The 6th Circuit has required that a defendant make use of a trademark in a trademark sense in order to be subject to liability for trademark infringement. However, the 2nd Circuit recently held that a plaintiff does not have to allege that the defendant used the plaintiff's mark in a trademark sense in order to state a claim for trademark infringement. Given the diverging views of these two circuits, and until a Supreme Court decision resolves such issues, trademark owners would be well served consulting with trademark attorneys prior to proceeding with an action for trademark infringement where the trademark use is unclear.
In this particular case, Kelly-Brown v Winfrey, 717 F.3d 295, the plaintiff filed a lawsuit over Oprah Winfrey's use of the mark "Own Your Power". Oprah had used the mark in various ways, including as a phrase and in the titles of events she sponsored, her magazine, and other related business ventures, such as on her web page. Plaintiff filed suit for trademark infringement, to which Oprah's attorneys filed a motion to dismiss based on failure to state a claim. The defendants position was that Oprah was not making use of "Own Your Power" as a trademark, but instead was making a fair use because it was descriptive and a non-trademark use made in good faith. Although the District Court dismissed the claim, the 2nd Circuit has now reversed. As such, the standard simply requires that the defendant "displayed the mark to consumers in connection with a commercial transaction". Plaintiff is not required to state that the defendants use was in a traditional sense, or as a mark to attract public attention as a source identifier.
Trademark owners should be cognizant of any and all other uses of their mark, be it by competitors, in social media by consumers, or otherwise. Understanding what may constitute infringement is critically important, and a trademark attorney can help advise a trademark owner of the same in light of this decision.