Defenses To Trademark Infringement

Trademark Infringement Defenses

You may be sued for using a trademark or service mark that is owned by another individual or business. Trademark laws give the owner of a trademark the exclusive rights to use that trademark. Businesses or individuals use trademarks to make their products or services distinguishable from other similar products or services. You should talk to an experienced lawyer if you are facing a trademark infringement lawsuit.

What Are Trademarks?

A trademark is a design, word or a combination of words, or symbols that identify a product, service, or brand. Companies use logos, phrasings and other designs so that they can stand out from their competitors. In other words, trademarks make it easier for public consumers to recognize your goods and services and are not misled or confused. You have to register your trademark through the U.S. Patent and Trademark Office if you want exclusive usage rights in relation to specified services or products. If you don’t register your trademark, anyone can use it for their products and services. But registering a trademark does not provide a guarantee that someone will not try to use it illegally. 

Trademark Infringement

Defenses To Trademark InfringementWhen someone uses a registered trademark owned by someone else on competing services or goods without authorization, it is called trademark infringement. The owner of a trademark can sue the infringing user of the mark or symbol for damages to deter anyone else from using the trademark. Plaintiffs or trademark holders can pursue the civil lawsuit in federal court not with the U.S. Patent and Trademark Office. 

 However, you cannot claim trademark infringement just because another party is using a trademark that has a similar design or phrasing to yours. Since infringement is a civil claim, the plaintiff or the trademark holder has the burden of proof. There are a number of elements that go into proving trademark infringement. You must convince the court that the trademark being used by the defendant would cause confusion about the source of the product or their own approval of the product. In other words, the plaintiff’s claim must meet the “likelihood of confusion” standard in order to get a favorable ruling in court. 

Trademark Infringement Defenses

There are a number of defenses available to defendants in infringement cases. Affirmative defenses include parody and fair use. The parody defense simply involves using the mark for parody purposes just like big corporations are parodied in comedy shows. This defense only works if the parody of a product or service is not overtly linked to commercial use.

The fair use defense can be divided into two different types, descriptive fair use and nominative fair use. Descriptive fair use involves using another party’s trademark to describe the user’s products or services, rather than the user using the trademark to indicate the source of the products or services.  Nominative fair use allows you to use another party’s trademark to refer to that party’s actual goods and services that are associated with the mark. For example, you can refer to a pair of shoes as Nikes instead of just calling them a pair of shoes because the shoes are actually made by Nike.  Other defenses in an infringement case include “unclean hands”, estoppels, doctrine of laches, and congesting registration.

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