Lanham Trademark Act


(a) Civil action
(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 -
(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, or
(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,
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.
(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.
(b) Importation
Any goods marked or labeled in contravention of the provisions of
this section shall not be imported into the United States or
admitted to entry at any customhouse of the United States. The
owner, importer, or consignee of goods refused entry at any
customhouse under this section may have any recourse by protest or
appeal that is given under the customs revenue laws or may have the
remedy given by this chapter in cases involving goods refused entry
or seized.
(c) Remedies for dilution of famous marks
(1) The owner of a famous mark shall be entitled, subject to the
principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person's commercial
use in commerce of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the distinctive
quality of the mark, and to obtain such other relief as is provided
in this subsection. In determining whether a mark is distinctive
and famous, a court may consider factors such as, but not limited
to -
(A) the degree of inherent or acquired distinctiveness of the
mark;
(B) the duration and extent of use of the mark in connection
with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the
mark;
(D) the geographical extent of the trading area in which the
mark is used;
(E) the channels of trade for the goods or services with which
the mark is used;
(F) the degree of recognition of the mark in the trading areas
and channels of trade used by the marks' owner and the person
against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks
by third parties; and
(H) whether the mark was registered under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal
register.
(2) In an action brought under this subsection, the owner of the
famous mark shall be entitled only to injunctive relief unless the
person against whom the injunction is sought willfully intended to
trade on the owner's reputation or to cause dilution of the famous
mark. If such willful intent is proven, the owner of the famous
mark shall also be entitled to the remedies set forth in sections
1117(a) and 1118 of this title, subject to the discretion of the
court and the principles of equity.
(3) The ownership by a person of a valid registration under the
Act of March 3, 1881, or the Act of February 20, 1905, or on the
principal register shall be a complete bar to an action against
that person, with respect to that mark, that is brought by another
person under the common law or a statute of a State and that seeks
to prevent dilution of the distinctiveness of a mark, label, or
form of advertisement.
(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing
goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.

The above act is the law that will be used to prosecute you - if you are indeed serving your product (Brand X) when a specific product (Red Bull) is requested.

Note - the act does not make allowances for signs declaring your intent to deceive the consumer. Nor does the act make allowances for a sign declaring that only one energy drink is served. If you are knowingly serving a product other than the requested product - you are violating the law.

its not about your sign edude.

Its about serving X when a customer specificly orders a NAMED product!

If it was a generic term, like Vodka and Energy Drink then your fine to serve WHATEVER you want.

Ya know like a "GIN n TONIC". any kind of GIN and any kind of TONIC.

You know your wrong and if you seem to graps on a thread of scepticism that we might be wrong then the courts will CUT that thread and convince you real quick!

CASE CLOSED!!!!

Guys it is this simple.... you want cutomers to be told again and again what is served and what is not! The sign does that!!! It tells you what will be served regardless of what you order!

"False or Misleading representation of Fact"

We are FACTUALLY TELLING you that you can order ANYTHING you want.... However we only carry our own energy drink and no matter what you order... it is our drink you will receive.

Would you all agree that if the bartender spoke those words to EVERY customer that things would be ok???? YES or NO?

not those words ...but to make PERFECTLY sure (with no assumtions) the customer know what they are being served!

So yes ...speak to every customer ..... hand every customer a business card with every drink .... hand them a sales sheet whatever!.... it just cant be a sign that leaves doubt as to if someone read it!

Wrong Toby......... !!!!!

The words DO NOT have to be spoken!!!

Posting a sign is NOTIFICATION to the customer of serving procedures!

On the sign there are no FALSE OR MISLEADING REPRESENTATIONS OF FACT!!! NONE

If you would like Toby I will send you a sign when I get back from Aruba. I am leaving for a week to enjoy the islands and do some fishing. But I will be more than happy to send you a sign when I get back. Later! I know your gonna miss me!

If you're serving Brand X when Red Bull is called for: you're guilty of misrepresenting the product served.

You were bragging about SP being all over the Jersey shore by summer - it's almost May and I have yet to see a single bottle. Was that story told with the same relevance as your BIB story?

I have been a trademark attorney for 16 years and I have been asked to take a look at this post and a few others and give my opinion. First of all both sides have made interesting points and I can tell you I have litigated both sides in Federal Court. What I can tell you for sure is that Passing Off is a very difficult thing to prove in court. The reason is that you must show evidence of willful and deliberate deception. I agree that the way energydude has decided to go to market with his new product is less than honorable. However, it is not illegal and would be an uphill battle in any court. Resonable is word often used in these types of cases and "reasonable" applies heavily in this case as well. A sign telling customers what they will be served no matter what they order could easily be argued as "reasonable effort" to inform customers the product they will be served.

It would be difficult to argue that a customer does not know what they are being served when a sign is clearly posted telling them what they will be served. It is likely that a judge would see no "reasonable" effort is being made to trick or deceive customers.

Please keep in mind the word "reasonable". What a judge looks at in these types of cases is a bar or clubs intention or methods used to conceal what is being served. A 2 ft. sign telling a customer what they are going to get no matter what they order shows no "reasonable" intent to defraud.

It may be seen as slick or "shaddy" as a few of you have said, but from what I have read not unlawful.

OK Matlock....your opiion is duly noted and is only takin as serious as edude sales approach!

Good luck in your "pay by phone" legal practice!

Evaluating the merits of a lawsuit based on the posts of this forum is futile and ridiculous.

What I've been saying all along is that when a customer specifically orders a RB beverage or whatever, it is illegal for a bar to knowingly switch the order with a house brand or a BIB substitute, without first advising the customer that the requested “trademarked” product is unavailable and proposing an alternative. Such switching practice is illegal and proving intent is a matter for the court to deal with.