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Nevada Law Library

Trademark Infringement Defenses

Defense of Abandonment (15 U.S.C. 1127)

The owner, assignee, or licensee of a trademark cannot exclude others from using the trademark if it has been abandoned. Abandonment is defined in 15 U.S.C. 1127, paragraph 16. See also 3 J. Thomas McCarthy, Trademarks And Unfair Competition 17:18 (4th ed. 2001). Evidence of non-use of the mark for three consecutive years is prima facie evidence of abandonment. See 15 U.S.C. 1127; Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 411-12 (9th Cir. 1996) (prima facie showing of abandonment creates only a rebuttable presumption of abandonment); Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 938 (9th Cir. 2006) ("[A]bandonment requires complete cessation or discontinuance of trademark use."). As to abandonment by uncontrolled or "naked" licensing, See Barcamerica Int'l USA Trust v. TyfieldImps., Inc., 289 F.3d 589, 595-96 (9th Cir. 2002).

Abandonment "is generally a factual issue." Id. at 937. The defendant has the burden of proving abandonment. Where the defendant proves the necessary consecutive years of non-use, the burden shifts to the plaintiff to go forward with evidence to prove that circumstances do not justify the inference of intent not to resume use. Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 99 (5th Cir. 1983).

No Ninth Circuit case clearly describes the standard of proof required to prove abandonment. For instance, Electro Source, LLC, 458 F.3d at 935 (defendant "as the party asserting abandonment, is required to 'strictly prove' its claim.... We do not need to flesh out the contours of the 'strict proof standard because our resolution of this summary judgment appeal rests on the proper legal construction of 1127...") (collecting other "strict proof" cases); Prudential Ins. Co. v. Gibraltar Financial Corp., 694 F.2d 1150, 1156 (9th Cir. 1982), cert. denied, 463 U.S. 1208 (1983), characterized abandonment as "in the nature of a forfeiture" which "must be strictly proved." Such forfeiture required demonstration by "a high burden of proof." Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1017 (9th Cir. 1985) (citing Edwin K. Williams & Co. v. Edwin K. Williams & Co.-East, 542 F.2d 1053, 1059 (9th Cir. 1976), cert. denied, 433 U.S. 908 (1977)); or "faces a stringent standard of proof." BancAmerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596 (9th Cir. 2002) (citing Moore Bus. Forms Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir. 1992). Scholars note that except for the Federal Circuit, "all" courts follow a clear and convincing standard of proof of abandonment. See 3 J. Thomas McCarthy, Trademarks And Unfair Competition 17:18 (4th ed. 2001). See also Fletcher, Anthony L. and David J. Kera, Annual Review, 85 Trademark Rep. 607, 724-25 (1995).

Defense Ofcontinuous Prior Use Within Remote Geographic Area (15 U.S.C. 1115(B)(5))

An owner of a registered trademark may not exclude others who began using that or a confusingly similar trademark in a geographic area, without knowledge of the owner's prior use of trademark elsewhere, and before the owner had applied for registration of or published the registered trademark.

The defendant has the burden of proving each of the following by a preponderance of the evidence:

1.                   the defendant, defendant's assignor, defendant's licensor continuously used the trademark, without interruption, in geographic region where defendant claims prior use;

2.                   defendant, defendant's assignor, defendant's licensor began using the trademark without knowledge of the plaintiff's prior use elsewhere; and

3.                   the defendant used the trademark before the plaintiff applied for registration of or published the registered trademark.

The defendant has the burden of pleading and proving the elements of this defense. See Philip Morris, Inc. v. Imperial Tobacco Co., 251 F. Supp. 362, 379 (E.D.Va.1965), aff'd, 401 F.2d 179 (4th Cir. 1968), cert. denied, 393 U.S. 1094 (1969); 5 J. Thomas McCarthy, Trademarks And Unfair Competition 26:44 (4th ed. 2001).

"Continuous" means lack of interruption. See Casual Corner Associates, Inc. v. Casual Stores of Nevada, Inc., 493 F.2d 709, 712 (9th Cir. 1974). The dimensions of the geographic area are a question of fact, determined in terms of the relevant zones of sales, advertising, and reputation as of the date of plaintiff's registration. Consolidated Freightways Corp. v. Consolidated Forwarding, Inc., 156 U.S.P.Q. 99 (N.D.Ill.1967). See also, Watec Co., Ltd. v. Liu, 403 F.3d 645, 653 (9th Cir. 2005) (circuit approved trial court instruction to jury that the claimant of senior rights to a trademark "... must demonstrate that it has sufficient market penetration in a specific locality or localities. Market penetration must consider such factors as the total dollar value of sales, the proportion or percentage of the.. .[trademark] claimants' sales of trademarked products in relation to the market place in the locality in question. The actual doing of business rather than the mere use of a flyer or advertisement is required [f]or the establishment of common-law rights in any locality.")

