Trademark Law and Practice

Defenses


  • Fair Use
    Classic Fair Use

    Classic fair use requires that the mark be used:

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

    When a defendant uses a trademark to describe the plaintiff's product, even if his end goal is to describe his own product, he is entitled to a nominative fair use defense provided he meets the following three requirements:

    1. the product or service in question must be one not readily identifiable without use of the trademark;
    2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
    3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
  • First Amendment
    1. Comparative advertising
    2. Parody (commentary/criticism) – not just a joke
  • Licensing
  • Abandonment
  • Failure to Police
  • Incontestability
  • Genericide
  • Fraud on the office