False Advertising and the Lanham Act

Thomas M. Williams is a partner in the Chicago office of Winston & Strawn LLP, where he specializes in trademark and unfair competition litigation, as well as trademark prosecution and counseling. His practice entails representing clients in federal district and appellate courts, and before the Trademark Trial and Appeal Board of the USPTO, as well as in alternative dispute resolution proceedings. He has extensive experience representing clients in unfair competition disputes involving advertising claims and passing-off. Thomas Williams has written many articles and is a frequent speaker on the subject of trademark and unfair competition law and practice.

INTRODUCTION; CHAPTER ONE: FALSE ADVERTISING UNDER SECTION 43(A); I. ACTIONABLE CATEGORIES; A. "NATURE, CHARACTERISTICS, QUALITIES, OR GEOGRAPHIC ORIGIN"; B. "GOODS, SERVICES, OR COMMERCIAL ACTIVITIES"; II. "FALSE ADVERTISING" DOES NOT INCLUDE "PASSING OFF"; III. DASTAR AND ITS PROGENY; CHAPTER TWO: STANDING UNDER SECTION 43(A)(1)(B); I. NO CONSUMER STANDING; II. COMMERCIAL ENTITIES' STANDING TO SUE; A. THE "COMPETITORS ONLY" JURISDICTIONS; 1. STRICT APPLICATION; 2. "WHEN" AND "WHERE" OF COMPETITION MAY BE DISPOSITIVE; B. THE SECOND CIRCUIT'S "REASONABLE INTERESTS" TEST; C. THE ANTITRUST-BASED APPROACH; III. ORGANIZATIONS AND TRADE GROUPS; IV. FOCUS ON THE DEFENDANT; V. CONCLUSIONS REGARDING STANDING; CHAPTER THREE: THE "SKIL TEST": PRIMA FACIE ELEMENTS OF A SECTION 43(A) FALSE ADVERTISING CLAIM; I. ESTABLISHING A FALSE ADVERTISING CLAIM UNDER SECTION 43(A): THE "SKIL TEST"; A. SKIL FACTOR 1: FALSE STATEMENT; 1. LITERAL FALSITY; A. ESTABLISHMENT CLAIMS; B. INDEPENDENT OR NON-ESTABLISHMENT CLAIMS; C. FALSE BY NECESSARY IMPLICATION; 2. MISLEADING CLAIMS; B. SKIL FACTOR 2: ACTUAL DECEPTION OR TENDENCY TO DECEIVE; 1. USING SURVEYS AND EXPERTS; 2. DIRECT EVIDENCE OF ACTUAL CONSUMER DECEPTION; 3. EXCEPTIONS TO THE "EXTRINSIC EVIDENCE" REQUIREMENT; C. SKIL FACTOR 3: MATERIAL DECEPTION; D. SKIL FACTOR 4: IN COMMERCE; E. SKIL FACTOR 5: PLAINTIFF'S INJURY; II. "BAD FAITH" REQUIRED FOR FALSE ADVERTISING CLAIMS INVOLVING PATENTS; CHAPTER FOUR: PLEADINGS; I. PLEADINGS IN SECTION 43(A) FALSE ADVERTISING CASES; A. RULE 8 AND IQBAL/TWOMBLY; B. IQBAL/TWOMBLY AND SECTION 43(A) FALSE ADVERTISING CLAIMS; C. RULE 9(B); D. OTHER JUDICIAL OBSERVATIONS REGARDING PLEADING REQUIREMENTS FOR SECTION 43(A) FALSE ADVERTISING CLAIMS; CHAPTER FIVE: DEFENSES; I. DEFENSES TO SECTION 43(A) FALSE ADVERTISING CLAIMS; A. TRUTH; B. PUFFERY; C. MOOTNESS; D. EQUITABLE DEFENSES; 1. LACHES; 2. UNCLEAN HANDS; E. COMMUNICATIONS DECENCY ACT; F. FIRST AMENDMENT; G. STATUTE OF LIMITATIONS; H. PREEMPTION AND COMPLIANCE WITH STATUTES AND REGULATIONS; CHAPTER SIX: INJUNCTIVE RELIEF; I. PERMANENT INJUNCTIONS; A. EBAY FACTOR 1: IRREPARABLE INJURY; B. EBAY FACTOR 2: INADEQUATE REMEDIES AT LAW; C. EBAY FACTOR 3: BALANCE OF HARDSHIPS; D. EBAY FACTOR 4: PUBLIC INTEREST; II. PRELIMINARY INJUNCTIONS; A. WINTER FACTOR 1: LIKELIHOOD OF SUCCESS; B. WINTER FACTOR 2: IRREPARABLE HARM; 1. COURTS ANALYZING EBAY/WINTER AND IRREPARABLE HARM; 2. PROVING IRREPARABLE HARM WITHOUT A PRESUMPTION; 3. CONCLUSIONS REGARDING IRREPARABLE HARM; C. WINTER FACTOR 3: BALANCE OF HARMS; D. WINTER FACTOR 4: PUBLIC INTEREST; III. SCOPE OF INJUNCTION; CHAPTER SEVEN: MONETARY RELIEF; I. MONETARY RELIEF UNDER THE LANHAM ACT; A. DEFENDANT'S PROFITS; B. PLAINTIFF'S DAMAGES; 1. CORRECTIVE ADVERTISING AS DAMAGES; 2. ENHANCEMENT OF DAMAGES; C. COSTS OF THE ACTION; D. ATTORNEY'S FEES; E. PREJUDGMENT INTEREST; F. NO PUNITIVE DAMAGES; TABLE OF CASES; INDEX