendant had statutory notice if:

1. plaintiff displayed with the trademark/mark the words "Registered in U.S. Patent and Trademark Office"/or

2. plaintiff displayed with the trademark/mark the words "Reg. U.S. Pat. & Tm. Off."/or

3. plaintiff displayed the trademark/mark with the letter R enclosed within a circle, thus registered trademark.

Trademark Damages, Actual Damages (15 U.S.C. 1117(a))

If you find for plaintiff on plaintiff's infringement/unfair competition claim and find that the defendant had statutory notice or actual notice of the plaintiff's registered trademark/mark, you must determine plaintiff's damages.

Plaintiff has the burden of proving damages by a preponderance of the evidence. Damages means the amount of money which will reasonably and fairly compensate the plaintiff for any injury and/or property damage you find was proximately] [legally] caused by the defendant's infringement of the plaintiff's registered trademark/ mark. You should consider the following:

the injury to/loss of the plaintiff's reputation

the injury to/loss of plaintiff's goodwill, including injury to the plaintiff's general business reputation

the loss of plaintiff's sales as a result of the defendant's infringement

the loss of plaintiff's profits

the expense of preventing customers from being deceived

the cost of future advertising which is reasonably required to correct any public confusion caused by the infringement

any other factors that bear on plaintiff's actual damages.

Trademark Damages, he defendant has the burden of proving the expenses and the portion of the profit attributable to factors other than use of the infringed trademark/mark by a preponderance of the evidence.

Unless you find that a portion of the profit from the sale of the goods/services using the trademark/mark is attributable to factors other than use of the trademark/mark, you shall find that the total profit is attributable to the infringement.

Trademark Damages, Intentional Infringement (15 U.S.C. 1117(b))

If you find that the defendant infringed the plaintiff's trademark/ mark, you must also determine whether the defendant used the trademark/mark intentionally, knowing it was an infringement.

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