Tabberone is pronounced tab ber won
not tay ber own
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Tabberone is pronounced tab ber won |
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| This information is taken directly from the court opinion. It is not taken out of context nor is it altered. |
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From John Paul Mitchell v Pete N Larry's, 862 F.Supp. 1020 (W.D.N.Y. 1994)
Before assessing the merits and the particulars of such argument, it is helpful at this point to note the different approaches courts may take in this area of jurisprudence, differences that can often create a certain quantum of semantic confusion and can as well have potential substantive implications. The root of such potential confusion is the oft-repeated maxim that "[a]s a general rule, trademark law does not reach the sale of genuine goods bearing a true mark even though the sale is not authorized by the mark owner," Polymer Technology Corp. v. Mimran, 975 F.2d 58. 61 (2d Cir.1992). See, e.g., Matrix Essentials v. Emporium Drug Mart, 988 F.2d 587, 590 (5th Cir.1993); Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104 (4th Cir.1991); NEC Electronics v. Cal Circuit ABCO, 810 F.2d 1506, 1509 (9th Cir.),cert. denied, 484 U.S. 851, 108 S.Ct. 152, 98 L.Ed.2d 108 (1987). This, at least at first, appears to be a simple truism which plainly observes that, for a cause of action for trademark infringement to exist, the sale of marked goods must likely cause confusion, in addition to being without consent -- see Franchised Stores of New York, Inc. v. Winter, 394 F.2d 664, 668 (2d Cir.1968) (infringement exists when an individual uses a trademark without consent in connection with the sale of covered goods where such use is likely to cause confusion or to deceive purchasers). Of course, the mere fact that the sale is unauthorized -- "that is, without consent -- does not give rise to an infringement claim when the marked goods are genuine. See H.L. Hayden Co. of N.Y. v. Siemens Medical Systems, 879 F.2d 1005, 1023 (2d Cir.1989) ("the unauthorized sale of a trademarked article does not, without more, constitute a Lanham Act violation"). Bluntly and from a somewhat different angle, when the products are genuine -- "that is, identical and from the same origin -- there is nothing that really would confuse consumers, at least nothing that the Lanham Act deems protectable, and the requisite consumer confusion can not be demonstrated. This of course does not hold true when the products are not the same -- i.e., not genuine. Therefore, the pivotal question in the instant case becomes whether there exists a material difference between the products sufficient to create the likelihood of consumer confusion. See Societe Des Produits Nestle v. Casa Helvetia, 982 F.2d 633, 640 (1st Cir.1992) ("the presence or absence of a material difference -- a difference likely to cause consumer confusion -- is the pivotal determinant of Lanham Trade-Mark Act infringement in a gray goods case"); see also Orig. Appalachian Artworks v. Granada Electronics, 816 F.2d 68, 73 (2d Cir.) (the existence of a material difference that created 1024 the confusion was most important in finding infringement by gray market products), cert. denied, 484 U.S. 847, 108 S.Ct. 143, 98 L.Ed.2d 99 (1987). |
