Deborah Gerhardt, ‘A Masterclass in Trademark’s Descriptive Fair Use Defense’

ABSTRACT
When judges decide trademark cases, they often must balance trademark rights against interests in free expression. The defense known as ‘classic’ or ‘descriptive’ fair use embraces the foundational themes that make trademark conflicts so compelling. By design, the defense pits fair competition and free speech against a mark owner’s right to control its story, reputation, and values. The outcome of this tug of war may be hard to predict. It turns on consumer perception, and therefore, generally raises questions of fact. But in Mars, Inc v JM Smucker Co, this fact intensive question was decided as a matter of law.

The intensely competitive business of pet products sets the stage for the expressive battle. Mars, Inc had been using the trademark ‘Pill Pockets’ on a patented treat for hiding and delivering medicine to pets. When the patents expired, The JM Smucker Company entered the market with ‘pillpouches’. Mars sued for trademark infringement, and Smucker held up the shield of descriptive fair use. This defense enumerates three factors designed to help courts weigh the interests of consumers, competitors, and mark owners. The Court granted summary judgment for the Defendant.

A close study of the strategic choices leading to the decision reveals the critical importance of articulating the difference between the first two elements, descriptive and trademark use of a term. They are not mutually exclusive opposites. Understanding the particular trademark meaning of bad faith, the third element, is necessary in order to select the best evidence to support it. Winning such a fact intensive issue on summary judgment is not easy. Perhaps in this case, a win could have been averted. This Article offers a master class on descriptive fair use by examining the parties’ litigation strategies and how they influenced the Court’s decision.

Gerhardt, Deborah R, 2019, A Masterclass in Trademark’s Descriptive Fair Use Defense, Akron Law Review: volume 52 : issue 3, article 4.

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