Published on 07/06/2018 4:51 pm
5 Defenses to Trademark Infringement

The success of many businesses — from ambitious startups to large corporations — rests on the strength of their trademarks, and their ability to enforce those trademarks against potential infringement (and in some cases, dilution).  After all, the trademark portfolio of a business represents the power of its brand.

Given the importance of trademark enforcement, those who have had their trademark infringed upon want to aggressively pursue claims against the liable defendant.  There are a number of trademark infringement defenses that a plaintiff is likely to encounter, however.  With the aid of an experienced trademark attorney, you will have the legal resources at your disposal to navigate the trials and tribulations of litigation that is centered around infringement. 

Consider the following defenses.

Improper Conduct

Those who are attempting to enforce their trademark rights must act in a manner that is indicative of their good faith and honest intentions.  Improper conduct is an absolute bar to trademark enforcement.  For example, if a trademark owner engages in bad faith conduct by threatening the potential infringer (physically), or committing fraud related to trademark registration, then such conduct may preclude the trademark owner from successfully obtaining a remedy against the infringer. 

No Likelihood of Confusion

The very foundation of trademark infringement lies in the “likelihood of confusion.”  If the potential infringement is not likely to cause confusion among consumers (with regard to the source of the goods and services at-issue), then a claim for trademark infringement will not stand.

For example, if the two trademarks are sufficiently unique that consumers are not likely to be confused — perhaps one trademark is curved, and colorful, and the other trademark is sharp and black — then the court may determine that the infringing party did not create a likelihood of confusion.

Courts may weigh a number of different factors when considering whether there is a likelihood of confusion, including: a) the audiovisual similarity of the marks; b) the symbolic similarity of the marks; c) the closeness of the goods/services in terms of their product category or their industry; d) the relative strength of the original mark; e) branding and marketing similarities; and f) evidence of actual confusion, among others. 

Defendant Covered by Fair Use 

Fair use is perhaps the most common defense asserted in the trademark context.  Fair use applies when the infringer — without intending to confuse consumers, and without actually causing consumer confusion — makes use of the trademark at-issue for the purpose of its primary meaning (not its secondary, symbolic meaning).

For example, if you own a descriptive trademark for a specialty candy called “Sower Applez,” the defendant, another candy manufacturer, may claim fair use of the term “Sour Apple” to describe the flavor of one of their products. 

Invalid Trademark

Not all trademarks are valid — whether at the time of their creation, or at the time of the infringement. If the trademark was never actually enforceable due to it being generic, then the defendant cannot be found liable for infringement.  Given this possibility, it’s important for trademark owners to create marks that are inherently strong and are more likely to be enforced by a court.

Defendant Parodied the Trademark 

Parody is an absolute defense to trademark infringement, but the application of this defense has been somewhat mixed over the years.  Generally speaking, a parody will shield the infringer from liability if its use is not exclusively commercial in nature.  Courts must balance the right to expression under the First Amendment with the likelihood of confusion, among various other factors.

If you have any questions or concerns about the infringement of a trademark — whether you are the aggrieved party or the defendant — then we encourage you to contact a qualified Florida intellectual property attorney for further guidance.  Your attorney will evaluate the claims at-issue and work with you to develop a strategic plan going forward.

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