15.13 INFRINGEMENT—ELEMENTS—OWNERSHIP—GENERALLY

The law entitles the trademark owner to exclude others from using that trademark. 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. [A person also acquires the right to exclude others from using a trademark if industry or public usage creates, for a majority of [relevant] consumers, an association between the person and the mark prior to the alleged infringer's use.]

[If you find the plaintiff's [describe trademark] to be valid [that is, [inherently distinctive]] you must consider whether the plaintiff used the [describe trademark] as a trademark for plaintiff's [identify the plaintiff's product] before the defendant began to use the [describe trademark] to market its [identify the defendant's product] in the area where the plaintiff sells its [identify the plaintiff's product].]

[A trademark is "used" for purposes of this instruction when it is transported or sold in commerce and the trademark is attached to the product, or placed on its label or container [or if that is not practical, placed on documents associated with the goods or their sale].]

[If the plaintiff has not shown by a preponderance of the evidence that the plaintiff used [describe trademark] before the defendant's use of [describe trademark], then you cannot conclude that the plaintiff is the owner of the trademark [for purposes of Instruction [insert number of instruction regarding Infringement—Elements—Presumed Validity and Ownership—Registered Marks, e.g., 15.8].]

Comment

Sometimes it is necessary for the court to place before the jury the issue of mark ownership. When the jury is to determine the ownership of a mark between manufacturer and distributor, see Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) (reviewing jury instructions and factors for determining such mark ownership). See Comment following Instruction 15.17 (Trademark Ownership—Merchant or Distributor). See also Instruction 15.16 (Trademark Ownership—Licensee). In such a case, this instruction should be revised accordingly. The determination of priority of ownership is a question for the jury when this is a genuine issue of material fact in a case. See Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1093-94, 1098-99, 1106-07 (9th Cir. 2004) (expressing no opinion as to whether evidence presented in case was sufficient as matter of law to establish that mark was famous for application of trademark priority principles).

In trademark law, the standard test of ownership is priority of use. See Sengoku Works, Ltd., 96 F.3d at 1219 (9th Cir. 1996). "To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Id.

This instruction is for use in a case involving an inherently distinctive mark. It reflects the traditional concept that trademark rights belong to the party who first makes an actual use of the trademark in business. See Rolley v. Younghusband, 204 F.2d 209 (9th Cir. 1953). However, if the trademark at issue is not inherently distinctive (but its validity was shown by proof of it acquiring secondary meaning), this instruction is not appropriate. In such a case, priority is established by the party who first uses the mark with secondary meaning. Accordingly, the plaintiff must prove the existence of secondary meaning in its trademark at the time and place that the junior user first began use of that mark. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970).

In cases when the validity of the trademark is a result of its acquiring secondary meaning (e.g., a descriptive mark with secondary meaning), add the following in lieu of the third and fourth paragraphs:

If the plaintiff's [describe trademark] is not inherently distinctive, but the plaintiff has shown that the trademark is descriptive and that the trademark has acquired secondary meaning, the plaintiff has the burden of showing by a preponderance of the evidence that the plaintiff's [describe trademark] had gained secondary meaning before the defendant first began to use the [describe trademark].