In Boston Red Sox Club Limited Partnership v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008), supraChapter 4[C][1][a], the Board found that Applicant’s failure to produce any documents that evidenced a bona fide intent to use at the time the application was filed created a presumption of a lack of bona fide intent. Should such a showing be sufficient to make out a claim of fraud based on a lack of bona fide intent? See Spin Master Ltd. v. Zobmondo Entertainment, LLC, 778 F. Supp. 2d 1052 (C.D. Cal. 2011) (discusses the difference between the “objective” circumstances test of lack of bona fide intent and the “subjective” intent standard for fraud).
As we have seen, most of the defenses, including those to incontestably registered marks, concern the nature of the mark, or of the trademark owner’s use of the mark. By contrast, two of the § 33(b) defenses focus on the other party’s use. We have already examined one of these two defenses, the good-faith junior user exception, set forth at § 33(b)(5), in the materials on acquisition of trademark rights and concurrent use,supra, Chapter 3[F]. The other defense, trademark “fair use” (not to be confused with the eponymous, but quite different, exception to copyright infringement), applies when an alleged infringer has used a term in good faith primarily to describe a product, rather than to identify it with a particular source. [557/558]In such a circumstance, the use will be held not to infringe the plaintiff’s trademark that it resembles.
Leval, J:
Plaintiff United States Shoe Corp. (“U.S. Shoe”), asserts trademark violation and unfair competition against Brown Group, Inc., in connection with the advertising and sale of women’s dress shoes. Plaintiff advertises its women’s dress pumps under the slogan and musical jingle, “Looks Like a Pump, Feels Like a Sneaker.” Defendant has launched an advertising campaign that compares its pump to a sneaker and asserts that it “feels like a sneaker.” Plaintiff seeks a preliminary injunction barring defendant from using the phrase. An evidentiary hearing was held on submission.
[558/559]
Background
The facts are largely undisputed. In August 1987, the plaintiff began to sell walking shoes under the Easy Spirit trademark. In or around October 1988, the plaintiff introduced under the same trademark a line of “comfortable women’s dress pumps” which were intended to incorporate design and comfort elements of the plaintiff’s walking shoes. Since that time, Easy Spirit pumps have been promoted and advertised by associating them with sneakers, and in particular by using the slogan or tag line, “Looks Like a Pump, Feels Like a Sneaker.” This slogan has been prominently featured in plaintiff’s print ads, point of purchase displays, catalog sheets and promotional brochures. It has also been used in a widely distributed television commercial, in which the slogan is sung while women are pictured playing basketball in Easy Spirit dress shoes. The plaintiff spent more than nine million dollars on advertising including the slogan in 1988 and 1989. During this time, sales increased dramatically. Sales of Easy Spirit pumps increased between 56% and 133% in the relevant market in the several weeks following runs of plaintiff’s television commercial.
The defendant is the manufacturer and distributor of the NaturalSport line of walking shoes, and also of the Townwalker, a comfortable women’s dress pump considered to be one of the key competitors of the Easy Spirit dress pump. In mid-1988, defendant retained the advertising agency D’Arcy, Masius, Benton & Bowles (“D’Arcy”) to develop an ad campaign for the Townwalker and other NaturalSport shoes. D’Arcy recommended a campaign to communicate the basic product concept of the Townwalker: “a sneaker in a pump.” D’Arcy submitted several proposed print ads for the Townwalker to the defendant, including some which used the slogan, “The pump that feels like a sneaker.” The defendant rejected these ads, in part because of their similarity to plaintiff’s advertising slogan, “Looks Like a Pump, Feels Like a Sneaker,” of which defendant was aware. …
The print advertisement ultimately selected by defendant features a photograph of a women’s pump with the headline, “Think Of It As A Sneaker With No Strings Attached.” The text of the ad includes the phrase, “And when we say it feels like a sneaker, we’re not just stringing you along.” The ad includes the NaturalSport logo, the slogan, “Walk Our Way” and the words “From Naturalizer,” which defendant uses to advertise other styles of shoe in the NaturalSport line.
Plaintiff contends that the Townwalker ad’s statement “And when we say it feels like a sneaker” is deliberately meant to mislead consumers into believing the Townwalker is the brand previously advertised by the slogan, “Looks Like a Pump, Feels Like a Sneaker,” and thus cause consumers to purchase defendant’s pump rather than plaintiff’s. Plaintiff alleges that this constitutes a violation of the Lanham Act, as well as unfair competition and trademark violation under state common law.
