law/15usc1125.law

Source: law/15usc1125.law

Exact source text

law 15usc1125
cite 15 U.S.C. § 1125(a)
title False association and false advertising under subsection (a)
url https://www.neochart.com/catalog/federal/title_15/section_1125/title15_sec1125_08901a74b924/1125_false_designations_of_origin_false_descriptions_and_dil_0001/index.html
address catalog/federal/title_15/section_1125/title15_sec1125_08901a74b924/1125_false_designations_of_origin_false_descriptions_and_dil_0001/index.html
source ir/usc/title15.jsonl#title15_sec1125 sha1=2bae2ce63bce906159a7d568db3a60983e8ea06b chars=21823

claim mark-infringement : covered-defendant & domestic-use & commerce-use & protected-mark & likely-confusion & actionable-interest & !descriptive-fair-use & !state-immunity
gloss Section 1125(a)(1)(A) trademark/false-origin species. Protectable mark and confusion are conjunctive. This formula is not a claim that every false-endorsement plaintiff must own a registered trademark.

claim false-association : covered-defendant & domestic-use & commerce-use & false-association & actionable-interest & !state-immunity
gloss Section 1125(a)(1)(A) false affiliation, sponsorship or approval; includes appropriate false-endorsement claims, with injury/entitlement assessed under the applicable theory.

claim unregistered-trade-dress : covered-defendant & domestic-use & commerce-use & protected-mark & nonfunctional-dress & likely-confusion & actionable-interest & !state-immunity
gloss Section 1125(a)(3) expressly assigns nonfunctionality proof to the claimant. Product-design dress also needs acquired distinctiveness; mere novelty or copying does not establish source identification.

claim false-advertising : covered-defendant & domestic-use & commerce-use & commercial-promotion & false-fact & consumer-deception & materiality & commercial-injury & proximate-cause & !state-immunity
gloss Section 1125(a)(1)(B). Literal falsity and misleading truth are evidentiary alternatives within false-fact/consumer-deception, not substitutes for commercial injury. Direct competition is not a Lexmark standing requirement. Remedies have additional conditions.

element commerce-use : and
name Use in commerce connected with goods or services
text @82..394 | (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—
rule /f3d/921/1364-01 @15449..15774 | Contrary to this precedent, the district court in this case incorrectly applied the definition of "use in commerce" that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement. See Network Automation , 638 F.3d at 1144-45 ; Playboy , 354 F.3d at 1024 n.11.
gloss VersaTop rejects importing registration/affixation requirements into infringing advertising use. Current territorial limit: Abitron (2023) confines §1125(a)(1) to domestic infringing use in commerce; U.S. consumer confusion alone does not supply domestic conduct. Official update is recorded in NOTES, not silently attributed to the 2019 case.

element protected-mark : and
name Enforceable source-identifying mark or trade dress
text @195..262 | any word, term, name, symbol, or device, or any combination thereof
rule /f3d/932/0589-01 @5934..6141 | "To prevail on either claim, a plaintiff must establish that (1) its mark is protectable and (2) the defendant's use of the mark is likely to cause confusion among consumers." CAE, Inc. , 267 F.3d at 673-74.
variant inherent | Arbitrary, fanciful or suggestive source identifiers may be inherently distinctive.
variant acquired | Descriptive marks require secondary meaning; generic terms cannot be monopolized as marks.
variant product-design | Product-design trade dress requires secondary meaning; nonfunctionality is independently required.
not-required Federal registration as a categorical prerequisite to subsection (a) protection.
gloss Protectability is doctrinal; ownership/enforceable licensing rights, priority, distinctiveness and territorial scope must be established. SportFuel states the trademark species test, not a universal requirement for every subsection (a) theory.

element likely-confusion : and
name Likely consumer confusion about source or sponsorship
text @395..670 | (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,
rule /f3d/921/1364-01 @18544..19034 | These factors, as summarized in Au-Tomotive Gold , are "(1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) defendant's intent; (8) likelihood of expansion." 457 F.3d at 1075-76. The Ninth Circuit has emphasized that "the eight factors [ Sleekcraft ] recited are not exhaustive," and should be applied "in a flexible manner." Network Automation, 638 F.3d at 1145.
gloss VersaTop is a Federal Circuit decision applying Ninth Circuit law. The cited Sleekcraft factors are flexible, not a nationwide arithmetic formula. Actual confusion is relevant evidence but not mandatory proof of likely confusion. Remedies may require evidence beyond liability.

element false-association : and
name Misleading affiliation approval or sponsorship
text @395..670 | (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,
gloss Require a qualifying designation or representation likely to mislead about affiliation, connection, origin, sponsorship or approval. False endorsement may concern a persona rather than a plaintiff-owned registered mark. Dastar limits origin-of-goods theory to producers of tangible goods, not authorship of uncopyrighted ideas; copyright cannot be recreated through a false-origin label.

