Ark. Code Ann. § 4-71-212 (2026)
Infringement
Subject to the provisions of § 4-71-216, any person who shall commit the following acts shall be liable in a civil action by the registrant for any and all of the remedies provided in § 4-71-214, except that under this section the registrant shall not be entitled to recover profits or damages unless the acts have been committed with the intent to cause confusion or mistake or to deceive:
- To use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this subchapter in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or
- To reproduce, counterfeit, copy, or colorably imitate any such mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of such goods or services.
History. Acts 1997, No. 1109, § 12.
Research References
ALR.
World wide web domain as violating state trademark protection statute or state unfair trade practices act. 96 A.L.R.5th 1.
Reverse confusion doctrine under state trademark law. 114 A.L.R.5th 129.
Validity, Construction, and Application of State Trademark Counterfeiting Statutes. 63 A.L.R.6th 303.
Case Notes
Descriptive Marks.
Even though protection under this section did not apply to descriptive marks, and the name for which defendant had obtained certificates from the Arkansas Secretary of State were for a descriptive mark, the district court would not address whether or not the mark was protectible under state law because plaintiff had not asked the district court to cancel the state trademark registrations, nor had it engaged in the proper procedures for mounting a challenge to the registrations under state law. Ark. Trophy Hunters Ass'n v. Tex. Trophy Hunters Ass'n, 506 F. Supp. 2d 277 (W.D. Ark. 2007).
Dominant Feature.
To constitute infringement under former § 4-71-112, it is not necessary that the defendants appropriate the whole of plaintiff's mark; imitation need only be slight if it attaches to the salient features of the plaintiff's mark. Gaston's White River Resort v. Rush, 701 F. Supp. 1431 (W.D. Ark. 1988) (decision under prior law).
Although the court must consider the design as a unit, the court may analyze each feature to determine its significance to the unit as a whole and to ascertain the dominant feature of the mark. There is no flat rule as to what will prove to be the dominant feature of a composite design; however, the dominant feature is that which is most noticeable and most unavoidably attracts the attention of the public. Gaston's White River Resort v. Rush, 701 F. Supp. 1431 (W.D. Ark. 1988) (decision under prior law).
Evidence.
Cause sounding in Arkansas trademark infringement must meet the test required by the federal Lanham Trade-Mark Act provisions for unfair competition and trademark infringement. In order to establish its claim that the defendant has competed unfairly and infringed its rights in the design mark, plaintiff must show that: (1) it owns the design mark and has used the mark in a trademark sense, (2) the design was used without its consent, and (3) such use is likely to cause confusion. Gaston's White River Resort v. Rush, 701 F. Supp. 1431 (W.D. Ark. 1988) (decision under prior law).
Defendant's trademark infringement counterclaim under this section was dismissed with prejudice because even though the Arkansas Secretary of State had granted it trademark certificates, allowing it to use a name that was the same name that plaintiff, an informal hunting club, used, defendant did not provide any evidence showing that plaintiff planned to use the name in competing trade shows or magazines or that plaintiff had any intent to cause consumer confusion, mistake, or deception. Ark. Trophy Hunters Ass'n v. Tex. Trophy Hunters Ass'n, 506 F. Supp. 2d 277 (W.D. Ark. 2007).
Injunctions.
A nonprofit Arkansas corporation had superior common law rights in its six county region and was a state-registered user of a service mark and, therefore, was entitled to an injunction against infringement of its service mark by a national association within such region; however, the nonprofit Arkansas corporation was not entitled to a statewide injunction because it presented no evidence of concrete plans to expand elsewhere in the state and there was no evidence to support the possibility of donor confusion. Nat'l Ass'n for Healthcare Communs. v. Cent. Ark. Area Agency on Aging, Inc., 257 F.3d 732 (8th Cir. 2001).