… .
Defendant’s use of the words “feels like a sneaker” falls squarely within the “fair use” defense codified in Section 33(b)(4) of the Lanham Act. The fair use doctrine provides a statutory defense to a trademark infringement claim when “the use of the name, term or device charged to be an infringement is a use, otherwise than as [559/560]a trade or service mark, … of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin.” 15 U.S.C. § 1115(b)(4) (emphasis added). The purpose of the defense is to prevent the trademark rights of one party from being extended to preclude another party from the description of his product to the public. [Citation.] When the plaintiff chooses a mark with descriptive qualities, the fair use doctrine recognizes that “he cannot altogether exclude some kinds of competing uses,” “particularly those which use words in their primary descriptive and non-trademark sense.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 12 (2d Cir. 1976). [Citation.]
An understanding of statutory fair use doctrine depends on the purposes and justifications of the trademark law. In general, the law disfavors the grant of exclusive monopoly rights. Exceptions exist, however, where the grant of monopoly rights results in substantial benefits to society. Because of the benefits to society resulting from the ability easily to recognize the goods or services of a purveyor or manufacturer, the trademark law grants the exclusive right to employ an identifying mark. A reciprocal benefit results. The merchant is thereby permitted to profit from a well earned reputation; the public is thereby enabled to choose the products produced by those who have satisfied them in the past, avoid those that have disappointed and recognize an unknown quantity as exactly that. The benefits are great, and because potential identifying marks exist in virtually inexhaustible supply, the cost of the monopoly to society is minimal.
The cost-free aspect of the trademark depends, however, on the exclusivity being practiced only over identifiers that are not needed by others for trade communication. If only one manufacturer of candy were permitted to call the product “candy”; if only one were permitted to say that it is “lemon flavored,” then society would not be enriched but impoverished. Society would be deprived of useful information about competing products, and one supplier would receive an unfair and unjustified advantage over competitors. Thus the trademark law presumptively forbids the establishment of rights over “generic” or “descriptive” marks — marks that define or describe the product. An exception was permitted, however, to a user of a descriptive mark who over time had built up a customer recognition (secondary meaning) in the mark. It would be unfair to permit competitors to piggyback on the reputation earned by such a merchant. Thus a showing of acquired secondary meaning would overcome the presumptive ineligibility of descriptive words to exclusive reservation.
A user of a descriptive word may acquire the exclusive right to use that descriptive word as an identifier of the product or source. This, however, does not justify barring others from using the words in good faith for descriptive purposes pertinent to their products. Returning to the example of the candy manufacturers, the fact that one might acquire trademark rights over a descriptive identifier like “chewy” or “lemon flavored” cannot deprive society of the opportunity to be advised by other manufacturers that their candy is chewy or lemon flavored. Therefore, notwithstanding the establishment of trademark rights over a descriptive term by a showing that it has acquired secondary meaning, the statute preserves in others the right to the use of such terms “fairly and in good faith only to describe [and not to designate] the goods or services.” 15 U.S.C. § 1115(b)(4). The purpose of this[560/561]provision is to ensure that the according of monopoly trademark rights over descriptive marks (upon a showing of acquired secondary meaning) will not overbroadly deprive society of the use of those terms in their descriptive sense in commercial communication.
In this case, the defendant uses the phrase “feels like a sneaker” in a descriptive sense, claiming a virtue of the product. It essentially restates the key selling claim of defendant’s product — that the Townswalker shoe was designed specifically to incorporate the comfort of athletic shoes.
Moreover, defendant is not using the phrase as an identifier or trademark to indicate origin or source. That function is performed in defendant’s ad by the NaturalSport logo, which is prominently displayed, and by the slogan, “Walk our Way … From Naturalizer.” Defendant’s use of the words “feels like a sneaker” is not even as a caption or slogan, but as a fragment of a sentence in small print. In short, defendant uses the words “otherwise than as a trade or service mark, … fairly and in good faith only to describe to users the goods” marketed by defendant. 15 U.S.C. § 1115(b)(4). Under the fair use doctrine, such a use is not an infringement. There is no justification for permitting plaintiff to monopolize an essentially descriptive phrase which claims virtues, simply because plaintiff may have been the first to employ it in widely distributed advertisements.
