Trademark Infringement Defense

Trademark infringement is the unauthorized use of another party’s valid trademark.  To establish a claim, there must be proof that (1) the trademark owner owns a valid and protectable trademark, and (2) there is a likelihood of confusion from the alleged infringer’s use of the owner’s mark in commerce.  This can be difficult to prove as not all marks are trademarkable.  When ruling as to whether a party is liable for infringement, courts analyze eight factors to determine whether there is a reasonable likelihood that consumers would be confused by the defendant’s use of the mark under the circumstances.

Infringement claims are fact-sensitive and require good legal representation to ensure a defendant has presented all information in its favor to contest liability.

Trademark dilution involves unauthorized use of a “famous” mark which “blurs” or “tarnishes” the mark and dilutes the value of the trademark. Blurring occurs when the distinctiveness of the brand is impaired by association with the other party’s use. Typically, the third party is using the mark for a different type of product or service. Tarnishment occurs when a mark similar to a famous mark harms the reputation of the famous trademark. This may be done when the similar mark is used to market an inferior product. In determining whether a mark is famous, courts look at multiple factors.

To avoid liability for infringement for using a mark, prior to being sued, a party can oppose another’s trademark registration. Generally, this occurs with newly registered trademarks. The opposing party can allege that the mark’s owner does not have the right to exclusive use of the mark yet. The United States Patent and Trademark Organization will then review the opposition and the filing party’s response to determine whether the mark at issue will be permitted to be federally registered.

The use of a trademark in the context of an artistic or editorial parody is permitted under the law. However, the use may not be closely tied to commercial use and it clearly will not lead to confusion. A typical example of parody would be making fun of a product in the context of an entertainment program.

The Fair Use Doctrine allows a party to use another party’s trademark in two instances. Descriptive fair use permits use of the mark as a descriptive term, rather than for its association with a brand, goods or services. Nominative fair use applies when the mark is used to refer to the actual product identified by a mark (i.e., the trademark is used to refer to the plaintiff’s product, not the defendant’s). Fair use may also apply where the trademark is used in the context of commentary or criticism. In all of these cases, consumer confusion is unlikely so infringement cannot be established.

Defendants can defend against a lawsuit by proving that the plaintiff engaged in certain types of wrongful conduct. These include the following:

• The plaintiff unreasonably delayed in bringing a timely claim when it knew or should have known of the defendant’s infringement.
• The plaintiff implicitly or explicitly permitted use of its mark by the defendant.
• Unclean Hands. This applies when the plaintiff engaged in illegal or egregious conduct, such as making fraudulent statements regarding their trademark.