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Business Torts
Copyright 2016, Matthew Bender & Company, Inc., a member of the LexisNexis Group.

3-28 Business Torts 28.syn


Trademarks and Trademark Infringement


Joseph D. Zamore

Chapter Summary


This chapter of Business Torts discusses trademarks and trademark infringement. A "trademark" is any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by others. Trademark infringement occurs when an identical or similar mark is used on an identical or related product or service in a manner that creates a likelihood of confusion as to the source of that product or service.

The chapter first examines the nature and function of trademarks and their protection by the common law and by state and federal statutes. The chapter next considers trademark rights, which arise through use and federal registration, which establishes priority and provides constructive notice. The chapter then discusses the test for trademark infringement and how this test is applied by the courts. The chapter also explores the alternative causes of action under the Federal Trademark Dilution Act and the Anti-Cybersquatting Consumer Protection Act, which protects domain names. The chapter further considers infringement by "gray market goods." The defenses to a trademark infringement action are covered, including fair use, laches, unclean hands, fraud, abandonment, non-use, naked licensing, the statute of limitations, and nominative fair use. The chapter discusses trade dress infringement, distinctiveness analysis, and limitations on protection of functional and generic designs. The chapter concludes with a discussion of remedies for trademark infringement, such as injunction, damages, and defendant's profits.

Business Torts (Matthew Bender) provides extensive coverage of a variety of issues relating to important business torts, such as breach of fiduciary duty, including directors' and officers' liability; unjust dismissal; actions involving employment covenants not to compete; commercial defamation; deceptive advertising; interference with contract relations, prospective advantage, lawful business, and employment relations; trade secret misappropriation; antitrust violations; private RICO actions in the commercial context; trademark, copyright, and patent infringement; products liability; lender liability; liability for environmental impairment; and premises liability. It further provides guidance on obtaining insurance coverage for business torts through endorsements to comprehensive general liability policies or through separate, specialized policies.


Trademarks,Trademark Infringement,Federal Trademark Dilution Act,Anti-Cybersquatting Consumer Protection Act,Domain Names,Gray Market Goods,Lanham Act,Secondary Meaning,Trade Dress,Generic Mark,Fair Use,Unclean Hands,Fraud,Abandonment,Non-use,Naked Licensing,Nominative Fair Use


For a discussion of copyright infringement, see Chapter 29, Copyright Infringement.

For a discussion of patent infringement, see Chapter 30, Patent Infringement.

For a discussion of antitrust concerns, see Chapter 20, Business Torts and Antitrust.

For a discussion of consumer protection generally, see Chapter 19, State Consumer Protection Laws.


See Damages in Tort Actions (Matthew Bender) for in-depth legal and policy analyses of compensatory and punitive damages in personal injury, wrongful death, and property damage cases, plus case annotations to all jurisdictions and examples of illustrative awards and settlements.

See Trademark and Unfair Competition Deskbook (Matthew Bender) for expert guidance in the latest decisions and legislative enactments affecting trademark and unfair competition law, including discussion of trademark-related antitrust violations.

See Gilson on Trademarks (Matthew Bender) for comprehensive and current treatment of trademark law in the United States, with detailed analysis of infringement, false advertising, counterfeiting, dilution, and trademark law remedies; domain name registration and protection; and trademark practice forms.

See Federal Antitrust Law (Kintner) (Matthew Bender) for a comprehensive analysis of the development, current status, and application of antitrust law, focusing on nearly 75 years of Federal Trade Commission work; examinations of the FTC Act; FTC organization, enforcement, and regulatory procedures; deceptive nondisclosure; price advertising and savings claims; business and employment opportunities; and credit and collection practices.

See McGrady on Domain Names (Matthew Bender) for a practical resource for attorneys advising clients on issues and problems that arise in connection with domain names, including questions involving domain name disputes, registration, and maintenance.
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