Plaintiff, furthermore, has not demonstrated a sufficient likelihood of confusion as to source to justify a finding of infringement. Descriptive advertising claiming a product’s virtues is likely to be understood as such rather than as an identifier of source. No confusion should be presumed from the defendant’s use of descriptive words similar to plaintiff’s, because the consumer is likely to understand that it is the claimed features of both products that are being discussed, and not their origin. Notwithstanding that plaintiff may have built up consumer recognition in its slogan and musical jingle, there is no reason to suppose that consumers will assume that any manufacturer who claims his shoes feel like a sneaker is the plaintiff. This is a standard descriptive approach to a claim of comfort and is unlikely to be understood as an identifier. Plaintiff has not met its burden of demonstrating that defendant’s ad is likely to confuse consumers as to the source of defendant’s product.
Kelly-Brown v. Winfrey, 103 U.S.P.Q.2d 1375 (S.D.N.Y. 2012). The court found that use of the phrase “Own Your Power” on the cover of O Magazine and in connection with a magazine-sponsored event was a fair use. The court elucidated what constitutes a non-trademark descriptive use in the context of a phrase.
A trademark use involves an indication of the source or origin of the goods. See Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416, 424 (S.D.N.Y. 2008). A “non-trademark use of [a] phrase” is evident where “the source of the defendants’ product is clearly identified by the prominent display of the defendants’ own trademarks.” Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28, 30-31 (2d Cir. 1997). The fact that a phrase is used in a descriptive sense, as analyzed below, also suggests a non-trademark use. See id.
[561/562]
Defendants argue that they used [Own Your Power] in its descriptive sense and not to indicate the source or origin of the goods (the Magazine and the Event). The source of the Magazine was clearly identified by the prominent, and distinctive “O” trademark followed by “The Oprah Magazine.” See id.; see alsoPackman v. Chicago Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001) (“the Tribune’s distinctive masthead, which appears prominently on the front page … identifies the source of the product.”). The fact that Oprah herself is pictured on the cover of the Magazine further identifies the source of the goods.See Arnold v. ABC, Inc., No. 06 Civ. 1747, 2007 U.S. Dist. LEXIS 5802, at *3 (S.D.N.Y. Jan. 29, 2007)(holding that defendants did not make a trademark use of the phrase “what’s your problem?” when the “identity of the show” was “clearly evidenced by the prominent display of the show’s title, ABC’s own famous and recognizable trademark, and large photos of the show’s three stars.”) The prominent display of Magazine’s trademark “O” also identifies the Phrase as a headline that, along with the other text on the cover, describes the contents of the Magazine. SeePackman, 267 F.3d at 639 (“The Tribune’s use of its well-known masthead also identifies the phrase as a newspaper headline … and not as a Tribune trademark.”).
The O Magazine was also identified as the source of the Event, and the Phrase served to describe the Event’s theme. Promotional materials identified the Event as: “O, The Oprah Magazine[’s] … first-ever own your power event in celebration of the October issue cover story,” which involved “a lively panel discussion about power featuring some notables from this issue’s Power list.” Since the promotional materials clearly identified The O Magazine as the source of the Event, the Defendants’ use of the Phrase in relation to the Event was not a trademark use. SeeArnold, 2007 U.S. Dist. LEXIS 5802, at *3 (holding that defendants’ use of a phrase was not a trademark use where “[o]n both the advertisements and the website, the identity of the show” was clearly evident).
Plaintiffs argue, however, that … Defendants “combined their trademarked ‘O’ ” with the Own Your Power trademark to create a “single source identifier.” …
Plaintiffs’ … argument is … without merit, because the fact that Plaintiffs’ and Defendants’ marks are used in conjunction with each other does not alter the above analysis, where defendants’ trademark or reputation is well known, clearly displayed, and used as an indicator of the source of the product. See B & L Sales Assocs. v. H. Daroff & Sons, Inc., 421 F.2d 352, 353 (2d Cir. 1970) (holding that the trademark phrase “Come on Strong” was not used as a source identifier in the advertisement “Come on Strong with Botany 500,” because given “defendant’s reputation as a well-known manufacturer of [Botany 500] men’s suits, it is inconceivable that these [advertising] materials were intended to attribute the source of the goods to anyone other than defendant.”).3 … Defendants’ prominent display of their trademark, along with a photograph of Oprah, clearly [562/563]identified the source of the products. Accordingly, Defendants’ use of the Phrase, even in conjunction with their trademark, did not constitute a trademark use.
