toggle accessibility mode
affirmative defenses in trademark infringement

Affirmative Defenses in Trademark Infringement

By John DiGiacomo

Affirmative Defenses in Trademark Infringement

Affirmative defenses in trademark infringement cases is an excuse for the conduct of a potential trademark infringer, which would allow continued use of the mark. There are two affirmative defenses to trademark infringement: fair use and parody.

Fair Use Defense

A fair use defense in trademark law applies when a descriptive mark, that has adapted a secondary meaning, is only used for the descriptive nature of the mark. A secondary meaning exists when the public associates a mark with a product so closely that a “secondary meaning” of its relatively general mark has been created. An example of this is All-Bran cereal: even though the name is descriptive of the product, it has gained a secondary meaning because people associate that mark with the product “All-Bran.” However, in that vein, another company can market their cereal as an “all bran” cereal without infringing because the affirmative defense of fair use applies.


The other main affirmative defense in trademark infringement is parody. This defense uses the basic sense of First Amendment protection for artistic and editorial parodies created in response to a commercial trademark, and essentially boils down to whether the similar mark used as a parody is used for commercial purposes. If the parody mark is used to sell products, it will likely receive less protection from the courts. For example, a company was created with the name “The South Butt” as a parody of “The North Face” with a very similar logo; that parody was deemed to be too closely tied to commercial use and was held to be an unlawful infringement.


Trademarks are an important form of protection for intellectual property. Specifically, a trademark is any word, name, mark, symbol, or device that is used in commerce to indicate the source of a good or service and distinguish it from goods or services sold by another. There are two main reasons for trademarks: first, to protect consumers from purchasing lower quality goods than they thought they were; and second, to encourage the trademark owner to produce quality goods by making sure that its efforts are recognized.

Trademark Formation

There are three elements required for a valid trademark registration: distinctiveness, nonfunctionality, and first use in trade. Distinctiveness means that the mark must distinguish the goods of one person from those offered by another. The second element, nonfunctionality, means that trademark law does not protect functional features of a product. Finally, first use in trade automatically gives a person rights to use a mark for a good or service in the particular geographic region where that mark is used, unless someone has registered a substantially similar mark with the United States Patent and Trademark Office (USPTO).

While basic common law rights to a trademark exist in the geographic region of sale as soon as the mark is used in commerce, nationwide protections are awarded once the mark is registered with the USPTO. The distinctiveness of a mark is based on a sliding scale, going from most distinctive—starting with “fanciful,” and moving through “arbitrary,” “suggestive,” and “descriptive”—to least distinctive, or “generic.” For example, “Exxon,” the name of the oil company, would be considered fanciful because it has no relation to the production of gasoline. “Holiday Inn,” however, is considered to be a descriptive trademark because the name itself somewhat describes the good provided (hotel services).

Trademark Infringement

A person who owns the rights to a trademark can sue another person who attempts to use their mark or who attempts to use a mark that is substantially similar to the protected mark. When looking at infringement cases, courts use the standard of “likelihood of confusion.” In essence, how much confusion for consumers does the subsequent mark cause? The approach considers multiple factors including the distinctiveness of the mark, proximity to the protected goods, evidence of actual confusion, marketing approaches, and the defendant’s intent. A recent example of this came from the Eastern District of Michigan, where the court ruled the product named “6 Hour Power” infringed on the earlier held mark “5-Hour Energy.” The court reasoned that the makers of “6 Hour Power” were attempting to confuse customers into buying its products.

For more information about affirmative defenses in trademark infringement, contact Revision Legal’s team of experienced trademark attorneys through our contact form, or by calling 855-473-8474.

Image courtesy of Flickr user Edgeworks Limited



Put Revision Legal on your side