Incontestability and Fair Use
But before a court must determine whether a defense to the infringement claim is available, the plaintiff must demonstrate that the mark falls under
- The mark, registered on the primary registry, has been in continuous use for 5 consecutive years following registration, and is still in use;
- There is no pending case involving the mark (other than the case at issue, of course) and there has been no prior ruling adverse to the owner’s right to use the mark;
- The filing requirement in
§1065(3)has been met (which apparently would be satisfied by the §1058(b)filing discussed in the section on Maintaining a Registered Trademark in Chapter 4); and
- The mark is not a generic name.
Once these requirements are met, the mark becomes incontestable under
Defenses to Incontestability
There are many ways in which a plaintiff’s incontestable mark could fail to have foolproof protection against infringement. It is important to note, however, that the
EXAMPLE: “Ronnie’s Cookies” is a mark which satisfies the incontestability requirements of
§1065. When a claim is filed against “Donnie’s Cookies,” Ronnie uses §1065 to establish the validity of his mark. If Donnie can effectively argue a §1115 defense to incontestability, he is not necessarily out of the woods. Ronnie might still be able to demonstrate that he has a valid mark and that Donnie’s use infringes on Ronnie’s rights.
The enumerated defenses to incontestability in
- Either the registration or
§1065incontestability status was obtained fraudulently.
- Abandonment of the mark by the registrant.
- Use of the mark by the registrant (or others) which constitutes misrepresentation.
- The term is a party’s name, a descriptive term, or a geographic term.
- The defendant used the mark without knowledge of the plaintiff’s use prior to registration or other date of constructive notice of use.
- The defendant used the mark prior to the plaintiff’s registration and has not abandoned the mark. This defense permits only continued use by the defendant, not new uses of the mark by the defendant, such as in
Golden Door, Inc, v. Odisho, 437 F. Supp. 956 (ND Cal. 1977).
- Protecting the registrant’s use of the mark would violate antitrust law.
- The mark is functional.
- Other equitable principles (such as estoppel, laches, etc.)
(Note that these defenses are available to all marks, but are specifically applicable to incontestable marks under this provision.)
Of the various defenses to incontestability, perhaps the most used is
EXAMPLE: Joey produces foosball tables using the following slogan: "Looks like Pinball, Feels like Soccer." Chandler has recently started selling foosball tables, and in his marketing literature says that “it feels like you’re playing soccer…in the comfort of your own home.” If the reference to soccer is merely descriptive, even if Joey’s mark is incontestable, Chandler’s use will not infringe on the mark.
A case quite similar to this one came up in
The two vital issues in most cases are: (a) whether or not the term is being used descriptively, and (b) whether the use is in good faith, or was the defendant trying to ride on the registered mark owner’s coat-tails. Consider the following:
- “Non-Floating” is a descriptive term for mulch which is a fair use and does not infringe upon the mark “No-Float.”
Corbitt Mfg. Co. v. GSO Am., Inc., 197 F. Supp. 2d 1368 (D. Ga. 2002).
- “Early literacy” and “early intervention” are descriptive and do not infringe upon the mark “early literacy intervention.”
Walker v. Klein 47 USPQ 2d 1649 (SD Cal. 1998).
- The defendant’s use of the phrase “real questions for your trivial pursuit” was not used in good faith but rather was intentionally deceptive and not fair use.
Selchow & Righter Co. v. Decipher, Inc. 598 F. Supp. 1489 (E.D. Va. 1984).
- Use of “Oils & Aloe” as a brand name is not fair use when the term and trade dress intentionally mimic “Oil of Olay” for a competing product.
Olay Co. v Cococare Products, Inc. 218 USPQ 1028 (S.D.N.Y. 1983).
- Use of “WORLD” does not identify geographic origin and therefore does not fall under this fair use defense.
Armstrong Cork Co. v. World Carpets, Inc. 448 F. Supp. 1072 (N.D. Ga. 1978).
This discussion is not exhaustive of the issues surrounding fair use defenses to incontestability. When used or reconditioned goods are resold, a “genuine” use of the mark takes place and may be permissible. When goods are used as the component of a final product, we might call this “collateral use” (as in Nutshell at 276–277) or we might call it “referential” or “nominative” use (as in Roger Schechter et. al at 728) and the use may again be permissible. And recall that courts have expanded the
EXAMPLE: Brian makes picture frames which he sells in his store. On the frames for larger paintings he uses "Twisted Strong" brand wire, to make sure that enough support is present when the picture is hung. In his shop window he displays a sign which states “We proudly use Twisted Strong wire to make our frames and hang our most prized possessions.” This would be a fair use of the mark, even if the mark is incontestable and Brian has not received the wire maker’s permission to use the mark. To protect himself, Brian may choose (but is not required) to include on the sign that his shop is not affiliated with, or endorsed by, Twisted Strong. The more Brian does to ensure his use does not infringe on Twisted Wire, the less susceptible he becomes to a lawsuit.
Other Lawful Unauthorized Uses of a Mark
There are other situations in which one might try to argue that use of a mark, though unauthorized, should still be permitted by law. Among these are:
Promotional Products: Do “bootleg” t-shirts with the name “Boston Marathon” infringe on the mark? Because the reference to the marathon was intentional, and the very reason people would buy the shirts is due to this reference, the use is not lawful.
What about a television ad which announces live coverage of the Boston Marathon? This promotional use of the name is permissible, because nobody is likely to think the T.V. station is holding it own race.
Comparative Advertising: What about look-a-likes and smell-a-likes? A perfume which uses a competitor’s mark to compare itself to that product does not infringe on the mark, in part because the very nature of the comparison makes quite clear that the smell-a-like is not affiliated with the product with which it is being compared.
Parody & Speech: Recall the role parody played in copyright infringement. In the wonderful world of trademarks, there are different considerations at play. State and federal statutes protecting mark owners against dilution present a strong argument against permitting parody. After all, the FTDA (and many states' statutes) protects against tarnishment, which might be not only the effect but perhaps the very reason for the parody. But the Constitutional freedom of speech cuts in the other direction. In