DEFENSES (抗辯事由)
Defenses are affirmative arguments used by defendants to avoid liability even if the plaintiff's mark is valid and there is a likelihood of confusion.
A. Abandonment (商標權之拋棄/廢止)
A trademark is considered "abandoned" when its use has been discontinued with intent not to resume (15 U.S.C. § 1127).
Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd.
- Brief Facts:
- The "Brooklyn Dodgers" moved to LA in 1958.
- Years later, a restaurant named "The Brooklyn Dodger" opened. MLB sued, claiming they still owned the "Brooklyn Dodgers" mark.
- Rule:
- Non-use: Three consecutive (連續) years of non-use creates a rebuttable presumption of abandonment (三年不使用推定拋棄).
- Intent: The owner must show a bona fide intent (善意意圖) to resume use in the "reasonably foreseeable future."
- Holding:
- MLB had abandoned the "Brooklyn Dodgers" mark through decades of non-use.
- Occasional "nostalgia" use (賣懷舊商品) wasn't enough to maintain the mark for restaurant services.
B. Unsupervised Licenses (Naked Licensing)
- If a trademark owner licenses the mark to another party but fails to exercise Quality Control, the mark may be deemed abandoned.
- The mark no longer functions as a guarantee of quality to the consumer.
FreecycleSunnyvale v. The Freecycle Network (補充)
- Naked Licensing: A trademark owner must exercise control over the quality of goods or services offered by a licensee. If they fail to do so, it is "naked licensing," which can result in the abandonment of the mark.
- Holding: The 9th Circuit held that TFN did not have express contractual control, did not exercise actual control, and could not reasonably rely on FS’s quality control.
- Result: Because TFN "nakedly licensed" the marks, it abandoned its rights to "Freecycle" and "The Freecycle Network," meaning they could not stop FS from using those terms.
C. The Rule Against Assignments in Gross（禁止無商譽一同之商標轉讓）
- Concept: A trademark cannot be sold (assigned) by itself; it must be sold along with the Goodwill (商譽) it represents.
- Effect: An "assignment in gross" (單獨商標移轉) is invalid.
補充：「商譽」如何具體移轉？ (By Gemini)
- 客戶名單 (Customer Lists)：移轉你的客戶群，讓新東家能繼續服務原來的消費者。
- 祕方、製程、配方 (Trade Secrets/Formulas)：確保新東家能做出同樣的產品。
- 庫存與設備 (Inventory and Equipment)：這是最直接移轉商譽的方式，讓生產線直接由新東家接手。
- 品質控管流程：移轉你原本的品質標準手冊，確保產品不會走味。
只要（新）商標權人將這些能夠產生「同樣品質產品」的核心資產一併交給買方，法律就認為「商譽」跟著商標一起移轉了，無「欺騙大眾」（Fraud on the Public）之問題。
D. Descriptive Fair Use (描述性合理使用)
This allows a defendant to use a term that happens to be someone else's trademark, provided they use it in its primary, descriptive sense.
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (p. 698-702)
- Brief Facts:
- Both parties sold permanent makeup.
- Lasting Impression had a registered mark "Micro Colors." KP used the term "microcolor" in its ads.
- Issue:
- Must a defendant prove there is no likelihood of confusion to succeed in a fair use defense?
- （證明合理使用後，是否仍須證明無「混淆誤認之虞」？）
- Holding:
- No.
- The Supreme Court held that some degree of consumer confusion is compatible with fair use.
- Rule: Lanham Act § 33(b)(4) requires:
- Use of the term other than as a mark (非商標使用).
- In a descriptive sense (描述性使用).
- Used fairly and in good faith (善意使用).
證明「合理使用」後，無須再證明「無混淆誤認之虞」
- 若被告能證明「無混淆誤認之虞」，何須再搬出「合理使用」之抗辯？
- 是以，若在主張「合理使用」且成立後，仍需被告證明「無混淆誤認之虞」過於苛刻，亦與「合理使用」之抗辯本旨不符。
Nominative Use, Parody and the First Amendment
Noncommercial Expressive Uses
Mattel, Inc. v. MCA Records (p. 799-800)
- Brief Facts: Aqua released the song "Barbie Girl." Mattel sued for infringement and dilution.
