Trademark Infringement
What Defenses Are There to Trademark Infringement or Dilution?
When a lawsuit is brought against you or your company for trademark infringement or dilution, you should stop to take a look at if or how you used the registered trademark of someone else. A trademark attorney or patent infringement attorney may be necessary to explain what defenses are available to you and how they affect your use of a trademark. They can also help you better understand trademark enforcement.
Fair use defense
This defense is most often seen in cases where the mark being infringed on is classified as a descriptive mark. A descriptive mark requires the mark attain a secondary meaning beyond the mere description of the product. To describe a cereal as made with corn flakes is not a violation of any mark held by Kellogs ® for its cereal, Corn Flakes. In this scenario, the use of corn flakes is merely accessing the primary use of the term and does not infringe on any marks held by Kellogs ®. You may require the help of trademark attorneys to explain this defense in some less obvious fair use cases.
Nominal use defense
The courts have established this defense as a kind of offshoot of the fair use defense. The doctrine of nominal use recognizes that at times there is no way to identify a product or service other than through the use of the trademark. An example of nominal use is where a newspaper describes a rock band by its name. The name of the band is surely trademarked, but there is no way to identify the band without use of that trademark. Provided the infringer only uses the mark to the minimum extent necessary for identification to be made, and makes no claim that the infringer is endorsed by the trademark owner, this will likely qualify as a nominal use. To avoid being liable for a nominal use, contact a trademark or patent litigation attorney before any questionable descriptions being made.
Parody defense
The parody defense is best used when the parody is not for a commercial purpose. With a commercial purpose a parody can often lead to confusion by the average consumer. A non-commercial purpose parody is less likely to confuse consumers and is therefore more likely to enjoy the protection of a parody defense. This defense is rooted in the First Amendment and is an understanding that critics and commentators may employ a parody to critique an industry or product and by virtue of the parody, the trademark might be used.
If you have been accused of infringing on the trademark of another company, do not hesitate to contact an experienced trademark law firm to help guide you through a defense of your use.
Contact us for help with your trademark or patent
If you would like more information about how the trademark law firm of Lawrence E. Evans, LLC can protect intellectual property in your industry, please call (314) 303-1193 or contact us online.
