By: Emily Wolfford

The Lanham Act,[1] also known as the Trademark Act of 1946 (“the Act”), is an act that has long been disputed for clarification.[2] The Act was created with the intention to prohibit any false designation of a trademark for the purpose of preventing confusion for consumers in the market. This is most often seen in what is known as “passing off” where Company A uses Company B’s logo to “pass off” Company A’s goods as the goods of Company B.[3]

In Eli Research, LLC v. Must Have Info, Inc.[4], two parties further disputed over clarification of the Act. On September 27, 2013, American Academy Holdings (AAH) and Eli Research, Inc. initiated a lawsuit against Must Have Info, Inc. for alleged trademark infringement under the Act. The plaintiff’s sought an injunction against two former employees of Eli Research for their misuse of private company information and practices including the use of the company logo for purposes of passing off.[5] The plaintiffs discovered the use of the mark by the defendants when the wife of an employee for the plaintiff received an email advertising the defendant’s company with the exact logo owned and registered by the plaintiffs.

The Act finds a defendant liable for trademark infringement if the defendant uses “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark” without express consent.[6] The plaintiff bears the burden of proving a valid mark and the defendant’s use thereof.

The Act clearly defines a trademark as “any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others.”[7] This is notably different from either a service mark, used to promote services, and a certification mark; however, the Act seeks to protect any registered mark.[8] The first disputed issue brought by the defendant’s under the Act is for clarification on what constitutes a valid mark.[9] The defendant’s argue that the plaintiff’s do not in fact own a valid mark and rather the mark is owned by another company and plaintiffs merely have express consent to use the mark.[10] The courts did not find this persuasive and further clarified that the Act simply calls for the ownerships of a valid mark and evidence of registration of a mark, whether it be trademark, service, or certification, is sufficient to pass the first hurdle.

The main dispute was whether or not actual confusion created in the market from the defendant’s use of the plaintiff’s mark.[11] The court notes that to prove the likelihood of confusion in the market no proof of actual confusion is necessary and can be shown though a variety of ways, including misaddressed letters.[12] With this in mind, the plaintiffs argue that due to the similarities in the products offered by both companies and the email seen by the plaintiff’s wife that caused her confusion, there is a high possibility that there could be confusion from future consumers in the market.[13] Ultimately, the court held that although plaintiffs do hold a valid mark there is not enough evidence to determine that there is actual confusion in the market because there had been no proof of customer’s confused by the advertisement or any adverse effects on the plaintiff’s business.[14] Confusion from an email received by the plaintiff’s wife was not enough evidence to prove general customer confusion and there was no proof that use of the logo created a risk of passing off.

This holding shows that, although the court has previously determined actual proof of confusion is not required, the courts will likely still hold that there is no confusion without actual proof. However, this is unfair to business’ that are merely fortunate enough to catch the use of the logo at an early stage before confusion was apparent. The Act was created to protect consumers and businesses from confusion in the market by preventing this confusion from happening in the first place. The courts holding seems to go directly against this purpose and further complicates the process of protecting business trademarks to the point where consumers must first be confused.[15] The court has yet to adopt a bright line rule indicating what exactly is enough proof to show actual confusion in the market. The court has ruled that there does not need to be actual proof of confusion, so perhaps the next step is to outline what constitutes enough proof for a business to protect their trademarks from market confusion to further uphold the values of the Act and protect businesses from consumer confusion. The holding in Eli Research further demonstrates that the long disputed Lanham Act still requires further scrutiny by the courts for the best consumer and business protection.

[1] 15 U.S.C.A § 1125.

[2] 150 Cong. Rec. S9518 (indicating a need to further clarify the act through the passing of several amendments).

[3] See Kurtis A. Kemper, annotation, Application of the Doctrine of “Reverse Passing Off” Under Lanham Act, 194 A.L.R. Fed. 175 (explaining in great detail the harms of passing off to businesses and consumers, and further clarifying how the Act protects businesses from the risk of trademark infringement).

[4] Eli Research, LLC v. Must Have Info, Inc. No. 2:13-cv-g95-FtM-28CM, 2015 U.S. Dist. LEXIS 136149, *3 (M.D. Fla. Oct. 6, 2015).

[5] Nathan Hale, Medical Newsletter Co. Hit With $16M Trade Secret Suit, Sept. 30, 2013,

[6] Eli Research, LLC v. Must Have Info, Inc. 2015 U.S. Dist. LEXIS 136149 at *7-8 (quoting Homes & Land Affiliates, LLC. v. Homes & Loans Magazine, LLC, 598 F. Supp. 2d. 1248, 1258-259 (M.D. Fla. 2009)).

[7] Id. (citing 15 U.S.C. § 1127).

[8] Id. at *8-9.

[9] Id. at *9-10.

[10] Id. at 10.

[11] Id.

[12] Id. (citing Frehling Enters. v. Int’l Select Group, Inc., 192 F.3d 1330, 1340 (11th Cir. 1999)).

[13] Id. at 20.

[14] Id. at 22.

[15] Eli Research, LLC v. Must Have Info, Inc, 2015 U.S. Dist. LEXIS 136149 at *22.

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