United States: U.S. Supreme Court Removes Additional Burden on Trademark Infringers Claiming Fair Air Use Defense

Addressing a split among the appellate circuit courts, the U.S. Supreme Court decided a trademark case clarifying the burden of proof necessary for an accused infringer to escape liability under the statutory fair use defense. On appeal, the Supreme Court held that the fair use doctrine articulated in the Trademark Act does not require an accused infringer to negate any likelihood of confusion resulting from use of the mark.

In general terms, the doctrine of fair use provides an affirmative defense to trademark infringement if the use by the accused infringer coincides with the name of the accused in its own business or is descriptive of the infringer’s goods or services.

In support of this holding, the Supreme Court stressed the language of the Trademark Act itself. In contrast to the section governing infringement, which specifically requires the trademark owner to prove likelihood of confusion, the section providing a fair use defense to infringers relies on the phrase "used fairly and in good faith." Applying established methods of statutory construction, the Supreme Court emphasized that Congress intentionally chose the language of the statute to distinguish the burdens of proof under infringement and fair use. To interpret the statute in a contrary manner would render the affirmative defense useless in situations when it is most relevant: where the owner has established a case of infringement. Such an illogical result would close the door on any practical application of the fair use defense. As a result, the Supreme Court held that a defendant has no obligation to negate likelihood of confusion under the fair use defense.

The Supreme Court went a step further and affirmatively acknowledged that some degree of consumer confusion is compatible with fair use. However, the Supreme Court recognized that the extent of the consumer confusion may have an impact on whether the defendant fairly used the mark.

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