Articles

Trademark Law: Possible Defenses to a Trademark Infringement Claim

Ms. Anita Brand opens a business selling sun hats under the trademark “MARQUIS MARK.” Things seem to be going well, as Ms. Brand starts to establish some serious goodwill with her customers over the period of a few years.

Unfortunately, things take a negative turn a little more than three years later when Ms. Brand receives a nasty cease and desist letter from Mr. Hugh N. Fringe. Mr. Fringe claims to the be the owner of a similar trademark (“MARQUEE MARK”) that was federally registered with the United States Patent and Trademark Office several years ago; prior to the date Ms. Brand started using her trademark. Mr. Fringe uses his trademark on car visors. Even worse, Mr. Fringe’s mark has achieved “incontestability” status with the United States Patent and Trademark Office – a form of extra protection available to federally registered trademarks that have been used continuously for five (5) years after achieving federal trademark registration.

[Note: this is potentially problematic, as the incontestable status of Mr. Fringe’s mark limits the defenses that might otherwise be available to Ms. Brand. For instance, she cannot attack the validity of Mr. Brand’s mark due to it achieving incontestable status. The grounds to attack an incontestable mark, or to defend against claims of trademark infringement posed by owners of an incontestable mark, can be found under 15 U.S.C. §1115(b) of the Federal Lanham Act. As such, Ms. Brand only has a limited arsenal of defenses to consider, some of which are addressed below.]

In his letter, Mr. Fringe threatens to sue Ms. Brand based on claims of, among other things, trademark infringement. Even worse, before Ms. Brand can formally respond to Mr. Fringe’s letter, Mr. Fringe proceeds with filing a lawsuit against Ms. Brand in federal court. In his complaint, Mr. Fringe seeks a ludicrous amount of damages, including all of Ms. Brand’s profits generated from use of her trademark as well as a permanent injunction against Ms. Brand from ever using her trademark again in the future.

Now facing a looming deadline to answer Mr. Fringe’s complaint, Ms. Brand calls a lawyer to see how she might be able to defend herself. After a preliminary analysis of the issues, the lawyer informs Ms. Brand of some available options.

First, her lawyer points out the following defense to trademark infringement – the one being the most obvious:

Non-Infringement:

Under federal law, trademark infringement claims are governed under 15 U.S.C. §1114 of the Lanham Act. In pertinent part, §1114(a) of the Lanham Act states that trademark infringement turns on the use of a trademark in commerce that "is likely to cause confusion, or to cause mistake, or to deceive[.]”

Ms. Brand’s lawyer then points to some important factors that are analyzed in cases of trademark infringement in order to determine if “likelihood of confusion” exists. Those factors are what are often referred to as the DuPont factors, which are named after the landmark trademark case In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973).

Among the thirteen DuPont factors, Mr. Brand’s lawyer notes two (2) factors that he believes are most relevant to her case: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

Ms. Brand’s lawyer notes that factor (1) does not work in her favor because MARQUIS MARK and MARQUEE MARK are phonetically equivalent. However, Ms. Brand’s lawyer notes that factor (2) works in her favor because sun hats are dissimilar from car visors. Sure, both protect from the sun’s rays, but sun hats are an article of clothing for people whereas car visors are not articles of clothing and are instead used on… well, cars and not people. On balance, given the dissimilarity of the goods used in connection with the respective marks, Ms. Brand’s lawyer states that there is a good argument that there is no trademark infringement in this case.

Statutory Defenses

Next, Ms. Brand’s lawyer points to certain statutorily-provided defenses under 15 U.S.C. §1115(b) of the Lanham Act. Among the nine (9) defenses provided under 15 USC §1115(b), Ms. Brand’s lawyer points to §1115(b)(9), which states that claims of trademark infringement (even against incontestable marks) are subject to defenses under “equitable principles, including laches, estoppel, and acquiescence[.]” Among these available defenses, Ms. Brand’s lawyer focuses on the defense of laches:

Laches:

Laches is a doctrinal defense that essentially claims that the plaintiff engaged in an unreasonable delay before bringing the underlying cause of action. Here, a defendant is stating that the plaintiff has run out of time to bring a claim. This is similar to the “statute of limitations” defense which focuses on the ability (or lack thereof) of a plaintiff to collect damages based on the plaintiff failing to file a claim within some statutorily-imposed deadline to do so.

The Lanham Act does not expressly provide a statute of limitations period for trademark infringement claims. However, the “laches” defense included in the Lanham Act often turns on applicable state-based statute of limitations period.

Ms. Brand’s lawyer notes that the applicable state-based statute-of-limitations period for trademark infringement (or deceptive/unfair trade practices) in the state in which the complaint was filed is three (3) years. [NOTE: this varies per state]. As Ms. Brand started using her trademark more than three years ago, and Mr. Fringe’s complaint was filed more than three years later, Ms. Brand’s lawyer argues that there might be a way to have the lawsuit dismissed based on a laches/statute of limitations defense.

Given these defenses, Ms. Brand’s lawyer suggests a Coexistence Agreement. Under such an agreement, Ms. Brand and Mr. Fringe can coexist with their respective MARQUIS MARK and MARQUEE MARK so long as Ms. Brand does not start selling car visors and Mr. Fringe does not start selling sun hats. The lawyer drafts up a proposal and sends it to Mr. Fringe’s attorney. Now, Ms. Brand and her lawyer wait to see if their proposal is accepted in hopes of an amicable settlement. If only it were that simple!

[Note: while the above scenario describes some defenses to be considered, this is a fictional example and there are potentially several other defenses and factors to consider in a trademark infringement case.]

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