Common Litigation and Prosecution Trademark Pitfalls in 2011-2012 – YouTube Video

The Fair Use Defense. I’ll go to over the case and then I’ll make the point that I am trying to make. But the Fair Use Defense is codified in the Lanham Act under 15 USC 1115 (b)(4) and its … there are two types of trademark fair use.  There’s the classic trademarks fair use defense where the defendant has used the plaintiff’s mark to describe the defendant’s own products or nominative fair use where the defendant has used a trademarked term to describe the plaintiff’s product even though the defendant’s ultimate goal is to describe its own products.  So whether you’re dealing with the classic or the nominative fair use defense, there are several prongs that you need to satisfy.   

To demonstrate, first you have to demonstrate that the mark was used not as a trademark, but fairly and in good faith to describe the goods and services so those are the prongs that you need to satisfy.  The first case that I looked at, which I thought was interesting, is Car-Freshener vs Getty Images.  And this kind of case, you know, when I started reading it, I thought “well for sure, you know, Getty is going to win in that case.”  But really that didn’t happen.  Ultimately, Getty lost the case on a motion to dismiss.  So … and the reason really when you actually look at this case and you compare it to other cases, it’s mostly because the plaintiff’s mark is really a strong one.  So in that case, plaintiff Car-Freshener sued Getty for unauthorized use of its signature pine tree shaped trademark. 

I know you know what trademark that is … it’s the little pine tree that hangs in the rear view mirror of so many people’s cars that freshens your car and everybody recognizes it when they see it.  I don’t know when it was started but I think it’s really an item of your childhood.  That’s how long it’s been it’s been around. 

In any case, what Getty did, and that’s probably why they used it, it used the pine tree figure in a series of stock photographs.  One image, for example, showed that mark with the word ‘fresh scent’ lying in the grass.  Another images showed the pine tree hanging on a rear view mirror in a car with, in the distance, a picture of the mountains, and there are several other pictures as well.  So Getty sought dismissal of the case based on the fair use defense and they claimed that they were really not using the trademark to sell their own good but rather in their primary descriptive sense.  Ultimately, the court denied Getty’s motion to dismiss because it thought well it’s actually plausible that the plaintiff alleged a claim for trademark infringement.  So let’s just take a look at it.  Getty’s argument was based, of course, on the doctrine of fair use and so they have the three-prong test to satisfy that the mark was used other than as a mark in a descriptive sense and in good faith.   Well, it seems that the court ruled in favor of plaintiff in that case because it found that the images created in association between the tree mark and the concept “fresh sense”, which is exactly what the plaintiff was selling … fresh spent for your car wherever you decide to use the pine tree.  Therefore, Getty was relying on the strength of plaintiff’s mark in order to sell its own goods, which here were stock photographs, but that argument didn’t work.  Getty also argued that the use of the tree was really a nominative fair use, in other words, even if it was using their trademark to sell images it really was not doing it in a way that capitalize on consumer confusion. Well, the court actually also rejected this argument finding that purchasers of that the image may actually think that Car-Freshener is actually endorsing those images and sponsoring them in order to sell them.  So, therefore, the Court said that Getty … that Car-Freshener had plausibly stated a cause of action.  So I thought that was an interesting case.


Trademark infringement is a very serious matter to deal with, and there are ways to prevail on a claim of trademark infringement.  Defendants have available to them four distinct types of defenses for a defense against a trademark infringement claim.  However, knowing what those trademark protection defenses are, how to properly use them as a defense or even defend against them can make the difference in how a trademark infringement lawsuit may be decided.  Whether you need to file a lawsuit against another for trademark infringement or defend against a claim of trademark infringement, contact one of our experienced trademark attorneys to review your serious trademark dispute.   

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