Trademark Law

Federal False Advertising and False Designation of Origin Claims

Section 43(a) of the federal Lanham Act, 15 U.S.C.S. § 1125(a)(1), provides that a plaintiff may file false advertising or false designation of origin claims against:

(1) Any person who, on or in connection with any goods or services, or any cont ainer for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which–

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.

Requirements

To prove a false advertising claim, the plaintiff must show that “commercial advertising or promotion” by a defendant was false. While the statute does not define “commercial advertising or promotion,” case law provides a four-part test to determine whether representations by the defendant are “commercial advertising or promotion.” The plaintiff must show that defendant’s representations are:

1. Commercial speech

2. By a defendant who is in commercial competition with the plaintiff

3. For the purpose of influencing consumers to buy defendant’s goods or services

4. Disseminated sufficiently to the relevant purchasing public.

To support a false designation of origin claim under Section 43(a), the plaintiff must show that confusion between trademarks is likely. Proof of actual confusion as to affiliation between the trademarks and plaintiff or defendant must be shown before plaintiff is entitled to damages. However, prior to submitting proof of actual confusion, a plaintiff may be entitled to injunctive relief if plaintiff can show that there is a likelihood of confusion as to who is associated with particular trademarks.

Copyright 2012 LexisNexis, a division of Reed Elsevier Inc.