In Versatop Support Systems, LLC v. Georgia Expo, Inc., Case No. 2018-1208 (Fed. Cir. 2019)(Full Opinion Available Here), the Federal Circuit reversed the District Court and found that a violation of trademark law was established on the admitted facts and infringing “use in commerce” is not limited to the uses identified in statute 15 U.S.C. §1127.
VersaTop and Georgia Expo are competitors in the “drape and rod” industry, where modular rod and pole structures form sectional spaces such as trade show booths. VersaTop uses the trademark PIPE & DRAPE 2.0. VersaTop sued Georgia Expo after Georgia Expo distributed advertising and brochures that contained the PIPE & DRAPE 2.0 trademark as well as pictures of the VersaTop coupler.
The District Court found that because Georgia Expo had not affixed the VersaTop trademarks to goods sold or transported in commerce, Georgia Expo had not violated VersaTop’s trademark rights. Georgia Expo relied upon the “use in commerce” statutory definition of 15 U.S.C. §1127 that requires that the mark be ‘placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce.’
The Federal Circuit found that the District Court incorrectly applied the definition of “use in commerce” and that the definition is included in the statute for purposes of trademark registration. The definition does not apply to trademark infringement. The Legislative reports explicitly recognized that the statutory definition of “use in commerce” applies to the use of a trademark for purposes of federal registration, and reaffirmed that an infringing use may be use of any type. McCarthy explained that the definition of use in commerce defines the kinds of use needed to acquire registrable trademark rights- not to infringe them. See 4 McCarthy on Trademarks and Unfair Competition §23:11.5 (5th ed. 2018).
Applying the Ninth Circuit law of Sleekcraft likelihood of confusion factors, the Federal Circuit found that Georgia Expo admitted that it used VersaTop’s marks in its advertising and brochures and that the parties compete directly. The type of goods sold by both parties was identical. Therefore, a finding of likelihood of confusion is appropriate where the marks are similar, the goods are related and the marketing channels overlapped.