The defenses to trademark infringement are arguments that can be raised by the alleged infringer to defend against a claim of trademark infringement. Some of the common defenses to trademark infringement are:
Fair Use: You can argue that your use of the trademark is a fair use, such as for commentary, criticism, news reporting, or non-commercial purposes and your use of the trademark did not create a likelihood of confusion among consumers.
First Amendment: You may argue that your use of the trademark is protected by the First Amendment as freedom of speech.
Abandonment: You may argue that the trademark owner abandoned the trademark, either by failing to use it or by using it in a manner that showed a lack of intention to enforce their rights.
Laches: You may argue that you have been using the trademark for an extended period of time, that the trademark owner took too long to bring the infringement action and that the delay caused you prejudice.
Estoppel: You may argue that the trademark owner made representations that led you to believe that your use of the trademark was authorized.
Prior Use: You may argue that you were using the trademark before the trademark owner and that your use is protected by your prior rights.
Invalidity of the plaintiff’s trademark: You can challenge the validity of a trademark by showing that it is generic, descriptive, or was not used in commerce before the owner claimed it as a trademark.
Non-infringing use: You can argue that your use of the trademark is not likely to cause confusion with the plaintiff’s trademark because your goods or services are different, or you are using the trademark in a way that is not likely to create confusion.
These are just a few of the defenses to trademark infringement that may be raised in a case. The specific defenses available will depend on the circumstances of the case and the law of the jurisdiction where the case is being heard. You should consult with an experienced trademark attorney if someone has accused you of trademark infringement.
Defenses to a claim of trademark infringement can be raised at various stages of the legal proceedings. Some common times to raise defenses include:
In your answer to the complaint: When you receive a complaint for trademark infringement, you will need to respond within the time frame set by the court. This is typically done by filing an answer that denies or admits the allegations and raises any defenses you have.
During discovery: During the discovery phase, the parties exchange information and evidence related to the case. This is an opportunity to raise additional defenses, such as arguing that the plaintiff’s trademark is not distinctive or that your use of the mark is protected by the doctrine of fair use.
In a motion for summary judgment: If there are no genuine issues of material fact in dispute, you may be able to bring a motion for summary judgment seeking a ruling in your favor without a trial. This is an opportunity to raise defenses, such as arguing that the plaintiff’s trademark is invalid or that your use of the mark is not likely to cause confusion.
At trial: If the case proceeds to trial, you will have the opportunity to present your defenses and argue that the plaintiff’s claim of trademark infringement should be dismissed.
It is important to note that the specific defenses that may be available in a trademark infringement case will depend on the facts and circumstances of the case. Therefore, it is important to seek legal advice from an experienced attorney to determine the most appropriate defenses to raise in your case.
