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Business Torts
UMKC School of Law
Abdel-Khalik, Jasmine C.

Ownership by Plaintiff
use by plaintiff
use by related companies/public use
Valid/Protectable Mark (registration creates presumption)
not functional
priority in use in commerce
Likelihood of Confusion
Defendant’s use in commerce 
1-800 Contacts v. WhenU.Com à Requires use “as a mark”
1-800 owned service mark “WE DELIVER. YOU SAVE.” It also owned “1-800CONTACTS”. 1-800 alleges that WhenU was violating its rights when it caused competitors pop-up ads to appear on desktops when users accessed 1-800’s website. (user searches for 1-800conntacts, “eye-care” is triggered, WhenU randomly selects from a number of pop-ups listed under “eye-care”)
A company’s internal utilization of a trademark in a way that does not communicate it to the public is analogous to an individual’s private thoughts about a trademark. Such conducts simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of the goods or services
J.G. Wentworth àEstablishing an “opportunity to reach consumers” =  Use
Defendant user of Google’s AdWords program purchased rights to display a link to their website when computer users searched for plaintiff’s website. Defendant also inserted plaintiff’s mark as “meta tags.”
The Lanham Act prohibits use “in commerce” of protected marks “in connection with the sale, offering for sale, distribution, or advertising of any goods or services” or “in connection with any goods or services.”
Purchase and/or use of a protected trademark providing for the opportunity to reach consumers crosses the line from internal use to use in commerce.
Likelihood of Confusion
“The scope of enforceability is measured by the scope of confusion”
– Quality Inns v McDonalds   
2nd Circuit “Polaroid” Factors
Strength of senior mark
                                                               i.      Inherent Strength (inherent distinctiveness)
1.      arbitrary and fanciful marks are due

                                                                      ii.      Sound
1.      ORKO v. ORKIN
                                                                                                                                    iii.      Meaning
1.      CHICKEN OF THE SEA (for tuna) v. TUNA O’ THE FARM (for chicken)
2.      CYCLONE for wire fencing v. TORNADO for wire fencing
3.      trade dress
a.       labels must be considered and are integral, if not dispositive, factors in determining overall similarity in trade dress.
4.      consider in conjunction with relatedness of goods
Proximity (Similarity) of products
                                                               i.      Products bearing similar marks are more likely to cause confusion if the products to which they attach are related