The court further explained that a phrase can be descriptive of an action to be made in connection with a product.
The Lanham Act requirement that the mark be used “to describe the goods,” 15 U.S.C. § 1115(b)(4), “has not been narrowly confined,” but rather “permits use of words or images that are used … in their ‘descriptive sense.’ ” Cosmetically Sealed, 125 F.3d at 30 (quoting Car-Freshner Corp. v. S.C. Johnson & Son., 70 F.3d 267, 269 (2d Cir. 1995)). …
In Cosmetically Sealed, the Second Circuit held that even though “the words ‘Seal it with a Kiss’ do not describe a characteristic of defendants’ [lipstick], they surely are used in their ‘descriptive sense’ — to describe an action that the sellers hope consumers will take, using their product.” 125 F.3d at 30. Here, the Phrase “Own Your Power” describes both the Magazine’s contents, and an action that Defendants hope that O Magazine readers will take, after reading the Magazine. See id.; see also B & L Sales Assocs., 421 F.2d at 354 (holding that it “is quite obvious that the phrase ‘Come on Strong’ was intended only to describe the manner in which [defendant’s] clothing would assist the purchaser in projecting a commanding, confident, ‘strong’ image to his friends and admirers, and no intent to use the phrase in a trademark sense can be inferred from these promotional materials.”). Likewise, the Phrase describes the theme of the Event, explaining both that (1) the Event is “in celebration of the October issue cover story”; and (2) involve a “discussion about power featuring some notables from this issue’s Power list.”
… The manner in which the Defendants used the Phrase on the cover of the Magazine demonstrates that it served in a descriptive capacity. The Magazine blocks off the trademark “O” in a red box on the upper left hand corner. The Phrase, however, is not blocked off, but rather is placed in the middle of text encouraging readers to: “Unlock Your Inner Superstar”; “Tap Into Your Strength”; “Focus Your Energy”; and “Let Your Best Self Shine.” While Plaintiffs’ Phrase is more prominently displayed than these other phrases, that is because it capsulizes the other phrases, and thus the [563/564]Magazine’s contents. Accordingly, the Court finds the Defendants used the Phrase in a descriptive sense. …
Leval, J:
This action for trademark infringement involves the principle that the public’s right to use language and imagery for descriptive purposes is not defeated by the claims of a trademark owner to exclusivity.
Plaintiff Car-Freshner Corporation sells air fresheners for cars in the shape of a pine tree. Over a number of years, Car-Freshner has sold millions of such pine-tree-shaped fresheners. Its air fresheners are made of flat scented cardboard and come in a variety of colors and odors, including a green pine-scented version. They have a string attached to the top of the tree, so that they can be hung from the rear-view mirror of an automobile. We assume that plaintiff has established trademark rights in the pine-tree shape of its product and in the name “Little Tree,” which it uses on some of its products.
Defendant S.C. Johnson & Son, Inc., sells air fresheners under the trademark name “Glade.” Johnson’s “Glade” products include a line of air fresheners called “Plug-Ins,” designed to be plugged into electrical outlets. Glade Plug-Ins have a plastic casing that holds a replaceable fragrance cartridge of scented gel. When the unit is plugged in, the electrical current warms the gel, causing release of the fragrance into the air. During the Christmas holiday season, Johnson sells a pine-tree-shaped, plug-in air freshener called “Holiday Pine Potpourri” under its Glade Plug-Ins trademark.
Car-Freshner brought this action against Johnson, claiming that Johnson’s sale of its pine-tree-shaped plug-in freshener violates Car-Freshner’s trademark rights in the pine-tree shape of its air fresheners and in its mark “Little Tree.” … Johnson, in addition to denying that its use of a pine-tree shape creates a likelihood of confusion, asserted the affirmative defense known in trademark law as fair use.
Johnson moved for summary judgment, arguing that the dissimilarity between the two products and the fair use defense precluded a finding of infringement as a matter of law. The district court rejected Johnson’s claim of fair use and granted summary judgment to Car-Freshner on that issue. The court ruled that the defense of fair use applies only when the plaintiff’s mark is descriptive, and is not applicable here because the court found plaintiff’s mark to be suggestive. The district court nonetheless granted summary judgment to Johnson on the ground that the plaintiff’s and defendant’s tree-shaped products were sufficiently dissimilar that there was no likelihood consumers would be confused as to the source of the two products. Accordingly, judgment was awarded to the defendant Johnson.
