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September-October, 2011 Vol. 101 No. 5 Back to TMR Main Page
 
A Verdict for Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis
 
 
This article explores whether intent should play any role in
determining infringement, that is, whether a defendant’s intent to deceive consumers makes it more likely, from an empirical
standpoint, that such consumers will actually be deceived. The author concludes that intent should be excised from the confusion analysis. Part II summarizes the current role of intent in determining likelihood of confusion—which is that every federal court, to varying degrees, considers it relevant—and describes how U.S. law got to this point. Part III discusses why an accused infringer’s intent does not shed light on the crucial issue of whether confusion is likely among consumers, suggests that trademark law is anomalous in its continued regard of intent evidence as relevant and that evidence of intent is both irrelevant and highly prejudicial, thus running afoul of basic evidentiary principles. Part IV identifies some of the practical effects of intent’s current role in determining infringement under U.S. law. Part V proposes the elimination of intent as a factor to be considered in determining likelihood of confusion. It also discusses the practical issues surrounding implementation of that proposal,
advocates restricting any discussion of intent to the judge-directed equitable issues (largely concerning remedies) that may arise, and proposes dealing with such issues, if implicated, only after liability is determined.
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