Defenses to trademark infringement or dilution play a crucial role in protecting the rights of trademark owners and ensuring fair competition in the marketplace. When a third party uses a trademark in a way that may cause confusion or dilution, the trademark owner can take legal action to enforce their rights. However, there are certain defenses that the alleged infringer can assert to challenge the claims of trademark infringement or dilution. Keegan & Donato Consulting can help.
Keegan & Donato Consulting is located in beautiful Rye, New York, and serves clients nationwide. We support plaintiffs or defendants in providing research, analysis, affidavits, declarations, expert reports, and rebuttal reports as needed in their trademark infringement and trade dress litigation. We have also collaborated extensively on marketing, business, and financial cases.
With 30+ years of combined experience, Mark Keegan and Tony Donato can deliver intelligence quickly. We work on a fixed rate or hourly basis based on your needs and will assist you with designing a reliable survey within your budget.
Fair Use Defense
One common defense to trademark infringement is fair use. Fair use allows a third party to use a trademark in a descriptive or informational manner without infringing on the trademark owner’s rights. For example, suppose a company uses a trademarked term to describe its product or service accurately without misleading consumers or implying an endorsement by the trademark owner. In that case, it may be considered fair use. This defense is often used in cases where the alleged infringer is making legitimate and non-commercial use of the trademark. For example, the statement “BRAND X tastes better than BRAND Z” is considered fair use.
Parody Defense
Another defense against trademark infringement is parody. Parody involves using a trademark to create a humorous or satirical commentary on the original mark. The purpose of parody is not to confuse consumers or profit from the reputation of the original mark but to create a new work that comments on or criticizes the original mark. Courts have recognized that parody can be a valid defense to trademark infringement as long as it does not cause confusion or dilute the distinctiveness of the original mark. For example, a Court determined that a florist’s use of “This Bud’s For You” for fresh-cut flowers did not infringe on Anheuser Busch’s slogan.
Genericism Defense
Genericism is another defense against trademark infringement. When a trademark becomes so commonly used that it becomes synonymous with a type of product or service, it can become generic. Generic terms cannot be protected as trademarks because they are necessary for other businesses to accurately describe their goods or services. For example, the term “aspirin” was once a protected trademark but became generic over time. If an alleged infringer can demonstrate that the mark has become generic, they may be able to defend against trademark infringement claims.
Key Takeaways
Defenses to trademark infringement or dilution are essential safeguards for trademark owners and alleged infringers. Fair use, parody, and genericism are some of the primary defenses that can be raised to challenge trademark infringement claims. It is essential for all parties involved in a trademark dispute to understand these defenses and their applicability to ensure fair and equitable resolution of such disputes.
Keegan & Donato Consulting would be happy to advise you on other defenses to trademark infringement or dilution and the many applications of surveys in litigation. Contact us at (914) 967-9421 to discuss your needs.