Guides · Trademark Litigation
Defenses in Trademark Cases
The most common defense is that confusion is unlikely.
· Law checked through October 20, 2026
In Short
The most common defense is that confusion is unlikely. Beyond that, a defendant may argue that it used words only in their ordinary descriptive sense, used the mark only to refer to the owner's own product, made an expressive or parody use, or that the owner waited too long or gave up its rights. Some defenses defeat liability; others, such as delay, mainly limit money damages.
Common situations.
- A competitor's ads mention the owner's brand to compare products.
- A company uses a descriptive phrase that is part of another company's mark.
- An owner sues six years after learning of the defendant's use.
- An artist or comedian uses a brand in a parody.
Fair use.
Descriptive (classic) fair use. A defendant may use a term, other than as a mark, fairly and in good faith only to describe its own goods or services (15 U.S.C. § 1115(b)(4)). The defendant does not have to disprove confusion; some confusion is compatible with fair use, though the degree of confusion bears on whether the use is fair (KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)).
Nominative fair use. A defendant may use another's mark to refer to the owner's own product, for example in comparative advertising, repair services, or resale, if it uses only as much of the mark as necessary and does nothing to suggest sponsorship. In the Fifth Circuit, nominative use is considered within the likelihood-of-confusion analysis rather than as a separate affirmative defense (Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998)).
Parody and expressive works.
For expressive works such as book or film titles, the Fifth Circuit has drawn on the Rogers framework, which protects a title unless it has no artistic relevance to the work or explicitly misleads as to source or content, and has required that the likelihood of confusion be "particularly compelling" to outweigh the First Amendment interest in choosing a title. It also favored disclaimers over outright bans as a remedy (Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000)). That test does not apply when the defendant uses the mark as a designation of source for its own goods, even in parody; ordinary likelihood-of-confusion analysis applies instead, though a parodic message can still bear on whether confusion is likely (Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023)). For federal dilution claims, parody and commentary are excluded only if the use is not a designation of source for the defendant's own goods (§ 1125(c)(3)(A)).
Timing defenses.
- No limitations period. The Lanham Act has no statute of limitations.
- Laches. A defendant must show the owner's delay in asserting its rights, lack of excuse for the delay, and undue prejudice caused by the delay. The delay runs from when the owner knew or should have known of the use. Laches ordinarily bars recovery of past profits and damages but not an injunction against future infringement, unless the owner's conduct induced reliance or an injunction would cause substantial prejudice. A party with unclean hands cannot invoke laches (Abraham v. Alpha Chi Omega, 708 F.3d 614 (5th Cir. 2013)).
- Reference period. Courts often look to an analogous state limitations period to judge the length of the delay. In an unpublished decision, the Fifth Circuit used Texas's four-year period for fraud for that purpose, noting that the parties did not dispute it (Jaso v. The Coca Cola Co., No. 10-20786 (5th Cir. Aug. 1, 2011)).
- Acquiescence. If the owner, by words or conduct, actively consented to the defendant's use, the defendant may have a stronger defense than laches.
Other defenses.
| Defense | What it means |
|---|---|
| Abandonment | The owner stopped using the mark with intent not to resume; three years of nonuse is prima facie evidence (§ 1127) |
| Genericness | The term is the common name of the product, so no one can own it |
| Functionality | The claimed trade dress is essential to the product's use or purpose or affects its cost or quality (TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001)) |
| Lack of secondary meaning | A descriptive mark or product design is not yet associated with a single source |
| Priority and prior local use | The defendant used the mark first, or used it in a limited area before the owner's federal filing date (§ 1115(b)(5)) |
| First sale | Reselling genuine goods bought from the owner is generally lawful, unless the goods are materially different or the reseller suggests sponsorship |
| Fraud on the USPTO | The registration was obtained by a knowingly false, material statement made with intent to deceive; this can cancel the registration (§ 1064(3)) |
| Unclean hands | The owner's own misconduct related to the mark bars equitable relief |
Defenses to an incontestable registration. An incontestable registration is conclusive evidence of the right to use the mark, subject to the defenses listed in § 1115(b), including fraud, abandonment, descriptive fair use, prior local use, functionality, and equitable defenses such as laches.
Sources.
- 15 U.S.C. §§ 1064(3), 1115(b), 1125(c)(3), 1127.
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).
- Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998).
- Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000).
- Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023).
- Abraham v. Alpha Chi Omega, 708 F.3d 614 (5th Cir. 2013).
- Jaso v. The Coca Cola Co., No. 10-20786 (5th Cir. Aug. 1, 2011) (unpublished).
- TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001).
This guide is general information, not legal advice. Law checked through October 20, 2026. See the Disclaimer.