Wis JI-Civil 2790

(Plaintiff) alleges that (defendant) has infringed (plaintiff)’s trade name. Trade names

are entitled to protection from infringement to protect the reputation and goodwill of the

trade name owner.

A trade name is a word or designation (symbol), or a combination of words or

designations, that is used in a manner that identifies a business and distinguishes it from

the business or enterprise of others.

To find infringement in this case, you must find first that (plaintiff)’s use of the name

“______________________” is a trade name; and, second, that the use of the name

“___________________” by (defendant) creates a likelihood of confusion among the

consuming public with (plaintiff)’s trade name, “__________________.”

A designation is protectable as a trade name only if the designation is distinctive.

Designations can be either inherently distinctive or can acquire distinctiveness, through

secondary meaning. Inherently distinctive designations are designations that are likely to

be perceived by prospective purchasers as symbols that indicate an association with a

particular source. Secondary meaning describes the function of identifying goods or

services with a particular or single source. A name that is inherently distinctive does not

require secondary meaning to be protectable. A name that is not inherently distinctive

requires secondary meaning to be protectable. Secondary meaning occurs when the

consuming public has come to recognize the trade name as one that identifies the business.

The consuming public must recognize the trade name as identifying and distinguishing a

(plaintiff)’s goods or services. Secondary meaning can be established through: direct

evidence, such as consumer testimony or consumer surveys, or through circumstantial

evidence, such as evidence of exclusivity, length and manner of the trade name’s use, the

amount and manner of advertising, amount of sales, market share, and number of

customers.

To constitute an infringement, it is not necessary that every word of the trade name be

appropriated. It is sufficient that enough be taken to deceive the public. If one word of the

trade name is the prominent portion, it may be given greater weight than surrounding

words.

(Plaintiff) and (defendant) do not have to be in direct competition for you to find

infringement.

[A designation that is understood by prospective customers to denominate the general

category of services or business with which it is used is a generic designation. The user of

a generic designation, for example, barber shop, lumber company, hospital, or plumber,

can never acquire rights in the generic designation as a trade name.]

Once (plaintiff) has established that the designation it seeks to protect is distinctive,

either inherently or through secondary meaning, it must prove that (defendant)’s use of a

similar designation will cause a likelihood of confusion. In determining whether there is

or was a likelihood of confusion between (plaintiff)’s [trade] name and (defendant)’s use

of “______________________________” you may draw on your common experience as

citizens of the community.

The factors you may consider in determining likelihood of confusion are:

• the degree of similarity between the names

• the similarity of the products and overlap of marketing channels

• the area and manner of concurrent use

• the degree of care likely to be used by consumers in selecting the (goods)

(services)

• the strength and distinctiveness of (plaintiff)’s name

• evidence of actual confusion, and (defendant)’s intent when selecting the name.

No one factor or consideration is conclusive. Each aspect should be weighed in light

of the total evidence presented at the trial. However, while actual confusion or deception

is not essential to a finding of trade name infringement, this evidence is entitled to

substantial weight.

SPECIAL VERDICT

Question 1: Did (plaintiff) establish that its use of the name “______________” is a trade

name?

ANSWER: ____________

Yes or No

If you answered “yes” to question 1, then answer the following question.

Question 2: Does (defendant)’s use of the name “________________” infringe

(plaintiff)’s trade name?

If you answered “yes” to question 2, then answer the following question.

Question 3: Was (defendant)’s infringement a cause of damages to (plaintiff)?

ANSWER: ____________

Yes or No

If you answered “yes” to question 3, then answer the following question.

Question 4: What sum of money, if any, do you award against (defendant) as damages

for the trade name infringement?

$ ____________________