Don’t Be Too Descriptive With Trademarks

Robert Carson Godbey

Your use of someone else's trademark can be "fair use," if the term is descriptive of your goods and is used fairly and in good faith only to describe your goods. Thus, KP argued that when they used "microcolors" it was only to describe its permanent makeup.

Trademark infringement requires proof that the defendant's use of the same or similar mark is likely to produce confusion in the minds of consumers about the origin of the goods. What happens if an alleged fair use causes confusion? The court of appeals ruled that to succeed with a defense of fair use, the defendant, KP, had to show that the use did not cause confusion. But the Supreme Court reversed, and held that it was not the defendant's burden to show that confusion was unlikely. The court noted that it follows that "some possibility of confusion on the part of consumers must be compatible with fair use." The court went on to say that, 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."

There are a couple of practical lessons to be learned from this case. The first one, obviously, is that fair use is going to be easier to show for some defendants. However, the more important lesson is for businesspeople selecting new trademarks: don't pick descriptive terms! You may spend a huge amount of money building consumer recognition of your trademark, only to have others be able to legally use your descriptive mark in their advertising. The best way to prevent the fair-use defense is to not select a descriptive mark in the first place.

Bob Godbey is a partner in the Honolulu law firm of Godbey Griffiths Reiss. A graduate of the Harvard Law School, he has degrees in electrical engineering and math. He welcomes comments through www.LawHI.com.