Updated November 12, 2020:

What is a Trademark Infringement Defense?

A trademark infringement defense is a legal case brought by a defendant to prove they did not infringe on someone else's (the plaintiff's) trademark. Basically, trademark infringement is the unauthorized use of a trademark or service mark on goods or services that compete or are related. Whether or not a claim is successful is transferred to the defendant and depends on whether his or her use was likely to cause confusion to the average consumer, thereby weakening the plaintiff's image. It's important to note that infringement doesn't need to be an exact replica or copy, just similar enough to confuse the average consumer. This is especially an issue when both marks share the same market and thereby can be seen as related.

There are four primary defenses to claims of trademark infringement. These are:

Doctrine of Laches

Laches is an unreasonable delay by the plaintiff in bringing a claim. When you assert a defense of the doctrine of laches, you're asserting that the other party did not bring the claim quickly enough and is out of time. It's typically used in equity cases as an affirmative defense, whereas the statute of limitations is what you're likely more familiar with in a statutory damages case. Laches is derived from an Old French term, lasche, and is quite close in meaning to negligence.


The doctrine of estoppel has three main elements:

  • Position of authority assumed by the defendant
  • Submission to and reliance upon that assumption by the plaintiff
  • Injury suffered by the plaintiff as a direct result of submission and reliance

Unclean Hands

Unclean hands is only invoked by the court when a plaintiff is otherwise entitled to relief, but acted so badly with respect to the claim of infringement that the public interest in punishing the plaintiff outweighs the need to stop the defendant's illegal conduct.

Fair Use/Collateral Use

Fair use is probably the most common defense raised to trademark infringement claims. You often hear it quoted in parody cases, although fair use doesn't apply when the claimed parody is used to promote a competitor's goods or services. Fair use is also seen in advertising cases, provided there are no untrue claims. The First Amendment protects artistic and editorial parodies. If the parody is used for commercial purposes and to sell products, it won't get the same protection from the law.

Collateral use is when someone uses a trademarked item as part of a bigger project/product. The doctrine of collateral allows the defendant to use the trademark without fear of infringement, provided he or she does not deceive consumers into thinking the product is marketed by the original trademark owner.

Fair use and parody are affirmative defenses to trademark infringement, which means it's technically an "excuse" for the defendant to keep using the trademark.

When are Trademark Infringement Defenses Needed?

Trademark infringement defenses are needed when someone who owns the rights to a trademark sues another person for attempting to use their mark, or one that is substantially similar to the trademark in question.

The Importance of a Trademark

Why is a trademark important? A trademark serves multiple purposes. It's a way to identify that all goods bearing the mark come from the same source. It's a guarantee of uniform quality, and it's also a form of advertising. That's why you should search for available trademarks and similar ideas before settling on your own branding. You want to protect yourself against future claims of infringement. To know how to protect your own trademark, you need to understand what its elements are:

  • (i) identify and do not describe
  • (ii) use proper adjectives not nouns
  • (iii) must remain distinctive
  • (iv) must be properly designed as marks

Common Mistakes

In order to protect yourself from claims of trademark infringement, create a trademark that is easier to protect and defend. Every trademark has some ranking of strength, whether it's weak or very strong. The range provides insight into the product -- if it's suggestive of the goods, it's the weakest, whereas made up terms or unrelated marks make the strongest trademarks. One example often used is APPLE Computers. The apple logo has nothing to do with the products being sold.

When courts are ascertaining whether trademarks are similar, they consider elements like common letters, meaning, pronunciation, and the consumer impression. They also compare whether the goods are closely related. Don't assume goods are related by the International Class number used at the U.S. Patent and Trademark Office. Class numbers are only utilized in the U.S. and determine the fees owed by the applicant, and they are completely unrelated to the owner's rights. In other countries, you may find the class numbers are important and do have a relationship.

There is also discussion about whether a mark appears in a crowded field, which can occur when trademarks for certain goods have some similar attributes. In the crowded field situation, parties may adopt a similar mark, provided they are different from each other and not closer to any one other mark in the group.

Famous trademarks are treated differently when you're talking about overall analysis. They are provided rights under the theory of "dilution," which allows the trademark owner to pursue a claim even if the goods are entirely unrelated. An example would be a very well-known brand like Coca-Cola. If someone tried to use the name for Coca-Cola for an unrelated product, the theory of dilution would apply.

The confusion aspect of trademark law applies, which can be helpful for proving infringement in some cases, but when the trademarks are both new, confusion may not even be an issue yet.

When considering the parody defense, the courts are often siding on behalf of the parody, while the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) is finding against them nearly all the time. Here are three recent decisions that all side against the defendant:

  • LESSBUCKS COFFEE – "joking uses of trademarks are deserving of less protection when the object of the joke is the mark of a directly competing product" citing Deere & Co. v. MTD Products. Inc., 41 F.3d 39, 32 USPQ2d 1936, 1940 (2nd Cir. 1994).
  • SEX ROD – "there is nothing in the parody itself which changes or detracts from the vulgar meaning inherent in the term" … "Parody is not a defense if the marks would otherwise be considered confusingly similar."
  • JUST JESU IT – "applicants are not intending to use their mark to parody or to make any type of social commentary regarding opposer, opposer's famous mark or opposer's goods. Instead, they are seeking to use their mark for religious social commentary, and attempt to take a "free ride" on the mark's association with the famous mark for economic gain. This is not protectable parody."

Frequently Asked Questions

  • What sources govern trademarks?

Both state and federal law govern trademarks. State law was the original main protection, but the U.S. Congress enacted the first federal law in the late 1800s. Since then, federal law has continued to expand, taking over state common law. The main federal statute is the Lanham Act, which was enacted in 1946 and amended in 1996, 15 USC 1051, et seq.

  • What constitutes trademark infringement?

Trademark infringement occurs when there is a chance of confusion between two trademarks and the defendant is using a mark that is the same or similar to the plaintiff's trademark. The plaintiff must own the rights to the trademark. The standard of "likelihood of confusion" will apply, which again, looks at a number of factors,

  • The strength of the mark
  • The proximity of the goods
  • The similarity of the marks
  • Evidence of actual confusion
  • The similarity of marketing channels used
  • The degree of caution exercised by the typical purchaser
  • The defendant's intent

Steps to File

When trademark infringement is suspected, a trademark owner (plaintiff) brings a lawsuit against the suspected infringing user, or defendant. Lawsuits may require the defendant to stop using the trademark in question and it may also award damages for the wrongful use of the trademark.

The plaintiff may bring the action in either state court or federal court if the trademark is protected under the Lanham Act, which applies to both registered and unregistered trademarks that are used in commerce streams where Congress may oversee regulation.

Deadlines and regulations for bringing a trademark infringement case are very strict and detailed. If you need help with trademark infringement defenses, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.