There are a number of defenses that might be available to a defendant, obviously depending on the factual context within which the plaintiff brings the action. These defenses include: genericide, abandonment, non-trademark use, functionality, parody and fair use. Each defense is covered below. Some of these were briefly mentioned in the Infringement section.
A word becomes "generic" when in the minds of a substantial majority of the consuming public it comes to stand for the "type of product" (in trademark terms the genus) as opposed to a particular seller or source (a species of the genus). The words "aspirin" (see
Google, Xerox and Lego are all examples of companies that maintain active campaigns to keep their marks from "falling into" genercide. They do this by notifying customers and various other stakeholders (e.g. the media) that their marks should be used as adjectives (as opposed to a nouns or in Google's case a verb) that describe their brands, and not otherwise. Once a word becomes generic it loses its protection as a mark. Obviously, this could have a significant negative economic impact on the company whose brand it represents. The risk is quite real as the court in America Online, Inc. v. AT&T Corp., (4th Cir.2001) stated:
When a mark has become "generic" the primary rationale behind the defense is one of necessity. It simply becomes too difficult for a competitor to use a substitute. For example, the substitute for "cellophane" would be "regenerated cellulose in thin transparent sheets used especially for packaging.
Section 1127 of the statute has the following to say regarding abandonment:
A mark shall be deemed to be “abandoned” if either of the following occurs:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
Comments: The first paragraph above is a "use or lose it" standard. The rationale is likely based on the fact that a trademark is a type of "property" and, as in property law in general, there is bias in favor of use. The second paragraph speaks to the status of a mark that has fallen into genericide. The bottom line is that in order to preserve a mark there must be a consistent (albeit minor) use of the mark in commerce and the holder must not allow the mark to become generic.
Infringement is only triggered when a mark is used as a mark. An example of non-trademark use in the Internet context is the WhenU.com case discussed in the Infringement section. Another example is the use of a mark for journalistic purposes (see The New Kids On The Block v. News America Publishing, Inc.(9th Cir. 1992)). The latter use is sometimes referred to a "nominative." A mark used as a title for a song has been held to be non-trademark use (see Mattel v. MCA Records (9th Cir. 2002)). The non-trademark use of a mark is a kind of "fair use" (see below), but the trademark doctrine invokes this term in a much more limited sense than its counterpart in copyright doctrine. As is often the case, things are not what they seem in the esoteric fringes of intellectual property law.
The trademark functionality doctrine is at times "triggered" as an affirmative defense in cases involving "trade dress" and "product configuration." The protection of a product's function is the purview of patent law and is precluded under both copyright and trademark doctrine. The court in the case of Wilhelm Pudenz v. LittleFuse (11th Cir. 1999) makes this point quite clear as follows:
The courts are adamant in maintaining the proper demarcations between the various IP doctrines and are sensitive to the strong monopoly rights conferred on patent holders. Thus, they do not allow "willy nilly" the circumvention of the rigorous process required of applicants in order to establish patent rights, and will not confer such rights through the "back door" of copyright or trademark.
For reasons similar to why parodies are allowed as a type of "fair use" under copyright doctrine, trademark doctrine likewise allows the use of marks in such expressions and commentary (note, however, that it is not "per se" given the "fair use" label under trademark doctrine as discussed below). It is clear (again analogous to copyright) that a commentator must be allowed to "evoke the mark" in order to poke fun at it. It is a defense rooted in the first amendment and the long established tradition of parody in American pop culture. Trademark rights confer a kind of monopoly on the use of symbols and there are limits that the law imposes in order to protect other preferential rights. An example of this is a case the the 9th Circuit called "Speech-Zilla meets Trademark Kong" (Mattel v. MCA Records (9th Cir. 2002)), proving that judges have also been infected by the "hipness" bug. The Mattel court upheld the use of "Barbie" in a song that apparently did not hold the "doll" in such high esteem as Mattel the corporation would have preferred. The court held that this was "nominative fair use."
Fair use, as a defense in the trademark sense, is limited to a narrow meaning best exemplified in the case of Zatarain's v. Oak Grove Smokehouse (5th Cir. 1983). Here the argument was over the trademark "Fish-Fri" owned by Zatarain. The court explains the use of the defense as follows:
But the excerpt above begs the question how much use by competitors might indeed lead to confusion? That is left for another link in the chain to determine. Notice however, that the court in Mattel used the phrase "nominative fair use." Were they referring to what 5th Circuit was talking about in Zatarain? No, despite the fact that "fair use" was part of the holding. The cases mean what the cases mean, nothing more. In order not to lose track of "Waldo" you must keep in mind a quote by Supreme Court justice Oliver Wendell Holmes: “the law is not something to be derived from a set of axioms via the power of deductive reasoning, but rather the law is ultimately whatever a court says that it is.”
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