Even if marks are precisely identical, there may be no infringement if the marks are in different geographic areas. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999) (approving tacking of one use of a trademark with another use).


Defenses Of "Classic" Fair Use (15 U.S.C. 1115(B)(4))

The owner, assignee, or licensee of a trademark cannot exclude others from making a fair use of that trademark. The defendant makes fair use of a trademark when the defendant:

1.                   used the mark other than as a trademark or other than to distinguish the defendant's goods from the plaintiff's and to indicate the source of the defendant's goods;

2.                   used the mark fairly and in good faith; and

3.                   used the mark only to describe the defendant's goods or services or their geographic location as those of the defendant's and not at all to describe the plaintiff's product.

The Ninth Circuit identifies two types of fair use - classic and nominative. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) ("We distinguish two types of fair use: 'classic fair use,' in which 'the defendant has used the plaintiff's mark to describe the defendant's own product,' and 'nominative fair use,' in which the defendant has used the plaintiff's mark 'to describe the plaintiffs product' for the purpose of, for example, comparison to the defendant's product.") (citation omitted) (emphasis as in original).

Although earlier versions of this instruction applied a "clear and convincing" standard to proof of fair use, the committee has not found any authority specifying the standard of proof for this issue.. See Holbrook & Harris, eds., Model Jury Instructions: Copyright, Trademark, And Trade Dress Litigation 246 (2008) ("The case law dealing with the fair use defense does not address the burden of proof requirement.").

This defense requires proof by a preponderance of the evidence. See Grogan v. Garner, 498 U.S. 279, 286 (1991) ("Because the preponderance-of-the-evidence standard results in a roughly equal allocation of the risk of error between litigants, we presume that this standard is applicable in civil actions between private litigants unless 'particularly important individual interests or rights are at stake.'") (citations omitted); United States v. F/VRepulse, 688 F.2d 1283, 1284 (9th Cir. 1982) ("The preponderance of the evidence standard applies in civil cases.... The few exceptions are very limited and include only those cases involving fraud or possible loss of individual liberty, citizenship, or parental rights. 'The interests at stake in those cases are deemed to be more substantial than the mere loss of money ....'") (citations omitted).

The elements of the classic fair use defense set out in this instruction are drawn from: Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir. 2002) (court noting that to establish a classic fair use defense under 15 U.S.C. 1115, a defendant must prove: "'1. Defendant's use of the term is not as a trademark or service mark; 2. Defendant uses the term "fairly and in good faith"; and 3. [Defendant uses the term] "[o]nly to describe" its goods or services.'") (citations omitted); Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir. 2003).

The first element reflects the limitation of the statute, requiring that the mark at issue be descriptive. The classic fair use defense applies only when trademark at issue has both a primary meaning and a secondary meaning. Horphag, 337 F.3d at 1041 ("The classic fair use defense 'applies only to marks that possess both a primary meaning and a secondary meaning-and only when the mark is used in its primary descriptive sense rather than its secondary trademark sense.'" ((quoting Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-06 (9th Cir. 2003) (citations and footnote omitted)).

In considering the second element of fair use, the Ninth Circuit suggests as "relevant factors for consideration by the jury in determining the fairness of the use are the degree of likely confusion, the strength of the trademark, the descriptive nature of the term for the product or service being offered by [plaintiff] and the availability of alternate descriptive terms, the extent of the use of the term prior to the registration of the trademark, and any differences among the times and contexts in which [plaintiff] has used the term." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608-09 (9th Cir. 2005).

The third element of the instruction is drawn from the definition of "classic" fair use involving a defendant's use of "the plaintiff's mark only to describe his [defendant's] own product, and not at all to describe the plaintiff's product." Cairns , 292 F.3d at 1151, 1152 (footnote omitted) (emphasis as in original).

Prior to 2004, the Ninth Circuit applied fair use analysis only when it had been shown that there was no likelihood of confusion. Cairns, 292 F.3d at 1150-1151 ("In our Circuit, the classic fair use defense is not available if there is a likelihood of customer confusion .... The classic fair use analysis therefore only complements the likelihood of customer confusion analysis."). The circuit subsequently revisited this application to find that "[t]he fair use defense only comes into play once the party alleging infringement has shown by a preponderance of the evidence that confusion is likely." KP Permanent Make-Up, Inc., 408 F.3d at 608-09 (9th Cir. 2005) (citing KP Permanent Make-Up v. Lasting Impression I, Inc., 543U.S. 111, 118, 121 (2004) (application of classic fair use as a complement to determining likelihood of confusion is "a long stretch" because it requires the defendant to prove no likelihood of confusion, reversing the proper allocation of the burden in which "the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no freestanding need to show confusion unlikely"; determining that it follows (contrary to the view of the Court of Appeals) that "some possibility of consumer confusion must be compatible with fair use, and so it is.")

