One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people.

Unfortunate, because this permission is frequently abused, especially by less experienced trademark counsel, or perhaps when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.

Permission to focus on intent is almost ubiquitous in trademark practice.

The fruits of proving intent can be rewarding. When we seek to establish cybersquatting or compel the transfer of an offending domain name, bad faith intent to profit is required. And, proving that an adversary lacked a bona fide intent-to-use a trademark can achieve cancellation of the resulting registration. Invalidating an opponent’s trademark for abandonment calls for proof of non-use coupled with no intention to resume use in commerce and in the ordinary course of trade.

Invalidating a trademark registration for fraud requires a specific intent to deceive. A defendant’s bad faith intent is often a gateway for a plaintiff seeking enhanced monetary damages and/or attorneys fees too. And, when a defendant willfully intends to trade on the reputation of a famous mark or willfully intends to harm the mark’s reputation, this opens the door to remedies beyond mere injunctive relief.

Even the pejorative “trademark bully” label — for which there is presently no specific cause of action or defense — garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.

When it comes to proving trademark infringement by balancing the many likelihood of confusion factors, the defendant’s intent can be relevant too, but mostly it ends up being a neutral factor. Having good faith does not insulate a defendant from trademark infringement if there is a likelihood of confusion. Having said that, many zealous advocates recognize that painting the defendant as a bad faith actor can tend to color the weighing of the other factors in the plaintiff’s favor, hence the temptation to use the hammer of intent in pounding every action as an evil nail.

Yet, a bad faith intent is rarely proven by an open admission or through some other similar Perry Mason moment. So, we end up proving the necessary intent through a series of objective facts that justify a reasonable inference of the requisite intent. It isn’t a perfect situation and unfortunately it may or may not yield the truth.

Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.

Here’s a thought to ponder: Driving down the highway yesterday, my family was convinced the car in the lane next to us wanted to enter our lane — the objective fact of the turn signal told us what was on the driver’s mind, or so we thought. After minutes of waiting for the driver’s movement into our lane of traffic, it never happened, and eventually he exited the highway in the opposite direction of the signal, who really knows why?

Imputing motives and intentions to people is a messy, dangerous, and emotional business, trademark types should honor the law’s permission to to explore proof of bad faith intent, but not abuse it.

  • The issue of intent as it pertains to fees awarded to prevailing defendants in “exceptional cases” under the Lanham Act came up recently in a case in Massachusetts. In a ruling out October 16, 2013 the Superior Court of Massachusetts awarded $500,000 for costs and attorneys’ fees incurred by a prevailing trademark defendant. Before granting that relief, the Court briefly summarized the federal circuit split over whether a full showing of bad faith is necessary to establish an “exceptional case” for a prevailing defendant seeking fees. Some circuits require a full showing of bad faith intent, others require only a showing of “something less than bad faith intent.” Ultimately, the Massachusetts court used a standard put forth by the Seventh Circuit to resolve the split – a standard based on the elements of abuse of process. The Massachusetts court, citing the Seventh Circuit, explained that under an abuse of process standard, “elaborate inquiry into the state of mind of the party seeking reimbursement of attorney’s fees should be avoided . . . It should be enough to justify the award [of attorney’s fees] if the party seeking it can show that his opponent’s claim or defense was . . . extortionate in character, if not provable in intention.” Elaborating on the abuse of process standard, the court explained further that “[t]he central element of abuse of process is the use of litigation for an ulterior purpose – that is, purpose other than than to achieve relief for the wrong alleged. The overall record of this case leaves no doubt that this is exactly what [Plaintiff] did; it subjected [Defendant] to protracted litigation and costly litigation not to protect the goodwill of its trademark from misappropriation, but to suppress criticism of [Plaintiff’s] principals and its corporate practices. The weakness of [Plaintiff’s] claims . . . is the strongest evidence of ulterior purpose.” Other factors the court noted include the economic disparity between the parties and bad behavior during discovery. The entire ruling can be read here: http://www.citizen.org/documents/Jenzabar-v-Long-Bow-Memo-Decision-Order-Attorneys-Fees.pdf

  • stevebaird

    Draeke, a timely update indeed, thanks for taking the time to share this recent decision!