element nonfunctional-dress : and
name Claimant proves nonfunctionality
text @1372..1629 | (3) In a civil action for trade dress infringement under this chapter for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional.
rule /f3d/927/0486-01 @7169..7464 | At trial, Bodum was required to prove a number of elements for the jury to find trade dress infringement-that it owns a valid trade dress in the Chambord design, that the trade dress is not functional, and that A Top's SterlingPro was likely to cause consumer confusion as to its source. See id.
rule /f3d/927/0486-01 @8044..9018 | The Supreme Court has explained that " 'a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.' " Qualitex , 514 U.S. at 165, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives Labs., Inc. , 456 U.S. 844, 850 n.10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982) ). Even if a claimed trade dress does not satisfy this first test, "it can still be functional if it is a 'competitive necessity,' that is, if its exclusive use 'would put competitors at a significant non-reputation-related disadvantage.' " Arlington Specialties , 847 F.3d at 419 (quoting TrafFix Devices , 532 U.S. at 32-33, 121 S.Ct. 1255 ); see also Specialized Seating, Inc. v. Greenwich Indus., LP , 616 F.3d 722, 727 (7th Cir. 2010) (a design is functional where a product "looks the way it does in order to be a better [product], not in order to be a better way of identifying who made it").
gloss Nonfunctionality prevents permanent trademark monopoly on useful features. Bodum’s full functionality paragraph includes utilitarian and competitive-necessity tests; do not confuse usefulness of the underlying product with necessity of the particular claimed design.

element actionable-interest : and
name Entitlement to sue and protected commercial interest
text @870..988 | 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.
rule /f3d/920/0704-01 @11514..11870 | Here, applying the licensing agreement to this inquiry is a straightforward exercise. The plain language of the agreement demonstrates the parties' intent for Tillett to retain all ownership and enforcement rights. Kroma EU-while it may have other rights under the agreement-does not possess the ability to assert its rights in the mark in this proceeding.
gloss Kroma EU illustrates enforcement rights reserved to the licensor; mere economic interest is insufficient in that contractual setting. Article III injury and statutory cause-of-action entitlement are distinct. Lexmark’s specific commercial-injury test is set out separately for advertising.

element commercial-promotion : and
name Commercial advertising or promotion
text @674..869 | (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,
gloss Commercial speech disseminated to the relevant purchasing audience to influence buying. A false statement in any private dispute or investor communication is not automatically advertising. Genus’s old circuit formulation included competition; do not import that as a universal bar after Lexmark or later circuit decisions. Advertising/promotion remains an independent statutory requirement.

element false-fact : and
name False or misleading factual representation
text @267..386 | any false designation of origin, false or misleading description of fact, or false or misleading representation of fact
rule /f-supp-3d/378/0823-01 @20323..21188 | To state a false advertisement claim under the Lanham Act, a plaintiff must allege: "(1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by lessening of the goodwill associated with its products." Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc. , 758 F.3d 1069, 1071-72 (9th Cir. 2014) (citing Southland Sod Farms v. Stover Seed Co. , 108 F.3d 1134, 1139 (9th Cir. 1997) ).
variant literal-falsity | Objectively false factual statement, including unambiguous necessary implication where recognized.
variant misleading-truth | Facially true but misleading representation, normally requiring evidence of audience takeaway.
gloss The quoted Ninth Circuit test, reproduced in Genus, identifies deception, materiality, commerce and causal injury distinctly. Factual claims are assessed in context; nonverifiable puffery generally cannot be proven false.

element consumer-deception : and
name Judicial actual-deception or tendency-to-deceive requirement
text @674..869 | (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,
rule /f3d/928/0514-01 @4125..4449 | Under the Lanham Act, if a statement is "literally false," we presume that it actually deceived consumers. Wysong Corp. v. APN , Inc. , 889 F.3d 267, 270-71 (6th Cir. 2018). If a statement is merely "misleading," then Louisiana-Pacific must prove that it deceived a "significant portion" of reasonable consumers. Id. at 271.
gloss Louisiana-Pacific applies a presumption for literal falsity but demands audience evidence for a misleading statement; dissemination or intent to persuade alone does not prove deception. Injunction versus damages posture affects proof of injury and relief.

element materiality : and
name Judicial materiality requirement for purchasing decisions
text @674..869 | (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,
gloss Judicial element specified in the five-part Genus/Wells Fargo test under false-fact: the falsehood must matter to purchasing. Literal falsity does not by itself remove materiality from the claim. This is separate from proof that a statement is deceptive.

