Trademark Litigators Should Take Care In Alleging 'Use Of Mark In Commerce' – The Split Between The Second And Sixth Circuits

The Second Circuit recently announced a split with the Sixth Circuit regarding the pleading requirements for trademark infringement under the Lanham Act, 15 U.S.C. §§ 1114, 1125. See Brown v. Harpo et al., 717 F.3d 295 (2d Cir. N.Y. 2013). In both Circuits, plaintiffs are required to allege, among other things, that the allegedly infringing mark has been "used in commerce." However, the Second and Sixth Circuits have different interpretations of what it means to use a mark in commerce for purposes of satisfying the Lanham Act. In Brown, Defendants argued that Plaintiff failed to allege that Defendants used the mark at issueas a trademark in commerce, an essential element of trademark infringement. Defendants relied on cases from the Second and Sixth Circuits in support of their position. The District Court agreed with Defendants and dismissed the case. On appeal, the Second Circuit disagreed and reversed the District Court, finding that Defendants had misinterpreted prior Second Circuit law by conflating two distinct concepts—use in commerce and use as a trademark in commerce. The appellate court explained that, when determining whether a mark is used in commerce, "we ask whether the trademark has been displayed to consumers in connection with a commercial transaction." Op. at 14. And when determining whether a mark has been used as a trademark, "we ask whether the defendant is using the 'term as a symbol to attract public attention.'" Op. at 13. The appellate court explained that the law is well settled in the Second Circuit, that "a plaintiff is not required to demonstrate that a defendant made use of the mark in any particular way to satisfy the 'use in commerce' requirement." Rather, the "use in commerce" requirement is met if the mark "is affixed to the goods 'in any manner.'" Op. at 13 (citing cases). The Second Circuit panel openly acknowledged that the Sixth Circuit does require plaintiffs to allege use of an infringing...