Before Newman, Linn, and Dyk. Appeal from the United States District Court for the District of Oregon.

Summary: The Trademark Act’s definition of “use in commerce” as a requirement for obtaining a federal trademark does not limit the scope of the “uses” that may constitute trademark infringement.

VersaTop and Georgia Expo both produce and sell systems of modular rod and pole structures for assembly to form sectional spaces such as trade show booths. Georgia Expo distributed advertising and brochures containing VersaTop’s trademarks and pictures of a VersaTop product, and VersaTop filed a complaint against Georgia Expo for trademark infringement and patent infringement. The district court granted Georgia Expo’s motion for summary judgment of no trademark infringement, holding 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. VersaTop appealed the judgment of no trademark infringement.

The Trademark Act prohibits the use in commerce of a trademark by anyone other than the trademark owner when use of the mark would be likely to cause confusion as to the source or origin of goods. The Federal Circuit explained that the definition of “use in commerce” for purposes of trademark registration is different, and more limited than “use” in the context of trademark infringement. The Federal Circuit found that the district court’s decision was contrary to precedent because it incorrectly applied the “use in commerce” definition for a trademark registration in its trademark infringement analysis. The Federal Circuit determined that Georgia Expo’s use of VersaTop’s marks in its advertising and brochures did cause a likelihood of confusion, and that violation of the Trademark Act was established on the admitted facts. Accordingly, the Federal Circuit reversed, entered judgment in favor of VersaTop, and remanded for further proceedings.

Editor: Paul Stewart