Defenses to Trademark infringement

Fair Use

Fair Use allows competitors to use a trademark or trade name for comparative advertising.  To prove that the use of a famous mark is Fair Use, the user of the mark must show that the products or services in question is not readily identifiable w/o the use of the trademark,  that the use of the mark is reasonably necessary and that the use does not suggest sponsorship. 

Nominative Use

If the famous mark is being used to describe or refer to the owner’s product, such use is nominative.   To determine if the use is nominative consider whether the mark used only as reasonable necessary to describe its services or products, whether the product or service was readily identifiable w/o the use of the mark, and whether the use of the mark indicates sponsorship or endorsement.  In Playboy Enterprises v. Welles (see also summary), the court stated that so long as the meta tags give Internet users a better idea about the content of her Website, such is normative and therefore permissible.  To the contrary, in Victoria’s Secret Stores v. Artco Equipment Co., Inc. (see also summary), the court held that Artco Equipment use of Victoria’s Secret Trademark was nothing more than a “bait and switch” technique used to confuse consumers; therefore the use was not nominative.  

Collateral Use

If the famous mark is used to describe the products in which the user is dealing, such use is collateral. 

Parody/Satire

If the mark is used to make fun of owner’s product, such use is a parody.  Using a famous mark in parody is widely accepted.  If the use of the mark is to make of something other than the owner’s product, such use is a satire.  Unlike parody, the use of satire is not widely accepted.  When satire is used, it is important to determine whether the use of satire created consumer confusion.  Nevertheless, some states have right of publicity laws that permit the use of Satire. 

REFERENCES:

• 15 U.S.C.S. 1125 (c).

• Playboy Enters. V. Terri Welles, Inc., 78 F.Supp.2d 1066 (S.D. Cal. 1999).

• Victoria's Secret Stores v. Artco Equip. Co., 194 F. Supp. 2d 704  (May 27, 2002).

• Fair Use of Trademarks, at http://www.publaw.com/fairusetrade.html (last visited Apr. 11, 2005).