Defenses to a Trademark Infringement Action: The Fair Use Defense

trademarkThere can be instances where one can use the trademark of another and that use will be classified as “fair use.” Usually, marks have two meanings, a trademark meaning and an independent or surname descriptive meaning. It is important to note that under trademark law only the trademark meaning is given protection. In other words the owners of marks not prevent others from using their trademark when it is only used to describe a product or its geographical location, or to identify its producer. This constitutes “fair use.”

Under the Lanham Act, a trademark is “any word, name, symbol, or device, or any combination thereof… Used by a person… to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and indicate the source of the goods, even if that source is unknown.” 15 U.S.C. §1127.

Descriptive Use

Descriptive use is exactly as it sounds—it allows someone to use a registered trademark as a description for product if that use is done in good faith. To be classified as descriptive use, a person must make use of the other person’s trademark,

  1. other than as a mark,
  2. in a descriptive sense, and
  3. in good faith.

15 U.S.C. §1115(b)(4). An example of when a company succeeded with fair use argument is Cosmetically Sealed Inds., Inc. v. Chesebrough Pond’s USA Co., 125 F.3d 28 (2d Cir. 1997). In that case, Cosmetically Sealed, the manufacturer of a lip gloss had registered a trademark “sealed with the kiss.” Cosmetically Sealed been sued by Chesebrough Ponds USA when it used “seal it with the kiss” in connection with the promotional display for its lipsticks. The Second Circuit affirmed the District Court’s granting of summary judgment for Chesebrough holding that the phrase “seal it with the kiss” was an invitation to consumers to test its lipsticks durability and was not being used to identify its product, therefore holding that Chesebrough’s use of “seal it with the kiss” was descriptive.

Reference to the Owner or the Owner’s Goods or Services

One can use a trademark when referring to the owner of a Mark or the owner’s goods or services. However, the use must be done for purposes of identification only. A case on this topic is informative of this defense:

In Clark and Olive Enterprises, Inc. v. America Online Inc., 2000 WL 33535712, Clark and Olive Enterprises sued America Online for using the quote if you dance to the Beatles, cruise in the Thunderbird, are tuned into Dick Clark, you have earned…100 hours free….” The plaintiff contended that using the mark Dick Clark would confuse consumers into thinking that Dick Clark somehow promotes AOL. The court disagreed dismiss the action saying that the use of Dick Clark’s name was only used to identify the individual and did not suggest sponsorship.

Comparative Advertising

In comparative advertising companies can compare and contrast the qualities of various goods or services. As long as the advertising is not a misrepresentation and does not create reasonable likelihood of confusion for consumers, then using a competitor’s trademark in your advertising is protected. Cuisinarts, Inc. v. Robot-Coup Int’l Corp., 509 F.Supp. 1036 (S.D.N.Y 1981). Although many people view this is unfair, the Federal Trade Commission actually encourages the naming and referencing to competitors comparative advertising because it promotes healthy competition. 16 C.F.R. §14.15(b).

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