element commercial-injury : and
name Judicial zone-of-interests limit to commercial injury
text @870..988 | 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.
rule /us/572/0118-01 @19861..20047 | We thus hold that to come within the zone of interests in a suit for false advertising under § 1125(a), a plaintiff must allege an injury to a commercial interest in reputation or sales.
not-required Direct competition between plaintiff and defendant.
gloss Lexmark’s zone-of-interests inquiry limits the statutory cause of action. A business suing only as a disappointed purchaser is like an ordinary consumer; commercial loss must fit the protected interest.

element proximate-cause : and
name Judicial proximate-causation requirement
text @870..988 | 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.
rule /us/572/0118-01 @24018..24297 | We thus hold that a plaintiff suing under § 1125(a) ordinarily must show economic or reputational injury flowing directly from the deception wrought by the defendant's advertising; and that that occurs when deception of consumers causes them to withhold trade from the plaintiff.
rule /us/572/0118-01 @33497..33836 | The District Court emphasized that Lexmark and Static Control are not direct competitors. But when a party claims reputational injury from disparagement, competition is not required for proximate cause; and that is true even if the defendant's aim was to harm its immediate competitors, and the plaintiff merely suffered collateral damage.
gloss Direct injury is not synonymous with direct competition. Merely derivative landlord/supplier losses normally fail; Lexmark discusses the particular close causal linkage alleged by Static Control, not universal recovery for every upstream supplier.

defense descriptive-fair-use : defense
name Good-faith descriptive use other than as a mark
text @195..262 | any word, term, name, symbol, or device, or any combination thereof
xref 15 U.S.C. § 1115(b)(4) | Cross-sectional classic descriptive fair-use defense.
rule /f3d/932/0589-01 @7033..7251 | In short, to raise the fair use defense successfully, Gatorade must show that (1) it did not use "Sports Fuel" as a trademark, (2) the use is descriptive of its goods, and (3) it used the mark fairly and in good faith.
gloss This defense does not require defendant to prove absence of all confusion. Nominative use and expressive-use analysis are separate and jurisdiction-sensitive. Jack Daniel’s (2023) rejects the special Rogers threshold when the challenged designation is used as a mark for defendant’s own goods; parody may still affect confusion.

element relief : and
name Remedy-specific proof
text @870..988 | 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.
xref 15 U.S.C. §§ 1116–1118 | Injunction, profits/damages/costs, and destruction provisions; equitable and statutory conditions apply independently of the liability formula.
gloss Romag (2020): willfulness is not an absolute prerequisite to profits for §1125(a), though mental state remains important in equity. Do not transplant §1125(c) famous-mark/dilution requirements or §1125(d) cybersquatting into subsection (a).

element covered-defendant : and
name Statutory person including state entities and officials
text @990..1370 | (2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
gloss Subsection (a)(2) expressly includes states, instrumentalities and official-capacity employees. Statutory inclusion does not itself overcome sovereign immunity; apply state-immunity separately.

element domestic-use : and
name Judicial domestic infringing-use limit
text @178..194 | uses in commerce
xref Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023) | Section 1125(a)(1) extends only to claims where the infringing use in commerce is domestic. https://www.supremecourt.gov/opinions/22pdf/21-1043_7648.pdf
gloss Judicial territorial construction of the statutory use-in-commerce hook, shared across these (a)(1) claims. Domestic consumer confusion alone does not replace domestic infringing conduct. The Court did not comprehensively define every domestic-use scenario; the particular uses must be identified.

defense state-immunity : defense
name State sovereign immunity unless a valid route permits suit
text @990..1370 | (2) As used in this subsection, the term “any person” includes any State, instrumentality of a State or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
xref College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 666 (1999) | The Lanham Act's inclusion of states did not validly abrogate immunity for the false-advertising suit at issue, and engaging in regulated commerce was not constructive waiver. https://www.govinfo.gov/content/pkg/USREPORTS-527/pdf/USREPORTS-527-666.pdf
rule /us/527/0666-01 @40395..40820 | Concluding, for the foregoing reasons, that the sovereign immunity of the State of Florida was neither validly abrogated by the Trademark Remedy Clarification Act, nor voluntarily waived by the State’s activities in interstate commerce, we hold that the federal courts are without jurisdiction to entertain this suit against an arm of the State of Florida. The judgment of the Third Circuit dismissing the action is affirmed.
effect immunity-from-suit Applies only to a qualifying state defendant and suit; assess valid waiver and any available officer/relief route separately.
gloss Judicial constitutional limit, not a statutory exemption from (a)(2). Do not equate every local government or official with an immune state, or assume statutory coverage alone authorizes the requested remedy. College Savings Bank concerned misrepresentations of the state's own product; do not turn its fact-specific abrogation reasoning into a complete rule for all intellectual-property suits.