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Trademark- Other Causes of Action

Although likelihood of confusion and dilution are the two main trademark-related causes of action, there exist a number of additional state-law causes of action under false advertising and state unfair competition law: passing off, contributory passing off, reverse passing off, and misappropriation. These claims might apply if the defendant is using someone else’s
unregistered trademark to misrepresent her goods or services or suggest an endorsement. The same defenses apply as in other trademark cases – ordinary descriptive uses of language, truthful comparative advertising, “fair use”, and the First Amendment.

Passing Off

Passing off occurs when the defendant tries to pass off its product as the plaintiff’s product. So, for example, manufacturing computers and claiming that they are made by Apple Computer, Inc.

Contributory Passing Off

Contributory passing off occurs when the defendant assists or induces another (typically a retailer) to pass of its product as the plaintiff’s product. So, for example, inducing a computer store to represent that the computers are made by Apple, when in fact they are not. Reverse passing off occurs when the defendant tries to pass off the plaintiff’s product as its own. So, for example, taking a computer made by Apple, removing the label, and putting on a different label.

Reverse Passing Off

“Reverse passing off” occurs when someone removes trademark information and distributes goods made by the trademark owner as if they were his own. Reverse passing off is sometimes described as a form of plagiarism, or seen in conjunction with copyright infringement claims.

Anticybersquatting Prevention Act & Uniform Domain Dispute Resolution

If someone is unhappy with another’s use of a domain name, he may make a claim under the “Anticybersquatting Prevention Act”, or “ACPA”, or refer to “cybersquatting”, the “Uniform Domain Dispute Resolution Policy”, or the “UDRP”. Trademark owners who feel that someone has registered a domain name that infringes their trademark may sue in federal court under the ACPA, or opt for an expedited, relatively inexpensive ($1500) procedure called the UDRP. In both instances, the complainant must show the user had a bad faith intent to profit from the domain name. There are defenses for noncommercial use.

Right of Publicity

Finally, senders of cease and desist letters sometimes complain of violations of their “right of publicity”. This is a concept developed state, not federal, law, and the elements vary greatly from state to state. Typically, violations of the right of publicity involve commercial uses of a famous person’s name or image; for example, putting a TV star’s face on your packaging label. The First Amendment and state constitutional protections for speech provide broad leeway for news reporting and commentary.

Last Modified: December 5th, 2009