Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result.
So, for example, a cereal manufacturer may be able to describe its cereal as consisting of “all bran,” without infringing upon Kelloggs’ rights in the mark “All Bran.” Such a use is purely descriptive, and does not invoke the secondary meaning of the mark.
Similarly, in one case, a court held that the defendant’s use of “fish fry” to describe a batter coating for fish was fair use and did not infringe upon the plaintiffs mark “Fish-Fri.” Such uses are privileged because they use the terms only in their purely descriptive sense.
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Some courts have recognized a somewhat different, but closely- related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the users own product.
For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement.
The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group.
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The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged.
Finally, certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis.
For example, some courts have applied the general “likelihood of confusion” analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion.
Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial and less sympathetic to the extent that parodies involve commercial use of the mark.
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Successful plaintiffs are entitled to a wide range of remedies under federal law. Such plaintiffs are routinely awarded injunctions against further infringing or diluting use of the trademark.
In trademark infringement suits, monetary relief may also be available, including: (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. Damages may be trebled upon showing of bad faith.
In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff’s goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief.