Intellectual Property Law

Eleventh Circuit: Trademark licensee liable for infringement when deviating from license

By McKee, Voorhees & Sease, P.L.C.

In a decision Tuesday, the Eleventh Circuit affirmed a district court's finding of trademark infringement against a trademark licensee.  The alleged infringer was actually licensed to use the mark owner's trademark, but did not use the mark as described in the license, instead using an abbreviated form.  As a result, the court affirmed the jury's finding of infringement and the associated damages award, reviewing its seven-factor likelihood-of-confusion test and emphasizing the factors of actual confusion and type of mark.  

However, the court vacated the district court's injunction against further infringement.  Because the infringer was actually licensed to use the mark as a whole, an injunction that prevented further use of the truncated mark "or any other similar marks" (language often used in trademark injunctions) was inappropriately broad, as it would prevent the infringer from using the licensed mark.

More detail of Aronowitz v. Heath-Chem Corp. after the jump.

[More]

Full post as published by FileWrapper on January 17, 2008 (boomark / email).