USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
Invalidity • The mark is invalid or unenforceable because it is (i) generic or (ii) descriptive without sec - ondary meaning. • A non-traditional mark such as product packaging, sound, colour, etc is not inherently distinctive and lacks secondary meaning. • Product features that are functional – whether aesthetic or utilitarian – cannot be protected as trade marks. A feature is functional if it is essential to the product’s use or purpose, or if it has an impact on the product’s cost or quality or puts competitors at a significant non-reputational disadvantage. Priority • The defendant was using the accused trade mark before the plaintiff in the relevant field of use and/or territory. • If the defendant has priority in a common law mark, that priority may be local and may only insulate it in the trading area where it had priority. Abandonment • The plaintiff has not used the asserted mark for some time and lacks an intention to resume use. Intent not to resume may be inferred from circumstances. Non-use for three consecutive years is prima facie, evi - dence of abandonment. This can be a com - plete bar to liability. Fair Use • Classic fair use: The defendant used the plaintiff’s mark in its plain English meaning or in some other descriptive manner. • Nominative fair use: The defendant used the mark to fairly and non-confusingly to refer to the plaintiff or the plaintiff’s product.
Parody • The defendant used the trade mark in a parodical way to comment on the owner of the trade mark or the product in a manner such that no consumer could reasonably be confused. Parody is a subcategory of the fair use exception. In Jack Daniel’s v VIP , 599 US 140 (2023), the Supreme Court made clear that parody does not protect the junior user when it uses the mark as a source identifier, even if the mark is humorous. Unclean Hands • Unclean hands is a defence that considers the plaintiff’s bad faith, wrongful conduct, etc. It is usually used to reduce damages rather than as a complete defence; however, it can act as a complete defence to liability. Exam - ples of unclean hands include fraudulent filings to secure registration. Violation of Competition Laws/Trade Mark Misuse • Antitrust violations may fall under the unclean hands defence and generally require that the plaintiff is misusing the trade mark beyond the scope if its claimed rights to create a monopoly. This is not often used. Delay • Laches is a defence to infringement when the plaintiff has waited unjustifiably long to sue, and the defendant would be prejudiced by the delay. Courts will often look to an analo - gous state law’s statute of limitations, as the federal Lanham Act does not provide for a statute of limitations. • Laches is often a bar to monetary damages, but depending on the case and court, it may or may not be a sufficient defence to an injunction, given the focus of trade mark law on protecting consumers.
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