Unfortunate, because this permission is frequently abused, especially by less experienced trademark counsel, or perhaps when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.
Permission to focus on intent is almost ubiquitous in trademark practice.
The fruits of proving intent can be rewarding. When we seek to establish cybersquatting or compel the transfer of an offending domain name, bad faith intent to profit is required. And, proving that an adversary lacked a bona fide intent-to-use a trademark can achieve cancellation of the resulting registration. Invalidating an opponent’s trademark for abandonment calls for proof of non-use coupled with no intention to resume use in commerce and in the ordinary course of trade.
Invalidating a trademark registration for fraud requires a specific intent to deceive. A defendant’s bad faith intent is often a gateway for a plaintiff seeking enhanced monetary damages and/or attorneys fees too. And, when a defendant willfully intends to trade on the reputation of a famous mark or willfully intends to harm the mark’s reputation, this opens the door to remedies beyond mere injunctive relief.
Even the pejorative “trademark bully” label — for which there is presently no specific cause of action or defense – garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.
When it comes to proving trademark infringement by balancing the many likelihood of confusion factors, the defendant’s intent can be relevant too, but mostly it ends up being a neutral factor. Having good faith does not insulate a defendant from trademark infringement if there is a likelihood of confusion. Having said that, many zealous advocates recognize that painting the defendant as a bad faith actor can tend to color the weighing of the other factors in the plaintiff’s favor, hence the temptation to use the hammer of intent in pounding every action as an evil nail.
Yet, a bad faith intent is rarely proven by an open admission or through some other similar Perry Mason moment. So, we end up proving the necessary intent through a series of objective facts that justify a reasonable inference of the requisite intent. It isn’t a perfect situation and unfortunately it may or may not yield the truth.
Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.
Here’s a thought to ponder: Driving down the highway yesterday, my family was convinced the car in the lane next to us wanted to enter our lane — the objective fact of the turn signal told us what was on the driver’s mind, or so we thought. After minutes of waiting for the driver’s movement into our lane of traffic, it never happened, and eventually he exited the highway in the opposite direction of the signal, who really knows why?
Imputing motives and intentions to people is a messy, dangerous, and emotional business, trademark types should honor the law’s permission to to explore proof of bad faith intent, but not abuse it.