Defenses sale of infringing goods and services.

Defenses to infringement:

Genericide – Many trademarks have been invalidated because they have lapsed from fanciful, arbitrary, suggestive or descriptive status to generic status. Genericide is a defense to trademark infringement: the use of a trademark that has become generic over time is not infringement

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There is still a sharp divide between patent and trademark law, illustrated by the doctrine that functional marks cannot be protected as trademarks. As stated above, functionality is most common when defending claims for infringement of trade dress and product configuration.


Under the Lanham Act as amended in 1994, a mark is deemed “abandoned” “when its use has been discontinued with intent not to resume such use.” Nonuse for three consecutive years is considered prima facie evidence of abandonment.

Non-trademark use – Use of a mark is only infringing if the mark is used as a mark. For instance, mentioning a mark in an article is generally not infringement. Using a mark as the basis of a song is generally not infringement.

Likewise, mentioning a mark in the title of a work, as in The Lexus and the Olive Tree or The Devil Wears Prada, is generally not infringement. However, using Star Trek in the title of an unauthorized book about Star Trek would likely infringe the mark, since the mark is used on other books authorized by its holder.


Injunction is a standard remedy for trademark infringement. The usual injunction is to halt production and sale of infringing goods and services. In some cases, the court might also award an injunction for corrective advertising, which forces the defendant to pay for an amount of advertising necessary to reverse the damage to the plaintiffs mark.

Damages for infringement is awarded based on the factors such as (i) the Defendant’s profits, (ii) Damages sustained by the Plaintiff and (iii) cost of bringing the law suit –

The Plaintiff is responsible for proving the defendant’s sales under point (i), as well as their own damages and costs under point ii and point iii. The Defendant is responsible for proving their costs to reach a final figure for Defendant’s profits.

The proprietor of a trademark has a right to file a suit for infringement of his right and obtain, injunction- an injunction restrains the defendant from using the offending mark pending the trial of the suit or until further orders damages – in assessing the damages the important question is what is the loss sustained by the plaintiff, the loss must be the natural and direct consequence of the defendant’s acts, the object of damages is to compensate for loss or injury accounts of profits-where a plaintiff claims the profits made by the unauthorized use of his trademark, it is important to ascertain to what extent he trademark was used, in order to determine what proportion of the net profits realized by the infringer was attributable to its use.

No person shall be entitled to institute any proceeding to prevent, or recover damages for, the infringement of an unregistered of an unregistered

A suit for infringement of registered trademark is filed in District Court having jurisdiction or in an Appellate Board having original jurisdiction to entertain such suits. The infringement must have taken place within the territorial jurisdiction of the Court.

The period of limitation for filing the suit is three years from the date of infringement.