Car-Freshner appeals. Johnson cross-appeals, arguing that the district court erred in its fair use determination. We affirm the district court’s grant of summary judgment in favor of Johnson, but on grounds of fair use.
[564/565]
… .
The district court rejected Johnson’s claim of fair use because it believed such a defense could be mounted only against a mark classed as “descriptive” in the four-tiered hierarchy of trademark law — generic, descriptive, suggestive, and arbitrary or fanciful. SeeAbercrombie, 537 F.2d at 9-11. [Citation.] Although there is authority for that proposition, [citations], we believe that notion is misguided. It is true that the doctrine can apply only to marks consisting of terms or images with descriptive qualities. That is because only such terms or images are capable of being used by others in their primary descriptive sense. But it should make no difference whether the plaintiff’s mark is to be classed on the descriptive tier of the trademark ladder (where protection is unavailable except on a showing of secondary meaning). What matters is whether the defendant is using the protected word or image descriptively, and not as a mark. [Citations.]
Whether the mark is classed as descriptive (and thus ineligible for protection without secondary meaning) depends on the relationship between the mark and the product described. Thus words like SWEET or CHEWY would be descriptive for a candy, but would be suggestive, or even arbitrary or fanciful, if used in connection with bed sheets, a computer, or an automobile. Regardless whether the protected mark is descriptive, suggestive, arbitrary, or fanciful as used in connection with the product or service covered by the mark, the public’s right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over the exclusivity claims of the trademark owner. See Dowbrands, L.P. v. Helene Curtis, Inc., 863 F. Supp. 963, 966-69 (D. Minn. 1994) (fair use defense is not limited to descriptive marks); Restatement (Third) of Unfair Competition § 28 cmt. a (“Trademark rights … extend only to the source significance that has been acquired by such terms, not to their original descriptive meanings.”). An auto manufacturer’s use of the mark SWEET for its cars could not deprive anyone of the right to use that word in good faith in its ordinary descriptive sense and not as a trademark. Thus a candy manufacturer would remain free to advertise the sweetness of its candies without worry about the trademark owner’s bridging the gap and going into the candy business. If any confusion results to the detriment of the markholder, that was a risk entailed in the selection of a mark with descriptive attributes.
Section 1115(b)(4) includes no prerequisite that the mark sought to be protected be on the descriptive tier. …
In short, fair use permits others to use a protected mark to describe aspects of their own goods, provided the use is in good faith and not as a mark. See 15 U.S.C. § 1115(b)(4). That is precisely the case here. Johnson’s use of the pine-tree shape describes two aspects of its product. The pine tree refers to the pine scent of its air freshening agent. Furthermore, as a Christmas tree is traditionally a pine tree, the use of the pine-tree shape refers to the Christmas season, during which Johnson sells this item. Johnson’s use of the pine-tree shape is clearly descriptive. There is no indication that Johnson uses its tree shape as a mark. Its pine-tree-shaped air fresheners come in boxes prominently bearing the “Glade Plug-Ins” trademark as well as Johnson’s corporate logo. Each unit has “Glade” imprinted across the front of the product itself.
Car-Freshner contends that Johnson adopted the mark in bad faith and [565/566]therefore cannot claim fair use. Car-Freshner bases its argument primarily on the fact that Johnson adopted its tree shape with knowledge of Car-Freshener’s use of the tree shape and without consulting counsel. There is no merit to this argument. As Johnson was fully entitled to use a pine-tree shape descriptively notwithstanding Car-Freshener’s use of a tree shape as a mark, the fact that it did so without consulting counsel has no tendency to show bad faith.See U.S. Shoe, 740 F. Supp. at 199 (defendant’s knowledge of plaintiff’s success with mark is insufficient to show bad faith); Restatement (Third) of Unfair Competition § 28 cmt. d (1995) (describing examples of bad faith).
We therefore reverse the district court’s grant of summary judgment to Car-Freshner on the defense of fair use and direct entry of summary judgment in favor of Johnson on that issue. We thus affirm the dismissal of Car-Freshner’s complaint.
