What defenses can people use in trademark actions?

In our last article, What Can I Do If My Trademark Is Being Infringed?, we discussed the various options available to you if someone infringes upon or dilutes your trademark. Generally, you can sue to stop them from using the mark and to recover damages for the loss that the usage caused you. Now, we want to outline various defenses that you can raise if others bring an action against you.


Sometimes, you might need to use language or images to describe your goods or services. If those descriptions impinge upon the mark of another, you could still be able to shield yourself from liability by claiming fair use. To do this, you must prove that your usage was for descriptive purposes and did not have the function of a typical trademark (i.e. identify the source of goods or services). Additionally, no consumer confusion can result from your fair use of the mark. For instance, if a product is made wholly from wheat then saying it’s “whole wheat” would not infringe upon another product’s “Whole Wheat” mark. This makes sense because the former is not misappropriating the mark of the latter for purposes of identification; rather, it is merely describing its product and fairly using the same words to do so. See Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).


Nominative use resembles fair use. It allows individuals and entities to use the mark of another to identify and distinguish their own goods and services. Essentially, it admits that using the trademarks of others is necessary when discussing goods and services. However, there are some conditions for this nominative use: there can be no endorsement by the trademark and the use must be limited to the extent necessary for purposes of identification. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).


Courts also balance the interests of the First Amendment against trademark rights. In doing so, they often shield trademark transgressors from liability when their aims are journalistic, comedic, or anything similar. Generally, the less commercial their use is, the more protection they will be afforded. The courts have consistently ranked maintaining a strong American discourse as close to or as important as upholding the rights of trademark owners. Therefore, if defendants can show that they only used a mark in parody, then they might be able to defeat an infringement or dilution action. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987).

In the next article, we discuss the circumstances under which you can potentially lose a trademark.

Next: Can I lose a trademark? <

© 2016 John V. Robinson, P.C.

© 2016 John V. Robinson, P.C.