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Court Rules That Failure To Give Statutory Notice Of A Trademark Registration May Limit Monetary Recovery Under Lanham Act Section 43(a)

The U.S. District Court for the Central District of California held in Coach, Inc. v. Asia Pacific Trading Company, No. 09-35, 2009 WL 3808550 (C.D. Cal. Nov. 12, 2009), that the statutory notice requirements of Lanham Act Section 29 [15 U.S.C. § 1111] for a registered trademark may also apply in cases where monetary damages are sought under Lanham Act Section 43(a) [15 U.S.C. § 1125(a)] based on the unregistered rights for the same registered trademark.

Lanham Act Section 29 limits recovery of damages or profits to an accounting period after the accused infringer receives actual notice of the federal registration of the trademark allegedly infringed unless the registrant provided statutory notice such as by using the "®" symbol with the trademark in connection with the goods. Because the Section 29 requirement of notice only applies to registered marks, it would not be a limitation on the recovery of damages for infringement of an unregistered mark under Lanham Act Section 43(a). But where a trademark registrant alleges a violation of both its registered and unregistered rights for the same mark, it was an unsettled question of law whether the notice limitation imposed by Lanham Act Section 29 could be avoided by attributing the damages to its unregistered rights under Lanham Act Section 43(a) instead of its registered rights for that same mark. For example, if "BRAND X" were a registered trademark, but the "®" symbol was never used with that mark, could pre-notice damages still be recovered based on the unregistered rights for the same registered trademark under Lanham Act Section 43(a)?

In Coach, damages were sought for infringement of U.S. Registration No. 2,832,589 for its Signature "C" logo, as well as for violating its unregistered rights for the same Signature "C" logo under Lanham Act Section 43(a). Sunglass Experts, Inc. moved for summary judgment that Coach was not entitled to damages under the Lanham Act because Coach had failed to give statutory notice for its registered Signature "C" logo as required under Lanham Act Section 29, and Sunglass Experts had not sold any of the accused products after receiving actual notice of the trademark registration when it was sued for trademark infringement. There was no dispute that the statutory notice requirements of the Lanham Act did not apply to any claims made under state law.

The District Court held that the plain language of Lanham Act Section 35(a) requires that a registrant cannot avoid the statutory requirements of Section 29 by alleging damages under Lanham Act Section 43(a). The Court noted that Lanham Act Section 29 does not distinguish between the kinds of statutory infringement that a registrant proves. Rather, Lanham Act Section 29 simply states that no profits and damages shall be recovered "under the provisions of this Act" without giving statutory notice or having actual knowledge of the registered trademark.

Coach did not dispute that statutory notice had not been given, but asserted that Sunglass Experts had actual knowledge of the trademark because Sunglass Experts was aware of Coach's products in general. The District Court found that this was insufficient as a matter of law to establish actual knowledge of the Coach's trademark "registration" under Lanham Act Section 29.

Even though Coach alleged a violation of its registered rights as well as its unregistered rights under Lanham Act Section 43(a) for the same mark, the District Court held that Coach was not entitled to recover damages under the Lanham Act, including under Lanham Act Section 43(a), for any alleged infringement prior to the filing of its lawsuit because Coach failed to follow the statutory notice requirements of Lanham Act Section 29.

Plaintiffs Coach, Inc. and Coach Services, Inc., were represented by Brent Blakely and Cindy Chan of the Blakely Law Group.

Defendant Sunglass Experts was represented by James Juo of Fulwider Patton LLP. Fulwider Patton LLP is a full service intellectual property law firm serving clients in all areas of intellectual property including patents, trademarks, copyrights, Internet domain name disputes, trade secrets and unfair competition.