1. Since 1996, THE RADIO CHANNEL website at “www.radiochannel.com” has offered a directory of radio stations and radio advertising information. Recently, an Internet webcaster has organized its live and on-demand television programming, radio programming, music and other media content offered to its subscribers at <www.broadcast.com>, into sixteen channels by content, including a “Radio Channel” for radio programming. When the words “radio channel” are typed into one popular search engine, the webcaster’s site is listed before THE RADIO CHANNEL website in the list of hits. How would you decide the webcaster’s fair use defense? Would it make a difference if, instead of sixteen content channels, the webcaster provided only one called “Radio Channel”? Cf. Radio Channel Networks, Inc. v. Broadcast.Com, Inc., 1999 U.S. Dist. LEXIS 2577 (S.D.N.Y. Mar. 5, 1999), aff’d w/out op.,201 F.3d 432 (2d Cir. 1999).
2. Consider a TV commercial for golf clubs with swing music in the background which, during 5 seconds of a 30 second commercial, shows three golfers in succession swinging their clubs preceded by the phrase on the screen “Swing, Swing, Swing.” In a suit by the owner of the rights in the well-known swing song “Sing, Sing, Sing (with a Swing),” how would you decide a fair use defense? Would it affect your analysis if the advertising agency had initially approached the owner of the song, but decided not to use the song for reasons of costs? EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56 (2d Cir. 2000).
3. International Stamp Art, Inc. designs and produces note cards and greeting cards bearing reproductions of postage stamp art. For certain of these products, ISA used a perforation design to serve as a border for the card’s design or illustration. ISA has obtained a trademark registration for the perforated border design. The U.S. Postal Service also issues greeting cards incorporating the designs of postage stamps, and which display a perforated border. In response to ISA’s infringement action, the Postal Service contends that the perforated border is being used as an integral aspect of the image of a postage stamp. Is the Postal Service making a descriptive use “other than as a mark” that would qualify it for the § 33(b)(4) exception? SeeInternational Stamp Art v. U.S. Postal Service, 78[566/567]U.S.P.Q.2d 1116 (N.D. Ga. 2005), aff’d 456 F.3d 1270 (11th Cir. 2006).
4. Where plaintiff has an incontestable registration for LOVE POTION for perfumed essential oils and defendant uses its DESSERT house mark on fragrance products with the phrases “love potion fragrance” or “belly button love potion fragrance” such as shown below, is such use a fair use? See Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008), aff’d, 329 Fed. Appx. 333 (2d Cir. 2009).
5. Is use of the phrase “Ride Hard” by the motorcycle manufacturer Harley Davidson in its advertising and on some promotional merchandise (including T-shirts) that bear a Harley Davidson mark fair use where plaintiff owns the mark RIDE HARD for apparel? See Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d 1249 (S.D. Cal. 2008). Does it matter that Harley Davidson has not tried to register RIDE HARD as a mark and that third parties have used the phrase in advertising a variety of businesses?
6. Lettuce Entertain You Enterprises owns a family of LETTUCE marks for restaurant and catering services, although none of its restaurants use LETTUCE in the name of the restaurant. Defendant announced its intention to open a restaurant under the name LETTUCE MIX by placing a sign outside the intended premises. After Lettuce Entertain You brought suit, defendant covered the sign with another sign saying “Let Us Be!” with an image of a head of lettuce. Is this second sign a fair use? See Lettuce Entertain You Enterprises, Inc. v. Leila Sophia AR, LLC, 638 F. Supp. 2d 895 (E.D. Ill. 2009), later decision 703 F. Supp. 2d 777 (N.D. Ill. 2010).
7. Victoria’s Secret used the term “Delicious” on pink tank tops as gifts with purchase during the launch of its BEAUTY RUSH personal care products as shown below:
[567/568]
The BEAUTY RUSH mark appears on the inside back collar area. Fortune Dynamic owns a registration for DELICIOUS for footwear. Should Victoria’s Secret’s fair use claim be successful? See Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010). Does it matter whether “Delicious” is intended to refer to the BEAUTY RUSH products or to the tank top wearer?
8. Where a company adopts the name of its founder as its mark and the founder then sells the company and its marks to a third party, is the founder precluded from using his name to describe his former relationship and the fact that he is connected with a new company? Is this fair use? Does it depend on how the use is made or what the contract of sale says? See, e.g., Hensley Mfg, Inc. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009); JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir. 2009), on remand, 682 F. Supp. 2d 294 (S.D.N.Y. 2010).
9. Village Voice publishes weekly newspapers in print and online versions for various cities throughout the United States. Annually, these newspapers publish “Best of” articles that rank local businesses in various categories, including restaurants, entertainment, shopping, and events. Village Voice owns registered marks for “Best of” services in the various cities in which Village Voice operates. Yelp, a website that allows users to rate restaurants and other services in various cities throughout the United States, has also published “Best of” lists of various categories of service providers in these cities. Recently, Village Voice brought suit alleging trademark infringement of its “Best of” marks. Does § 33(b)(4) protect Yelp’s use of the “Best of” marks?
