15.0 PRELIMINARY INSTRUCTION—TRADEMARK
The plaintiff, [name of plaintiff], seeks damages against the defendant, [name of defendant], for [trademark infringement] [unfair competition]. The defendant denies [infringing the trademark] [unfairly competing] [and] [contends the trademark 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.
DEFINITION OF A TRADEMARK
A trademark is a word, a name, a symbol, a device, or a combination of them that indicates the source of goods. The [owner] [assignee] [licensee] of a trademark has the right to exclude others from using that trademark.
[HOW A TRADEMARK IS OBTAINED]
[A person acquires the right to exclude others from using a trademark by being the first to use it in the marketplace, or by using it before the alleged infringer. Rights in a trademark are obtained only through commercial use of the mark.]
[The owner of a trademark may transfer, give, or sell to another person the owner’s interest in the trademark. This type of [agreement] [gift] is called an assignment, and the person who receives the owner’s interest is called an assignee. An assignee has the right to exclude others from using the trademark. To be enforceable, the assignment must be in writing and signed. It must also include the goodwill of the business connected with the trademark.]
[The owner of a trademark may [also] enter into an agreement that permits another person to use the trademark. This type of agreement is called a license, and the person permitted to use the trademark is called a licensee.]
A trademark [owner] [assignee] [licensee] may enforce the right to exclude others in an action for [infringement] [or] [insert applicable form of unfair competition from 15 U.S.C. § 1125(a)].
[Once the owner of a trademark has obtained the right to exclude others from using the trademark, the owner may obtain a certificate of registration issued by the United States Patent and Trademark Office. Thereafter, when the owner brings an action for infringement, the owner may rely solely on the registration certificate to prove that the owner has the right to exclude others from using the trademark in connection with the type of goods specified in the certificate.]
THE PLAINTIFF’S BURDEN OF PROOF
In this case, the plaintiff, [name of plaintiff], contends that the defendant, [name of defendant], has infringed the plaintiff’s trademark. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of a valid trademark and that the defendant infringed that trademark. 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.
[THE DEFENDANT’S BURDEN OF PROOF]
[The defendant contends that [the [registered] trademark is invalid] [,] [the trademark has been abandoned] [or] [insert other affirmative defense]. The defendant has the burden of proving by a preponderance of the evidence that [the [registered] trademark] is invalid] [,] [the trademark has been abandoned] [or] [insert 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 is invalid] [or] [insert other affirmative defense].]
[___________ is a person as that term is used in these instructions.]
This instruction is tailored to fit a classic trademark infringement case. If the case involves trade dress, trade name, or other unfair competition claims, this instruction will require modification.
Throughout these instructions, wherever the term "trademark" is used, as is appropriate for the facts of the case, a more specific term, such as "service mark," or "collective mark" or "certification mark" may be substituted.
See generally 15 U.S.C. § 1051 et seq. The statute now protects both actual and intended use of a trademark. See 15 U.S.C. § 1051(b). In a case involving merely intended use of a trademark, these instructions must be tailored to fit the case.
A corporation is a person. See Instruction 4.2 (Liability of Corporations–Scope of Authority Not In Issue).
A trademark infringement case can be brought under three different causes of action: (1) statutory trademark infringement, (2) common law trademark infringement, and (3) unfair competition.