15.6 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: 

     First, [describe the plaintiff’s symbol or term] is a valid, protectable trademark; 

     Second, the plaintiff owns [describe the plaintiff’s symbol or term] as a trademark;

     Third,  the defendant used [describe symbol or term used by the defendant] [a mark similar to [describe the plaintiff’s symbol or term]] in interstate commerce; and 

     Fourth, 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. 

Comment              

            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 and “services” in lieu of “goods.” When 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) (noting that, 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).

            To prove trademark infringement, a trademark holder must show that a defendant’s use of its trademark is likely to cause confusion, to cause mistake, or to deceive. See Adobe Sys. Inc. v. Christenson, 809 F.3d 1071, 1081 (9th Cir. 2015); see also Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074, 1079 (9th Cir. 2020) (holding that “a counterfeit claim requires a showing of likelihood of confusion under Section 1114.”). The second bracketed phrase in the third and fourth numbered elements 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 elements may be modified to reference 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). 

            “The intent of the Congress in passing section 43(a) was to create a right of action for a competitor to stop . . . unfair competition in interstate commerce.” U-Haul Int'l, Inc. v. Jartran, Inc., 681 F.2d 1159, 1162 (9th Cir. 1982). 

Consult the following instructions to explain the elements identified by this instruction: Instruction 15.8 (Infringement—Elements–Presumed Validity and Ownership– Registered Trademark); Instruction 15.13 (Infringement—Elements–Ownership–Generally); Instruction 15.18 (Infringement—Likelihood of Confusion—Factors—Sleekcraft Test). 

            “In trademark cases, it is not necessary for plaintiff to prove actual damage or injury to state a prima facie case of infringement. Injunctive relief does not require that injury be proven. . . . All that must be proven to establish liability and the need for an injunction against infringement is the likelihood of confusion.” 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 30:2.50 (5th ed. 2019). 

            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 Commc’ns, Inc., v. W. Coast Ent. Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir. 1999) (noting that trademark infringement elements under either § 1114 or § 1125(a) involve plaintiff showing (1) that defendant used mark confusingly similar to (2) valid, protectable trademark (3) that was owned by plaintiff).

Revised March 2024