The Lanham Act is found at 15 U.S.C. Sections 1114, 1124 and 1125. 15 U.S.C. Section 1114 provides in pertinent part: (1) Any person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. Section 1114. Although the terms "reproduced," "counterfeited," "copied" or "imitated" are used, Section1114 has not been construed so narrowly. See Adolph Coors Co. v. A. Genderson & Sons, Inc., 486 F.Supp. 131, 134-135 (Colo. 1980). Rather, Section 1114 has been liberally construed to prevent misappropriation of the goodwill of the owner of the trademark. See id. Another provision of the Lanham Act, found at 15 U.S.C. Section 1125, states in pertinent part: (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container 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, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 15 U.S.C. Section 1125.
Likelihood of Confusion
Likelihood of confusion forms the gravamen for a trademark infringement action. See King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089 (10th Cir. 1999) (citing 15 U.S.C. Sections 1114(1), 1125(a). The existence of actual confusion is not necessary to prove a likelihood of confusion. See, e.g., King of the Mountain, 185 F.3d at 1092; Sally Beauty Co., Inc. v. BeautyCo., 304 F.3d 964 (10th Cir. 2002); Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 640 (1st Cir. 1992). In fact, proof of actual harm is not required to find a violation of the Lanham Act. Societe Des Produits Nestle, at 640. "By its very nature, trademark infringement results in irreparable harm because the attendant loss of profits, goodwill and reputation cannot be satisfactorily quantified and thus the trademark owner cannot adequately be compensated." Id. Moreover, irreparable harm flows from an unlawful trademark infringement as a matter of law. Id.
Legal Requirements to Establish a Non-Genuine Product
One of the most valuable and important protections afforded by the Lanham Act is the right to control the quality of the goods manufactured and sold under the holder's trademark. El Greco Leather Prod. Co. Inc. v. Shoe World, Inc., 806 F.2d 392, 395 (2d Cir. 1986). Distribution of trademark holder's goods, bearing the trademark holder's mark can violate the Lanham Act if the goods do not meet the trademark holder's quality control standards. Monsanto Co., 13 F.Supp.2d at 355. In fact, distribution of a product which does not meet the trademark holder's quality control standards may result in the devaluation of the mark by tarnishing its image. Id. Courts will find a "material difference" if the goods are "seconds of inferior quality" or have been tainted by mishandling. See Graham, 916 F.Supp. at pp. 915-916 (citations omitted). Because consumer preferences are fickle and are as diverse as the human imagination, it is impossible to devise an exhaustive list of the types of differences between products that can be considered material for the purposes of the genuineness test. See e.g., Iberia Foods Corp. v Rolando Romeo, 150 F.3d 298, 304 (3rd Cir. 1998). Any differences that are likely to damage goodwill developed by the trademark owner can be deemed material. Id. (emphasis added). Because a myriad of considerations may influence consumer preferences, the threshold of materiality must be kept low to include even subtle differences between products. See Davidoff, 263 F.3d at 1301-1302. Therefore, when determining whether genuine issues of material fact exist as to the "genuineness" of the products sold by Defendants, even subtle differences must be considered.
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