The fair use defense also applies in the trade dress infringement context. Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 809-10 (9th Cir. 2003) ("Applying.. .fair use standards to the trade dress context, we hold that a defendant's use is classic fair use where the defendant has used the plaintiff's dress to describe or identify the defendant's own product and not at all to describe or identify the plaintiff's product.") (footnotes omitted).

The Ninth Circuit occasionally refers to other types of "fair use," none appear to involve the classic or nominative fair use tests. For example, the doctrine of trade dress functionality (rendering a feature of trade dress non-infringing was described as "one form of fair use." See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d at 810 n.18 ("It is well-established that use of a product feature or trade dress that has become functional will qualify as one form of fair use."). Similarly, First Amendment considerations may also be referred to under the rubric of "fair use" and defeat a claim of infringement. See, e.g., Mattel v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (noting that the Lanham Act applies "to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression"; adopting the Second Circuit's First Amendment balancing test for whether the title of an artistic work infringes). Parody may also be characterized as a form of fair use because such use is non-commercial. See Mattel, Inc. v. Walking Mountain Productions, 353 F.3d at 812 (trademark owner "cannot use 'trademark laws to ... censor all parodies or satires which use [its] name' or dress.") (quoting New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 309 (9th Cir. 1992).

Defense Of Nominative Fair Use

The owner, assignee, or licensee of a trademark cannot exclude others from making a nominative fair use of that trademark. A defendant makes nominative fair use of a mark when the defendant uses it as other than a trademark, to accurately describe, name. or identify the plaintiffs goods or services.

The Ninth Circuit identifies two types of fair use: classic and nominative. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) ("We distinguish two types of fair use: 'classic fair use,' in which 'the defendant has used the plaintiff's mark to describe the defendant's own product,' and 'nominative fair use,' in which the defendant has used the plaintiff's mark 'to describe the plaintiffs product' for the purpose of, for example, comparison to the defendant's product.") (citation omitted) (emphasis as in original). Although earlier versions of this instruction applied a "clear and convincing" standard to proof of fair use, the committee has not found any authority specifying the standard of proof for this issue.. See Holbrook & Harris, eds., Model Jury Instructions: Copyright, Trademark, And Trade Dress Litigation 246 (2008) ("The case law dealing with the fair use defense does not address the burden of proof requirement.").

This defense requires proof by a preponderance of the evidence. See Grogan v. Garner, 498 U.S. 279, 286 (1991) ("Because the preponderance-of-the-evidence standard results in a roughly equal allocation of the risk of error between litigants, we presume that this standard is applicable in civil actions between private litigants unless 'particularly important individual interests or rights are at stake.'") (citations omitted); United States v. F/V Repulse, 688 F.2d 1283, 1284 (9th Cir. 1982) ("The preponderance of the evidence standard applies in civil cases.... The few exceptions are very limited and include only those cases involving fraud or possible loss of individual liberty, citizenship, or parental rights. 'The interests at stake in those cases are deemed to be more substantial than the mere loss of money ....'") (citations omitted).

The elements of the nominative fair use defense set out in this instruction are drawn from: Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1065-66 (9th Cir. 1999) (Lanham Act does not prevent one from using a competitor's mark truthfully to identify the competitor's goods, or in competitive advertisements, even in cyberspace; nominative fair use may occur if one uses a trademark because it is the "only word reasonably available to describe a particular thing."); Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 412 (9th Cir. 1996) (whether defendant's use of celebrity's name in television commercial was fair use or whether it attempted to "appropriate the cachet" of the celebrity was an issue of fact, defendant auto maker refers to sports celebrity who won award three years in a row in commercial for defendant's car that also won an award three years in a row); Downing v. Abercrombie & Fitch, 265 F.3d 994, 1000, 1009 (9th Cir. 2001) (defendant used trademarked names and photos of plaintiff surfers to sell defendant's shirts which were copied from the shirts worn by the plaintiffs in the photos); In re Dual-Deck Video Cassette Recorder Antitrust Litigation, 11 F.3d 1460, 1466-67 (9th Cir. 1993) (fair use existed where there was no possibility consumers would buy defendant's plainly labeled product thinking that it was made by the plaintiff, as a result of the defendant labeling videocasette attachments that would attach to the plaintiff's product, by labeling the attachment with a term trademarked by plaintiff).

Nominative fair use defense applies only if defendant "does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one." Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1041 (9th Cir. 2003) (nominative fair use defense unavailable to defendant who failed to show that defendant's use of plaintiff's trademark did not suggest sponsorship or endorsement by the trademark holder of defendant's product) (citing New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 306 (9th Cir. 1992); See Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-08 (9th Cir. 2003) (extensive discussion of cases in considering application of nominative and classic fair use defense finding neither available where a defendant's use of a trademark was not in its primary descriptive sense, and used to suggest sponsorship or endorsement by the trademark holder); Cairns, 292 F.3d at 1151 ("The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product.") (footnote omitted).

 

 

Source: Ninth Circuit Manual of Model Jury Instructions (Civil)