What Are My Defenses to a Trademark Infringement Claim?

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a law firm representing trademark infringement plaintiffs and defendants in the United States.  Today, I will be answering the question:  What Are My Defenses to a Trademark Infringement Claim? 

You will know if you are being subjected to a trademark infringement claim if one of several things occurs.  More likely than not, you will receive what’s known as a cease and desist letter, sometimes also referred to as a threat letter.  That letter will set forth the sender’s rights in a trademark, identify your unauthorized use, and also set forth why they believe that you are infringing their trademark.  It is at this junction that it is important for you to retain legal counsel, preferably a trademark infringement attorney, who can advise you as to the defenses you have available.  Your failure to respond to a threat letter may result in them jumping to a lawsuit.  And once a lawsuit is filed, you are a named defendant and will have to respond and answer a complaint setting forth why it is not trademark infringement.

Regardless of how you become aware of the fact that someone is claiming that you are infringing their trademark, you need to first be able to identify defenses.  And like I said, a qualified trademark attorney or trademark lawyer can help you do that.  And there are multiple defenses out there that are really dependent upon the facts of each case.

The first might be fair use.  If you’re using descriptive terms in the ordinary way that those words have been used in a dictionary, you may be able to claim a fair use defense.  This would exclude you from being held liable for trademark infringement.  However, this is, again, very fact-specific and requires that you look at how you’re actually using a mark, or whether or not you’re using the mark at all. 

Another defense looks at the actual factors that come within a trademark infringement claim.  So keep in mind, in order for a plaintiff to establish a trademark infringement cause of action, they need to establish that, first, you’re using a mark in commerce, and second, that it creates a likelihood of confusion.  And a likelihood of confusion analysis includes multiple factors.  The two most important being the similarity of the goods and services and the similarity of the marks as themselves.  So, a defense to a trademark infringement claim could entail each of those factors and showing why there isn’t a similarity in the marks or why there isn’t a similarity the goods and services. 

There may also be equitable defenses such as the doctrine of laches, acquiescence or waiver.  All of these defenses entail the fact that the plaintiff either waited too long to assert a claim, could have asserted a claim and chose not to, gave you a representation that they weren’t going to assert a claim, but eventually did, whatever the facts might be, those defenses might be available to you.  Regardless, again, a qualified and experienced trademark attorney will be able to guide you through what your best defenses are.  It is always critical to identify those defenses that serve as both legal leverage and, also, what other non-legal leverage might exist in order to help you establish a defense that will not subject you to continued prosecution for trademark infringement.

So, this has been Brian Hall answering your question:  What are the defenses to a trademark infringement claim?

You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.