Defenses to trademark infringement allegations include: the trademark is invalid, the trademark has been abandoned, or the mark is not distinctive.
A registered trademark is invalid if the registration of the trademark or the incontestable right to use the trademark was obtained fraudulently. A trademark, whether registered or unregistered, is invalid if the mark has become generic. A trademark, whether registered or unregistered, is invalid if it is primarily a surname. The defendant has the burden of proving a registered trademark is invalid. The plaintiff has the burden of proving an unregistered trademark is valid.
A trademark is invalid if the plaintiff’s use of the mark was only token use. Token use means sporadic, casual, or transitory use that is not part of an ongoing effort to use the mark in commerce. Volume of sales does not exclusively determine whether use of a mark is only token use. However, there must be a true effort to meaningfully market the mark in commerce.
A trademark may have been abandoned if the plaintiff stops using the mark.
Distinctiveness is classified in four (4) categories: (1) arbitrary or fanciful marks; (2) suggestive marks; (3) descriptive marks; and (4) generic marks.
Arbitrary or Fanciful
Arbitrary or fanciful marks are strong marks that are entitled to trademark protection. Suggestive marks are less strong than arbitrary or fanciful marks, but are still inherently distinctive and are entitled to trademark protection.
Descriptive marks are only entitled to trademark protection if they obtain secondary meaning in the mind of the consumer. That a mark is descriptive and has not obtained secondary meaning in the mind of consumers is therefore, a defense to a claim of trademark infringement. Descriptive marks are marks that identify some characteristic of the good or service to which it is attached. Consumers can understand the connection between the mark and the good or service. “Apple” is descriptive when used to describe the juice in the trademark “CranApple.” Use of geographic terms in connection with a good or service from that location or area are descriptive. Secondary meaning is achieved when the public associates a mark with a single good or service even though the mark itself does not distinguish the good or service. If the mark is unregistered, the plaintiff must prove secondary meaning.
Generic marks are not entitled to trademark protection. That a mark is merely descriptive is a defense to trademark infringement. A generic mark does not identify the source of a good or service. Instead it is a common work that a consumer would use to identify a type of good or service. An example would be use of the work “apple” to describe a fruit (yet it is an arbitrary or fanciful word when used to describe a computer company). A word can become generic and then it loses its trademark. The word“aspirin” used to be a trademark for “acetyl salicylic acid” but is now become a generic term and lost its trademark.