Subject to the provisions of § 59.1-92.15, any person who (i) uses in a manner likely to cause a consumer confusion, mistake, or deception as to the source or origin of any goods or services, without the consent of the owner of a registered mark, any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of such goods or services or (ii) reproduces, counterfeits, copies or colorably imitates a registered mark and applies such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, advertisements, or any item intended to be used in a manner likely to cause a consumer confusion, mistake, or deception as to the source or origin of any goods or services in connection with the sale, offering for sale, distribution, or advertising of such goods or services shall be liable in a civil action by the owner of a registered mark for any and all of the remedies provided in § 59.1-92.13, except that under this subdivision the owner shall not be entitled to recover profits, damages, or attorney fees unless the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive.
1998, c. 819; 2008, cc. 759, 800; 2011, c. 801.
Notes of Decisions
Swatch, S.A. v. Beehive Wholesale, L.L.C., 888 F. Supp. 2d 738 (E.D. Va. 2012).
· cites it 12× “§ 1125 (c); Count V — common law unfair competition; and Count VI— trademark infringement under Va.Code § 59.1-92.12. BACKGROUND A. The Parties and their marks Plaintiff Swatch is a manufacturer of watches, clocks, and parts therefor, along with jewelry, books, and magazines for…”
Select Auto Imports Inc. v. Yates Select Auto Sales, LLC, 195 F. Supp. 3d 818 (E.D. Va. 2016).
· cites it 4× “non-jury trial of Select Auto Imports, Incorporated’s (“Select Auto Imports”) claims against Defendants Yates Select Auto Sales, LLC and Jeffrey Lee Yates (collectively, “Yates Select Auto Sales”) seeking both injunctive relief and monetary damages for trademark infringement and…”
Combe Inc. v. Dr. Aug. Wolff GMBH & Co., 382 F. Supp. 3d 429 (E.D. Va. 2019).
“§ 1071 (b)(1) and asserting additional counts of trademark infringement, unfair competition, and dilution under the Lanham Act; trademark infringement under the Virginia Trademark and Service Mark Act § 59.1-92.12, et seq. ; and trademark infringement and unfair competition…”
Radiance Found., Inc. v. Nat'l Ass'n for the Advancement of Colored People, 25 F. Supp. 3d 865 (E.D. Va. 2014).
“§ 59.1-92.12© (West 2011). 9.For a trademark to be used “in connection with the sale, offering for sale, distribution, or advertising of goods or services,” the alleged infringer must offer goods or services in commerce under the trademark without the consent of the mark holder.”
Old Town Funeral Choices v. N. Virginia Funeral Choices, 55 Va. Cir. 459 (Fairfax Cir. Ct. 2000).
· cites it 8× “12, a person is liable for infringement of a Virginia-registered service mark if that person uses the mark in Virginia without the registrant’s consent if “such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services.”
JTH Tax LLC v. DM3 Ventures, Inc. (E.D. Va. 2020).
· cites it 8× “§ 1367 (a) (“[I]n any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within such original jurisdiction that they form part of the…”
JTH Tax LLC v. DM3 Ventures, Inc. (E.D. Va. 2021).
· cites it 4× “The Amended Complaint alleges trademark infringement pursuant to Virginia Code § 59.1-92.12 and common law unfair competition.”
Simply Wireless, Inc. v. T-Mobile US, Inc. (E.D. Va. 2022).
· cites it 4× “§ 1114 (Count I); (2) trademark infringement under Virginia Code § 59.1-92.12 (Count II); (3) unfair competition, passing off, trade name infringement, trademark infringement and false designation of origin under Section 43(a) of the Lanham Act, 15 U.”
Vape Guys, Inc. v. Vape Guys Distrib., Inc. (E.D. Va. 2020).
· cites it 2× “Procedural History Plaintiff brings the following claims in its Complaint: Count I: Infringement of Federally Registered Trademark Count II: Federal Unfair Competition and False Designation of Origin Count III: Violation of Virginia Code § 59.1-92.12 Count IV: Common Law Unfair…”
— Va. Code Ann. § 59.1-92.12(1) — 1 case
Old Town Funeral Choices v. N. Virginia Funeral Choices, 55 Va. Cir. 459 (Fairfax Cir. Ct. 2000).
“12, a person is liable for infringement of a Virginia-registered service mark if that person uses the mark in Virginia without the registrant’s consent if “such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services.”
— Va. Code Ann. § 59.1-92.12(2) — 1 case
Old Town Funeral Choices v. N. Virginia Funeral Choices, 55 Va. Cir. 459 (Fairfax Cir. Ct. 2000).
“12, a person is liable for infringement of a Virginia-registered service mark if that person uses the mark in Virginia without the registrant’s consent if “such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services.”
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