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Trademarks: Defenses

    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
    Bayer Co. v. United Drug Co. (S.D.N.Y. 1921)
    ), "cellophane" (see DuPont Cellophane Co. v. Waxed Products Co.(2d Cir. 1936)) and "thermos" (see King-Seeley Thermos Co. v. Aladdin Industries (2d Cir. 1973)) have all been held to be generic.

    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:

    "[E]ven when created words for new products have become strong marks, the public’s pervasive use of these marks sometimes creates a real risk that their distinctiveness will disappear, a process Professor [J. Thomas] McCarthy terms ‘genericide’ . . . ."

    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.

    Non-Trademark Use

    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 functionality doctrine is a judicially created rule that predates the Lanham Act. Under this rule, no trademark rights may be claimed in a product's functional shapes or features. See Epic Metals Corp. v. Souliere,  99 F.3d 1034, 1038 (11th Cir.1996)("A products features are protectible as trade dress if they are primarily non-functional."). This proscription serves two purposes. First, by ensuring that competitors remain free to copy useful product features, it prevents the trademark law from undermining its own pro-competitive objectives. Qualitex Co. v. Jacobson Products Co., Inc.,  514 U.S. 159, 164 , 115 S.Ct. 1300, 1304, 131 L.Ed.2d 248 (1995). Second, the functionality doctrine prevents the trademark law from conflicting with the patent law by eliminating trademark monopolies of potentially unlimited duration on a product's utilitarian features.

    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

    What exactly is "fair use" under trademark doctrine? Before attempting to answer this question it may be worthwhile to take a moment to reflect. The law has often been called a "system of communication" (e.g. like TCP/IP but not as efficient). In order to understand what is being said you must understand the protocol, the links and the feedback loop. It may sound like English, but often it is not. At least not the kind English supported by dictionaries. It is a kind of English only supported by the case law. To understand what something means you must understand the cases, that is the price of admission. There is a movement (of sorts) to cut through this morass (to the degree possible) and provide the masses a view behind the curtain. Some call it "interdisciplinary work" others call it "open source law." It is basically an attempt to explain, more or less in plain terms, what the protocol means so that "ordinary" people understand. That is the objective behind the "tutorials." It is an attempt at a kind of "news you can use." They may fall short of the mark, but that is the intent. Therein lies both the benefit and the danger. That is why "tutorials" (from any source) can never be interpreted as legal advice (see our Terms of Use). The legal protocol requires precision and it is exactly that which is often lost in translation.

    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:

    Although Zatarain's term "Fish-Fri" has acquired secondary meaning in the New Orleans geographical area, Zatarain's does not now prevail automatically on its trademark infringement claim, for it cannot prevent the fair use of the term by Oak Grove and Visko's. The "fair use" defense applies only to descriptive terms and requires that the term be "used fairly and in good faith only to describe to users the goods or services of such party, or their geographic region." (quoting U.S.C. section 1115(b)(4)). The district court determined that Oak Grove and Visko's were entitled to fair use of the term "fish fry" to describe a characteristic of their goods; we affirm that conclusion.

    Zatarain's term "Fish-Fri" is a descriptive term that has acquired secondary meaning in the New Orleans area. Although the trademark is valid by virtue of having acquired secondary meaning, only that prenumbra or fringe of secondary meaning is given legal protection. Zatarain's has no legal claim to an exclusive right in the original, descriptive sense of the term; therefore, Oak Grove and Visko's are still free to use the words "fish fry" in their ordinary, descriptive sense, so long as such use will not tend to confuse customers as to the source of the goods.

    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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