15.5 INFRINGEMENT—ELEMENTS AND BURDEN OF PROOF—TRADEMARK (15 U.S.C. § 1114(1))
On the plaintiff’s claim for trademark infringement, the plaintiff has the burden of proving each of the following elements by a preponderance of the evidence that:
1. [describe the plaintiff’s symbol or term] is a valid, protectable trademark;
2. the plaintiff owns [describe the plaintiff’s symbol or term] as a trademark; and
3. the defendant used [describe symbol or term used by the defendant] [a mark similar to [describe the plaintiff’s symbol or term ]] without the consent of the plaintiff in a manner that is likely to cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or approval of the goods.
If you find that each of the elements on which the plaintiff has the burden of proof has been proved, your verdict should be for the plaintiff. If, on the other hand, the plaintiff has failed to prove any of these elements, your verdict should be for the defendant.
This instruction sets out the general standard for trademark infringement liability under the Lanham Act. Modify this instruction as necessary when other marks (e.g., service mark, collective trade or service marks, or certification trade or service marks), are at issue by inserting such terms in lieu of the word "trademark" in this instruction. Where the defendant’s infringing action consists of using a mark similar, but not identical to the plaintiff’s, particular care should be exercised in the third numbered element of this instruction. Gracie v. Gracie, 217 F.3d 1060, 1066–67 (9th Cir.2000) (when instructing jury to consider if defendant "used" plaintiff’s mark, trial court should make it clear jury can consider whether the marks were similar). The second bracketed phrase in the third numbered element of this instruction may be a sufficient specification in most cases involving defendant’s use of mark similar, rather than identical, to the plaintiff’s. In cases involving confusion "on the part of someone other than the purchaser" that occurs after the point of sale, the third numbered element may be modified to make reference to members of the relevant public beyond the direct purchaser. See Abercrombie & Fitch, Inc. v. Moose Creek, Inc., 486 F.3d 629, 635 (9th Cir. 2007).
Consult the following instructions in order to explain the elements identified by this instruction: Instruction 15.7 (Infringement—Elements—Presumed Validity and Ownership—Registered Trademark) Instruction 15.12 (Infringement—Elements—Ownership—Generally); Instruction 15.16 (Infringement—Likelihood of Confusion—Factors—Sleekcraft Test).
The statute requires that the mark be either (1) used in commerce or (2) placed on goods intended to be used in commerce. 15 U.S.C. § 1114(1). Because the "commerce" requirement is jurisdictional, that element need not go to the jury.
"It is not necessary for plaintiff in a trademark or unfair competition case to prove any past or present actual damages since one of the major benefits of injunctive relief is that it can be obtained prior to actual damage so as to prevent that damage from occurring." 5 McCarthy on Trademarks and Unfair Competition § 30:2 (4th ed. 2007).
Generally, the burden of proof in infringement rests with the plaintiff. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir.2002) ("Overall, the plaintiff retains the ultimate burden of persuasion in a trademark infringement action, namely proof of infringement. A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.").
Although 15 U.S.C. § 1114(1) provides protection only to registered marks and 15 U.S.C. § 1125(a)(1) protects against infringement of unregistered and registered marks, trade dress and false advertising, the Ninth Circuit has explained that "[d]espite these differences, the analysis [for infringement] under the two provisions is sometimes identical." Brookfield Communications, Inc., v. West Coast Entertainment Corp., 174 F.3d 1036, 1046–47 n.8 (9th Cir.1999) (trademark infringement elements under either §1114 or §1125(a) involve a plaintiff showing 1) that defendant used a mark confusingly similar to 2) a valid, protectable trademark 3) that was owned by the plaintiff.).