There are four distinct defenses available for a defense against a claim of trademark infringement:

  • Doctrine of Laches
  • Estoppel
  • Unclean Hands
  • Fair Use/ Collateral Use

Doctrine of Laches
Stating that the other party neglected to assert a right or claim which, taken together with lapse of time and other circumstances causing prejudice to you, operates as bar in court of equity.

Estoppel
"The doctrine of estoppel has three essential elements -- a position of authority assumed by the defendant; submission to and reliance upon that assumption by the plaintiff; and injury suffered by the plaintiff as an immediate consequence of such submission and reliance."

Unclean Hands
Invoked by a court only when a plaintiff otherwise entitled to relief has acted so improperly with respect to the controversy that the public interest in punishing the plaintiff outweighs the need to prevent defendant's illegal conduct.

Fair Use/ Collateral Use

  • Fair use allows fair comment that incidentally involves use of the mark for a purpose other than that normally made of a trademark. Most often occurs in advertising cases (so long as there are no untrue claims) and parody cases (but it is not fair use when a claimed parody is used to promote competitive goods or services).
  • Collateral use allows the use of goods that bear a preexisting mark. Basically, when a party uses a trademarked item as a component of a more complex product, the doctrine of collateral use allows the party to so identify the component by its trademarked name without fear of being liable for infringement. This is only true to the extent the party does not deceive the public into thinking that the product, as sold, is actually marketed by the trademark owner.

Should I Consult a Lawyer About My Trademark Issue?

The deadlines and regulations for trademark registration are detailed and strict. An intellectual property attorney can help you meet all the deadlines and fulfill all the requirements. A lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Additionally, if you have an issue of trademark dilution or infringement, an attorney can guide you through the difficult and strict procedural requirements for litigation and bring out the core of your case.