Incontestability and Fair Use

§1065 “Incontestability of right to use mark under certain conditions” is a wonderful thing for the owners of marks to which it applies. If a mark satisfies the requirements of §1065, it is that much easier to win an infringement suit. The effects of this provision, however, cannot be understood without also examining §1115(b) “Incontestability; defenses."

§1115(b) tells us that “right to use the registered mark has become incontestable under [§1065] the registration shall be conclusive evidence of the validity of the registered mark,” and then goes on to list nine categories of defenses available to an accused infringer of the incontestable mark. (Emphasis added.)  As noted in Checkers Drive-In Restaurants v. Tampa Checkmate Food Servs. (In re Tampa Checkmate Food Servs.), 221 B.R. 541, 548 (Bankr. D. Fla. 1998), the defenses listed in §1115(b) are not comprehensive, and courts have handed down decisions based on defenses not explicitly listed in the statute.

But before a court must determine whether a defense to the infringement claim is available, the plaintiff must demonstrate that the mark falls under §1065. In order to do this, a plaintiff must show that:

1. The mark, registered on the primary registry, has been in continuous use for 5 consecutive years following registration, and is still in use;
2. 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;
3. 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
4. The mark is not a generic name.

Once these requirements are met, the mark becomes incontestable under §1065. However, this does not mean that the defendant automatically loses the infringement suit. After all, the §1115(b) defenses, in addition to those defenses which courts have seen fit to accept, are still available.

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 §1115 defenses are not defenses against the claim of infringement; rather, they are merely defenses against the plaintiff’s claim that its mark is incontestable and therefore presumptively valid under §1065.

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 §1115(b) are:

1. Either the registration or §1065 incontestability status was obtained fraudulently.
2. Abandonment of the mark by the registrant.
3. Use of the mark by the registrant (or others) which constitutes misrepresentation.
4. The term is a party’s name, a descriptive term, or a geographic term.
5. The defendant used the mark without knowledge of the plaintiff’s use prior to registration or other date of constructive notice of use.
6. 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).
7. Protecting the registrant’s use of the mark would violate antitrust law.
8. The mark is functional.
9. 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.)

Fair Use

Of the various defenses to incontestability, perhaps the most used is §1115(b)(4), often called the “fair use” defense. This applies in cases where the defendant has used the term, in good faith, to describe goods instead of using it to identify the origin of those goods.

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 United States Shoe Corp. v. Brown Group, Inc., 740 F. Supp 196 (S.D.N.Y. 1990). There, the mark “Looks Like a Pump, Feels Like a Shoe” was not infringed upon by the defendant’s claim that its pump “feels like a sneaker.” The term was used descriptively, said the court, and preventing others from using the term in an effort to protect the plaintiff’s mark would not benefit society (the court used the example of “candy,” and noted how “impoverished” society would be if only one manufacturer were allowed to use the term.)

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 §1115(b) defenses to incontestability, and therefore other varieties of fair use could potentially be found valid by courts.

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. Boston Athletic Association v. Sullivan, 867 F.2d 22 (1st Cir. 1989).

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. WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991).

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. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968).

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 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987) the court faced the question of whether “L.L. Beam’s Back-To-School Sex Catalog” was an impermissible use of the famous catalog’s mark. This case and others must consider not only trademark law but also First Amendment issues in deciding what to do about unauthorized use.  The outcomes in such cases might be somewhat less predictable than in other fair use cases.