[568/569]
Justice Souter delivered the opinion of the court:
The question here is whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, 15 U.S.C. § 1115(b)(4), has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected. We hold it does not.
I
Each party to this case sells permanent makeup, a mixture of pigment and liquid for injection under the skin to camouflage injuries and modify nature’s dispensations, and each has used some version of the term “micro color” (as one word or two, singular or plural) in marketing and selling its product. Petitioner KP Permanent Make-Up, Inc., claims to have used the single-word version since 1990 or 1991 on advertising flyers and since 1991 on pigment bottles. Respondents Lasting Impression I, Inc., and its licensee, MCN International, Inc. (Lasting, for simplicity), deny that KP began using the term that early, but we accept KP’s allegation as true for present purposes. … In 1992, Lasting applied to the United States Patent and Trademark Office (PTO) under 15 U.S.C. § 1051 for registration of a trademark consisting of the words “Micro Colors” in white letters separated by a green bar within a black square. The PTO registered the mark to Lasting in 1993, and in 1999 the registration became incontestable. § 1065.
It was also in 1999 that KP produced a 10-page advertising brochure using “microcolor” in a large, stylized typeface, provoking Lasting to demand that KP stop using the term. Instead, KP sued Lasting in the Central District of California, seeking, on more than one ground, a declaratory judgment that its language infringed no such exclusive right as Lasting claimed. Lasting counterclaimed, alleging, among other things, that KP had infringed Lasting’s “Micro Colors” trademark.
KP sought summary judgment on the infringement counterclaim, based on the statutory affirmative defense of fair use, 15 U.S.C. § 1115(b)(4). After finding that Lasting had conceded that KP used the term only to describe its goods and not as a mark, the District Court held that KP was acting fairly and in good faith because undisputed facts showed that KP had employed the term “microcolor” continuously from a time before Lasting adopted the two-word, plural variant as a mark. Without enquiring whether the practice was likely to cause confusion, the court concluded that KP had made out its affirmative defense under § 1115(b)(4) and entered summary judgment for KP on Lasting’s infringement claim.
On appeal, 328 F.3d 1061 (2003), the Court of Appeals for the Ninth Circuit thought it was error for the District Court to have addressed the fair use defense without delving into the matter of possible confusion on the part of consumers about the origin of KP’s goods. The reviewing court took the view that no use could be[569/570]recognized as fair where any consumer confusion was probable, and although the court did not pointedly address the burden of proof, it appears to have placed it on KP to show absence of consumer confusion. [Citation.] Since it found there were disputed material facts relevant under the Circuit’s eight-factor test for assessing the likelihood of confusion, it reversed the summary judgment and remanded the case.
We granted KP’s petition for certiorari, 540 U.S. 1099 (2004), to address a disagreement among the Courts of Appeals on the significance of likely confusion for a fair use defense to a trademark infringement claim, and the obligation of a party defending on that ground to show that its use is unlikely to cause consumer confusion. [Citation.]
… We now vacate the judgment of the Court of Appeals.
II
A
The holder of a registered mark (incontestable or not) has a civil action against anyone employing an imitation of it in commerce when “such use is likely to cause confusion, or to cause mistake, or to deceive.” § 1114(1). Although an incontestable registration is “conclusive evidence … of the registrant’s exclusive right to use the … mark in commerce,” § 1115(b), the plaintiff’s success is still subject to “proof of infringement as defined in section 1114,” § 1115(b). And that, as just noted, requires a showing that the defendant’s actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question. [Citation.] This plaintiff’s burden has to be kept in mind when reading the relevant portion of the further provision for an affirmative defense of fair use, available to a party whose
“use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin. …” § 1115(b)(4).
Two points are evident. Section 1115(b) places a burden of proving likelihood of confusion (that is, infringement) on the party charging infringement even when relying on an incontestable registration. And Congress said nothing about likelihood of confusion in setting out the elements of the fair use defense in § 1115(b)(4).
