There are two main defenses against trademark infringement. They are fair use and parody. There are different types of defenses within those two main defenses. Trademark infringement defenses all fall somewhere into the criteria consisting of eight key elements that make up trademark infringement. If a defendant can prove their use of a trademark was either fair use or a parody, the court could possibly rule in their favor in an infringement case.
Fair Use
Fair use occurs when someone uses a trademarked term for its primary definition and not its secondary meaning. For instance, if there is a series of summer sneakers coming out and they all consist of being either all blue or all white sneakers, a painting company that uses the trademarked slogan “all white” cannot sue because someone else used the words “all white” in a descriptive purpose.
The descriptive purpose would be considered the word’s primary meaning with the trademarked meaning being the secondary meaning. There was no intent to support or denounce the painting company in anyway when the sneakers appearance was being described as all white.
Another trademark infringement defense that falls under the fair use umbrella is nominative use. Nominative use takes place when a trademarked term is needed to describe another thing or that thing’s product. For example, the New York Yankees cannot sue if a newspaper uses their trademark name to describe tourist attractions in New York City.
The use of the trademarked name is only to used to describe and identify the team. There is also no other way to effectively identify the New York Yankees. One could not even describe them as New York’s baseball team because there is more than one team in the city. The newspaper’s use of the trademarked term was only for descriptive and identifiable purposes, not as a way to sell a product with the assistance of someone else’s trademark.
Parody
Parody is an accepted trademark infringement defense. Parodies are accepted because they are believed to serve a artistic and editorial purpose in society. Parodies to a degree are also protected under free speech in the first amendment. Parodies are meant to clearly mock or carry the opposite message of the original trademark. This should free anyone of any possible confusion regarding which is the real trademark and which is the organization responsible for the parody.
As long as the parody is clearly making fun of or mentioning the original message or trademark, parody is a proper trademark infringement defense. The creator of a parody must be sure to clearly show they are not trying to pass off the original idea as one of their own. The parody must not cause any financial losses or bring down the value of the original trademark.
