The opposition party did not introduce any direct evidence inferring elements of the Lanham Act, such as confusion relating to affiliation, connection, association, sponsorship, or approval in software trade. There was no evidence indicating that the parties' channels of trade or purchasers overlapped, so the PTO Trademark Trial and Appeal Board did not err in failing to consider such elements; they were not factors of record. M2 Software, Inc. v. M2 Communications, Inc. (2006) 450 F.3d 1378, 1383-85, 78 USPQ 2d 1944.
Likelihood of confusion weighed in the software trademark holder's favor, so the temporary restraining order against the defendant manufacturer applied extraterritorially; it established the likelihood that the holder would prevail on the merits and would suffer irreparable harm. Basis International Ltd. v. Research in Motion Ltd. (2011) 827 F.Supp.2d 1302, 1308-10.
The trademark owner proved Lanham Act violations by showing that it had prior rights to a mark for payroll and time clock software, and that a competitor used both an identical mark and a variation in its domain name, which was confusing to consumers. Punch Clock, Inc. v. Smart Software Development (2008) 553 F.Supp.2d 1353, 1358.
The defendant used the plaintiff's "Terrapin" name to promote the defendant's version of "LOGO" software as "original Krell/Terrapin LOGO," which was likely to cause confusion with the plaintiff's sales of its "Terrapin" brand of "LOGO" software. Therefore, the injunction was valid. Terrapin Software, Inc. v. Krell Software Corp. (1991) 22 USPQ 2d 1299 at pp. 8-11.
The defendant sold software and equipment bearing a mark the PTO had found confusingly similar to the plaintiff's registered mark; the plaintiff adequately stated claims of infringement under both the Copyright Act and the Lanham Act because the defendant used the mark in commerce, as stipulated in 15 USCS § 1127. Specht v. Google, Inc. (2009) 660 F.Supp.2d 858, 863-64.
Initial interest confusion indicates a Lanham Act violation and thus is actionable. Checkpoint Systems v. Check Point Software Technologies, Inc. (2001) 269 F.3d 270, 303-4, 60 USPQ 2d 1609.
The plaintiff's trademark-infringement and unfair-competition claims under 15 USCS §§ 1114 and 1125(a) are supported by the facts: the plaintiff's mark and the defendant's mark were similar, and evidence indicated actual confusion, although factors relating to market convergence were disputed. Checkpoint Systems v. Check Point Software Technologies, Inc., supra, 269 F.3d 270, 285-86.
B. Designation of origin
C. Famous and distinctive