Starting from these textual fixed points, it takes a long stretch to claim that a defense of fair use entails any burden to negate confusion. It is just not plausible that Congress would have used the descriptive phrase “likely to cause confusion, or to cause mistake, or to deceive” in § 1114 to describe the requirement that a markholder show likelihood of consumer confusion, but would have relied on the phrase “used fairly” in § 1115(b)(4) in a fit of terse drafting meant to place a defendant under a burden to negate confusion. “[W]here Congress includes particular language in one section of a statute but omits it in another section of the same Act, it is generally presumed that Congress acts intentionally and purposely[570/571]in the disparate inclusion or exclusion.”Russello v. United States, 464 U.S. 16, 23 (1983)(quoting United States v. Wong Kim Bo, 472 F.2d 720, 722 (CA5 1972)) (alteration in original).4
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Finally, a look at the typical course of litigation in an infringement action points up the incoherence of placing a burden to show nonconfusion on a defendant. If a plaintiff succeeds in making out a prima facie case of trademark infringement, including the element of likelihood of consumer confusion, the defendant may offer rebutting evidence to undercut the force of the plaintiff’s evidence on this (or any) element, or raise an affirmative defense to bar relief even if the prima facie case is sound, or do both. But it would make no sense to give the defendant a defense of showing affirmatively that the plaintiff cannot succeed in proving some element (like confusion); all the defendant needs to do is to leave the factfinder unpersuaded that the plaintiff has carried its own burden on that point. A defendant has no need of a court’s true belief when agnosticism will do. Put another way, it is only when a plaintiff has shown likely confusion by a preponderance of the evidence that a defendant could have any need of an affirmative defense, but under Lasting’s theory the defense would be foreclosed in such a case. “[I]t defies logic to argue that a defense may not be asserted in the only situation where it even becomes relevant.” Shakespeare Co. v. Silstar Corp., 110 F.3d at 243. Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not.
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B
Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no free-standing need to show confusion unlikely, it follows (contrary to the Court of Appeals’s view) that some possibility of consumer confusion must be compatible with fair use, and so it is. The common law’s tolerance of a certain degree of confusion on the part of consumers followed from the very fact that in cases like this one an originally descriptive term was selected to be used as a mark, not to mention the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first. [Citation.] The Lanham Act adopts a similar leniency, there being no indication that the statute was meant to deprive commercial speakers of the ordinary utility of descriptive words. “If any confusion results, that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well known descriptive phrase.” Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d at [571/572]30.See also Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 201 (1985) (noting safeguards in Lanham Act to prevent commercial monopolization of language);Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (CA2 1995) (noting importance of “protect[ing] the right of society at large to use words or images in their primary descriptive sense”). This right to describe is the reason that descriptive terms qualify for registration as trademarks only after taking on secondary meaning as “distinctive of the applicant’s goods,” 15 U.S.C. § 1052(f), with the registrant getting an exclusive right not in the original, descriptive sense, but only in the secondary one associated with the markholder’s goods, 2 McCarthy, supra, § 11:45 (“The only aspect of the mark which is given legal protection is that penumbra or fringe of secondary meaning which surrounds the old descriptive word”).
While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit’s consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant’s use is objectively fair. Two Courts of Appeals have found it relevant to consider such scope, and commentators and amici here have urged us to say that the degree of likely consumer confusion bears not only on the fairness of using a term, but even on the further question whether an originally descriptive term has become so identified as a mark that a defendant’s use of it cannot realistically be called descriptive. See Shakespeare Co. v. Silstar Corp., 110 F.3d at 243 (“[T]o the degree that confusion is likely, a use is less likely to be found fair …” (emphasis omitted)); Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d at 1059; Restatement (Third) of Unfair Competition § 28; [citations].
Since we do not rule out the pertinence of the degree of consumer confusion under the fair use defense, we likewise do not pass upon the position of the United States, as amicus, that the “used fairly” requirement in § 1115(b)(4) demands only that the descriptive term describe the goods accurately. Tr. of Oral Arg. 17. Accuracy of course has to be a consideration in assessing fair use, but the proceedings in this case so far raise no occasion to evaluate some other concerns that courts might pick as relevant, quite apart from attention to confusion. The Restatement raises possibilities like commercial justification and the strength of the plaintiff’s mark. Restatement § 28. As to them, it is enough to say here that the door is not closed.
III
In sum, a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U.S.C. § 1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith, § 1115(b)(4).
Because we read the Court of Appeals as requiring KP to shoulder a burden on the issue of confusion, we vacate the judgment and remand the case for further proceedings consistent with this opinion.
[572/573]
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