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Defenses to Infringement
As stated in the benefits and protection section,
federal registration of a mark for five years and in continuous use may
obtain “incontestability” upon the filing of an affidavit. This
eliminates three major challenges a plaintiff may bring:
1) that the mark is not inherently distinctive and
lacks secondary meaning,
2) that the challenger used the mark before registrant, or
3) that the mark is functional.
Also, a registered mark is prima facie evidence (no
further proof needed) that the mark is valid and that the owner has a
rightful claim to the mark.
Other defenses include the fair use defense, where a
court will determine the manner in which the infringer used the mark,
whether he acted in good faith and whether the use is likely to confuse
consumers. Another defense to infringement is the abandonment defense.
This may be done where the mark owner has discontinued using the mark
and has no intention to resume in the reasonable future, or the owner
has abandoned the mark through acts or omissions that cause the mark to
lose its significance.
Further defenses to infringement include: a
fraudulently obtained registration, that the registered mark is being
used with permission for the use of the name, term, or device charged to
be an infringement, the mark is being used by a person having his name
on his business, a name that is privy or a term or device which is
descriptive of and being used in good faith only to describe the
good/services.
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