- Holding: The song is a Parody and protected under the First Amendment. It is a "non-commercial use" (非僅為商業牟利) and doesn't tarnish the mark because it's a social commentary.
Artistic Expression (Roger Test)
Gordon v. Drape Creative, Inc. (p. 769-783)
Brief Facts
- Defendant used the mark "Honey Badger Don't Care" on greeting cards.
- Defendant argued that greeting cards are "expressive works" (藝術表達) and thus protected by the Rogers Test (1st Amendment).
The Rogers Test
An artistic work is protected unless:
- (1) it has no artistic relevance to the work, or
- (2) it explicitly misleads as to the source.
Holding
- The court confirmed that greeting cards qualify as "expressive works," so the Rogers Test applies.
- However, the court found a "triable issue of fact" (事實認定之爭點) regarding whether the use was **"explicitly misleading."
Explicitly Misleading?
- If the design creates a false impression of endorsement or sponsorship
- then the Rogers Test provides no protection, and the defendant is liable for infringement.
Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140 (2023)
Background & Facts
- The Plaintiff: Jack Daniel’s Properties, Inc. (JD), owner of the iconic whiskey bottle trade dress and the "Jack Daniel's" word mark.
- The Defendant: VIP Products LLC, a company that makes a line of dog toys called "Silly Squeakers."
- The Product: VIP created a squeaky rubber dog toy named "Bad Spaniels". The toy mimicked the JD bottle design (Trade Dress)
- The Conflict: JD sued, arguing that the toy caused consumer confusion and diluted their famous brand. VIP defended itself by claiming the toy was an "expressive work" (parody) and invoked the Rogers Test to claim First Amendment protection.
The Legal Issue
- Does the Rogers Test (a highly protective standard for artistic expression) apply when the defendant uses an alleged parody as a designation of source for its own product?
- If you create a parody product and use the parody to brand your own goods, can you still claim "Free Speech" protection to bypass a trademark infringement claim?
The SCOTUS Ruling (Unanimous Opinion by Justice Kagan)
- The Holding: The Rogers Test DOES NOT apply when the defendant uses the challenged mark as a designation of source for its own goods.
- The Rationale:
- The Rogers Test was designed to protect the communicative aspect of a title (e.g., a movie title).
- However, trademark law’s core purpose is to distinguish the source of goods. When VIP put the "Bad Spaniels" name on the toy (and used its own branding on the package), it was using the mark as a trademark to sell its own dog toy.
- Because the use was "source-identifying," it must be analyzed under the standard Likelihood of Confusion (LoC) test, not the Rogers Test.
Key Distinctions
- "Rogers" (Artistic/Communicative Use): You use a trademark to tell a story, make a joke, or comment on the brand within a larger work (e.g., a novel, a movie, or a song). Protection: High.
- "Source-Identifying Use" (Commercial Trademark Use): You use a trademark (or a parody of it) to identify your own products in the marketplace. Protection: Low (subject to the full LoC analysis).
Impact & Takeaways
- The "Parody Defense" is weaker: Just because a product is funny or mocks a famous brand does not automatically give it a free pass if that product is a competitor in the marketplace.
- Standard of Review: Parody products that act as trademarks must now survive the likelihood of confusion analysis. If consumers might realistically believe that Jack Daniel’s authorized the "Bad Spaniels" dog toy, then VIP loses.
- The First Amendment is not an absolute shield: The Court clarified that the First Amendment protects "parodying" (making fun of), but it does not protect "trademarking" (using another's reputation to sell your own stuff).
筆記日期：2026/04/23
資料來源：Barton Beebe TRADEMARK LAW (V12, An Open-Access Casebook)
揭露聲明：此筆記，係由筆者與Gemini共同彙編完成，有誤歡迎指正交流 ～
