What can you do if you are being sued for trademark infringement? There are several actions you and your attorney can take depending on the circumstances of the use and the timing and tone of the claim.
There are two affirmative defenses: fair use and parody. In addition, there are other defenses called equitable doctrines, which includes laches, estoppel, and “unclean hands.”
Before moving to these defenses, here is a quick review of trademarks and trademark law.
A trademark is a word, symbol, or phrase used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.
Source of Trademark Law
The main federal statute in trademark law is the Lanham Act, which was enacted in 1946. The most recent important amendment was implemented in 2000 which restructured the Patent and Trademark Office to split the functions of patents and trademarks into separate operating units.
If a manufacturer or seller owns the rights to a particular trademark and is using it for its own product, it can sue other parties who subsequently use the same or highly similar trademark to label and distinguish their own goods for infringing on its rights to the use of the trademark.
The standard used to determine if infringement is whether there is a likelihood of consumer confusion between the products as to the source, sponsorship, or approval of those goods.
Defending Yourself against a Trademark Infringement Claim
Your choice of defense will depend on whether an affirmative defense is likely to clear you of infringement claims or if an equitable doctrine fits the situation better.
Affirmative Defenses against Trademark Infringement Claims
The Fair Use defense essentially states that your use of a particular trademark was not a designation or promotion of your own goods. You either used it for a purpose not normally made of that trademark, either descriptively or nominatively.
Descriptive use of a trademark is allowed if it is used in good faith for its primary meaning instead of the secondary meaning. There is a good example in the Tom Hanks - Meg Ryan movie: You’ve Got Mail. Ryan’s character accused Hanks’s of stealing the phrase “just around the corner" in promotional materials for his new bookstore, a direct competitor of her store, The Shop Around the Corner.
Hanks's character rightly points out that "around the corner" described where the entrance to his new store was. If Ryan’s character had trademarked that phrase (which, according to further dialog, she apparently did not), trademark infringement would not apply because the phrase was being used descriptively.
Nominative use describes the act of using a trademark to identify another producer’s products. So if you wrote a tour guide for Pittsburgh and used the trademark for the Penguins in part of the book, the hockey club cannot sue for infringement because you were simply using the name of their team to identify it. You were not using it to promote something different.
Another affirmative defense is that of using the trademark as part of a parody. If your parody is not tied too directly to commercial use, the courts hold that artistic and editorial parodies of trademarks serve the valuable function of criticism. In this case, you have some protection under the First Amendment.
Equitable Doctrine Defenses
Doctrine of Laches
The first equitable doctrine we will look at is called the Doctrine of Laches (pronounced “latches” or lay-chez). The Doctrine of Laches states that as soon as the plaintiff knows or should have known of possible infringement, that plaintiff has a duty to bring a claim for a preliminary injunction to stop further infringement in a timely fashion.
If there is any undue delay, the plaintiff’s claim of irreparable injury is weakened. Damages or other monetary relief may not be awarded.
Said a different way, the Doctrine of Laches states that the other party neglected to assert a right or claim which, taken together with the lapse of time and other circumstances causing prejudice to you, operating as a bar in a court of equality.
Another equitable doctrine is that of estoppel, aka acquiescence. If the plaintiff has assured the defendant, implicitly or explicitly, that the plaintiff will not assert trademark rights, then the plaintiff is unlikely to obtain an injunction or damages. In other words, they said or implied it was OK with them if you used their trademark. They cannot go back and claim infringement after that.
A third equitable doctrine is called “unclean hands.” This doctrine comes into action when a plaintiff’s conduct in connection with the trademark was illegal or unconscionable. The court only invokes “unclean hands” when a plaintiff, who may have been given relief otherwise, has acted improperly with respect to the case such that punishment of the plaintiff in the public interest outweighs the need to prevent the defendant from acting illegally through trademark infringement.
An unconscionable use of trademark and trademark law would be the demand for an oppressive or extreme judgment that is overwhelmingly for the plaintiff, who already has superior bargaining power. An example of illegal use is saying a trademark is registered when it is not.
Trademark infringement cases have several nuances that can provide a legal rebuttal and protection in court. If you have received a claim for trademark infringement and truly feel it is undeserved, there are opportunities for you to prove so in court from showing fair use to proving the plaintiff has acted illegally with respect to the trademark in question.