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Business Litigation

Affirmative Defenses to Trademark Infringement Claims

January 29, 2021

Trademark law protects the use of symbols, words, names, phrases, and other marks used in connection with goods and services. The owner of a trademark can obtain an injunction or other equitable relief to prevent unauthorized use of their mark. They can also recover damages from someone who has used the mark without permission. A defendant in a trademark infringement lawsuit can raise several kinds of defenses, including challenges to the validity or enforceability of the trademark itself, denial of the plaintiff’s claimed damages, and equitable defenses based on the plaintiff’s own actions. Federal law also allows defendants to raise certain affirmative defenses.

What is Trademark Infringement?

Any unauthorized use of a legally protected trademark may constitute infringement if it creates a likelihood of confusion among consumers. This could involve the use of a product logo in a way that would lead the public to think that something is associated with that product or endorsed by the trademark owner. Trademark infringement can also occur when someone uses a logo, design, phrase, or other mark that is substantially similar to an existing trademark.

Affirmative Defenses to Trademark Infringement

Penalties for trademark infringement can be significant, including monetary damages, injunctions, and orders to destroy items bearing the infringed trademark. The plaintiff has the burden of proving the elements of trademark infringement. They also typically have the burden of overcoming defenses raised in response to their claims.

An affirmative defense involves facts that a plaintiff might not have alleged. If proven, those facts would either eliminate or mitigate the defendant’s liability for the plaintiff’s claims. Raising an affirmative defense therefore shifts the burden of proof to the defendant, at least for the elements of that defense.

A common affirmative defense in civil litigation involves a claim that the statute of limitations has passed, and the plaintiff’s claims are therefore not timely. The defendant has the burden of proving, usually by a preponderance of evidence, that the statute of limitations has run out. Trademark law also provides two affirmative defenses specifically for infringement claims.

Fair Use

This is different from the Fair Use Doctrine in copyright law, although both are affirmative defenses to infringement. Trademark law allows for two different fair use defenses.

descriptive fair use defense involves the use of a descriptive trademark with a secondary meaning that associates it with a particular product or service. The defendant must show that they used the mark in good faith, without the intent to mislead or deceive consumers, and solely to describe their own product or service. This can apply to a variety of terms that describe the purpose or uses of a product, the geographic origin or location of a product or service, or a product’s qualities.

An example of descriptive fair use involved a juice company that used the term “sweet-tart” in advertising for the product. The owner of the trademark for the candy known as “SweeTarts” unsuccessfully claimed trademark infringement. The court found that the defendant was only using “sweet-tart” to describe their own product, without any intended reference to or association with the candy.

Nominative fair use involves the use of a trademark to refer specifically to the trademark owner’s, rather than the user's, product or service. It may arise in advertising for service-oriented businesses, such as an auto mechanic shop that lists the types of cars that it services in its advertisements. Retail businesses might list products that they offer for sale in an ad. It can also be a factor in advertising that compares one business’ products to those of another — e.g. “Coca-Cola is better than Pepsi” — as long as the advertisement does not involve slander or other unlawful disparagement.

Courts look at the likelihood of confusion when considering a nominative fair use defense. Are consumers likely to be confused about the association of the trademark with the user? Does the use of the mark create a false impression of endorsement or sponsorship by the trademark owner? If the answer to either question is “yes,” nominative fair use does not apply.


A defendant can raise parody as an affirmative defense to a trademark infringement lawsuit in certain circumstances. The term “parody” is commonly associated with comedy or satire, but the unauthorized use of a trademark does not need to be laugh-out-loud funny for the parody defense to apply. As with the fair use defenses, the user must not have created the risk of confusion, or any false impression that they have the trademark owner’s endorsement. The use cannot be too closely tied to the user’s commercial interests. Slander and trade disparagement laws may still apply, even if the use does not constitute trademark infringement.

Television programs like Saturday Night Live often produce and show sketches or clips that parody well-known trademarks. This is generally considered fair use because:

  1. They are not using those sketches primarily to sell their own products; and
  2. It is clear that the sketches are not actually associated with the trademarked products or services.

Parody in advertising is trickier because the goal is to sell a product or service. About a decade ago, for example, the outdoor clothing and equipment company The North Face filed a trademark infringement lawsuit against a clothing company known as The South Butt. Not only was the name an inversion of the plaintiff’s name, but the logos for the two companies were also very similar. The parties reached a confidential settlement agreement, but a court later ruled against the defendant’s founders after they began marketing products with the name “The Butt Face.” Both this and The South Butt were too intertwined with the user’s commercial activity for the parody defense to apply.