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What Are The Defenses to Trademark Infringement?

What Are The Defenses to Trademark Infringement?
Hendershot, Cannon & Hisey, P.C.

Trademarks and other forms of intellectual property are what distinguish brands and products from others. Be it words and phrasing or recognizable designs and logos, trademarks allow people to identify companies and their uniquely created products and services.

While there are important steps to take when safeguarding these identifiable marks and reducing risks for disputes and litigation, having a trademark in and of itself doesn’t guarantee protection against infringement. Companies actively protect their brand and interests when by claiming their exclusive rights to a trademark are infringed upon.

Though trademarks provide protections, simply owning a trademark doesn’t mean anything with the slightest similarity to the trademark’s designs and words constitutes infringement. That’s because infringement, at its very basic core, is a civil claim in which the plaintiff has the burden of proof. Additionally, defendants may have options for raising legitimate defenses against trademark owners who file claims of infringement.

Trademark Infringement Defendants: Understanding Your Case

Whether you’re a small-time entrepreneur with big goals, a fast-growing startup, or an established company, understanding how trademarks work and what rights and options you have when a raising a defense is vital to protecting your company. Here are some important concepts to understand if a claim of trademark infringement has been made against you:

Trademarks – In short, trademarks are any words, symbols (and in some rarer circumstances unique shapes or colors of products) which distinguish a brand and their products from the products of others. Registered trademarks, like other intellectual property protections, are preemptive measures which provide exclusive rights to that distinctive mark. They also ensure public consumers are able to recognize goods and services from a certain source or company, and are not confused or misled.

Infringement defined – Trademark owners can sue others for infringement under the federal Lanham Act, but their claims must meet the “likelihood of confusion” standard. This means the use of the trademark in question would cause consumers confusion about the source of the product or their own approval of that product. To determine whether any plaintiff alleging infringement meets that standard, courts consider a number of factors, such as:

  • Strength of the mark
  • Proximity of the goods/services
  • Similarities between the marks
  • Proof (evidence) there was actual “confusion”
  • Similarities in how goods / services are marketed
  • A typical consumer’s degree of caution relative to the good / service
  • the intent of the defendant

There can be quite a large spectrum in these cases. Using the exact same mark on the same type of product is clearly infringement. Naming your company “Apple” and selling digital phones or laptops would likely cause any reasonable consumer confusion. On the other end, using the same term or mark for a completely unrelated product would not. Your “Apple Auto Parts” company, for example, is easily distinguishable from “Apple Computers.”

In between those two extremes lie many trademark infringement cases which can be quite complex and nuanced. In these matters, courts will apply the factors for determining the likelihood of confusion to the specifics of the case. There may also be trademark cases involving claims of trademark dilution or disparagement, if a mark is considered “famous.”

Trademark Infringement Defense: Affirmative Defenses & More

Defendants accused of trademark infringement have options for a defense. While those options vary depending on the circumstances and facts involved in a case, they generally include:

Affirmative Defenses

Parody – If you enjoy Saturday Night Live, you’re likely away of how trademarks can be used for the purpose of parody. If you were to watch an SNL sketch which mentions Verizon and a shows a salesperson selling a product with absurdly fast 400G (as compared to 4G) technology, there’s little if any likelihood for confusion that SNL makes or sells such products.

In trademark cases, courts have upheld First Amendment rights permitting certain parodies of trademarks which aren’t overtly tied to commercial use. Some courts have applied the standard for likelihood of confusion, and others have expressly held the First Amendment trumps trademark law, at least in some cases. Though parody is a defense to infringement, there are provisions for disparagement in federal trademark law and potential causes of action for slander if the use of another’s trademark is excessively disparaging or harmful.

Fair Use – The “fair use” defense has evolved into two different types of fair use:

  • Descriptive fair use – The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning (which is when consumers associate a particular term or mark with a particular product provider or brand). This usually happens when marks also have descriptive attributes. The company which makes Sweet Tarts candy, for example, was unsuccessful in an infringement action against another company which used “sweet-tart” when advertising its juice, which arguably had a sweet and tart taste. You can use another’s trademark for your own goods or services if it is descriptive fair use.
  • Nominative fair use – Another form of the fair use defense is called nominative use. Nominative use is when another’s trademark is used for the purpose of the mark owner’s product, not the user’s own product. It’s best illustrated in comparative advertising and the media. Coca-Cola may compare it’s product to Pepsi, and a local news station can report on things like an event being held at a Starbucks. When defendants prove their use of a trademark was in reference to the mark owner’s products or services, it becomes the plaintiff’s burden to prove any likelihood of confusion. Courts may also apply a likelihood-of-confusion test specific to nominative fair use, which asks: (1) Is the product / service readily identifiable with trademark use? (2) Was the mark used more than reasonably needed to identify the owner? and (3) Did the use of another’s trademark falsely suggest the user is endorsed or sponsored by the trademark owner?

Other Trademark Infringement Defenses

In addition to affirmative defenses, there are also other ways to defend against claims of trademark infringement, including equitable doctrine defenses and challenges involving certain aspects of trademark law. These include:

  • Doctrine of Laches – Requires a plaintiff to bring a timely claim for preliminary injunction when they knew or should have known of infringement.
  • Estoppel – Also known as acquiescence, estoppel involves a plaintiff implicitly or explicitly permitting use of its mark.
  • “Unclean Hands” – The doctrine of “unclean hands” may relate to a plaintiff’s illegal or egregious conduct, such as extreme and oppressive demands or false statements that marks are registered when they are not.
  • Contesting registration – Newly registered trademarks, typically those registered for 5 or less years, can potentially allow defendants in claims to content the owner’s right to exclusive use of the mark in its infancy.

Call (713) 909-7323 to Speak With a Texas Business Litigation Lawyer

Taking any approach to defending against a trademark infringement lawsuit requires a meticulous assessment of the facts, intimate understanding of the laws and available options, and the ability to execute strategies effectively in and out of the courtroom. If you have questions about a trademark infringement case, Hendershot, Cannon & Hisey, P.C. is here to help. Our nationally recognized lawyers are based in Houston, and serve clients across Texas. Call (713) 909-7323 to speak with a lawyer.

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