I feel compelled to begin this post with the legal disclaimer that this post is not intended to provide legal advice to anyone. This post is being written merely because, as an attorney* who keeps bees and chickens, and grows produce, I am interested in the brouhaha. (If you don’t know what this post is about, see this: http://www.farmcurious.com/trademarks-patents-thieves-oh-my).
What is a trademark? A trademark may be “any word, name, symbol, or device, or any combination thereof … used by a person … to identify and distinguish his or her goods … from those manufactured and sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. The holder of a registered trademark may sue anyone employing an imitation of it in commerce when “such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a).
The Trademark Act of 1946 (known for its principal proponent as the Lanham Act) provides the user of a trade or service mark with the opportunity to register it with the Patent & Trademark Office. If the registrant then satisfies further conditions, including continuous use for five consecutive years, “the right … to use such registered mark in commerce” to designate the origin of the goods specified in the registration “shall be incontestable” outside certain listed exceptions. (Interestingly for this discussion, one of those “listed exceptions” is that: “no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.” 15 U.S.C.A. § 1065(4). What is clear to most of us is that the phrase “urban homestead,” in use for decades before the Dervaes family began their project, is in fact a “generic name.” (My guess is that the legal teams will demonstrate this to have the trademark rescinded).
What does the owner of a registered mark have to show in court? Among other things, the owner must show that the defendant’s use “is likely to produce confusion in the minds of consumers about the origin of the goods or services in question.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992). The concept of “confusion” comes from 15 U.S.C. § 1114 where Congress used the phrase “likely to cause confusion, or to cause mistake, or to deceive” to describe the requirement that a markholder show likelihood of consumer confusion. However, courts have long allowed “infringers” to use words contained in a trademark “in their ordinary, descriptive sense, so long as such use [did] not tend to confuse customers as to the source of the goods . . .” Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 796 (C.A.5 1983). As an example, I think it would be presumptuous of me to use the descriptive phase “urban homestead” to describe my activities of keeping chickens and bees, and growing produce. However, it is clear that my use of the phrase is not going to confuse anyone that my eggs, honey or produce (even if I sold them) come from the Dervaes’ micro-farm. Nor will the referral to an “urban homestead” confuse any readers of this blog to believe that this post has any connection to the Dervaes’ consumer activities.
Moreover, even if the owner of a registered mark can demonstrate “likelihood of confusion,” 15 U.S.C. § 1115 contains what are known in the legal world as “affirmative defenses.” One of the affirmative defenses is that: “the use of the name, term, or device … is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.” 15 U.S.C. § 1115(b)(4). In other words, “fair use” of a registered mark is permitted under the code even if there is a likelihood of confusion. See KP Permanent Make-Up, Inc., v. Lasting Impression I, Inc., 125 S.Ct. 542, 545 (2004) (“some possibility of consumer confusion [is] compatible with fair use”). In fact, the Supreme Court in KP Permanent Make-Up noted that under common law, there was a tolerance for a certain degree of confusion on the part of consumers in cases where an “originally descriptive term was selected to be used as a mark” and that it is undesirable to allow “anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.” Id. at 550. The Supreme Court continued that the “Lanham Act adopts a similar leniency, there being no indication that the statute was meant to deprive commercial speakers of the ordinary utility of descriptive words. ‘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.’” Id. In sum, the Supreme Court held in KP Permanent Make-Up that “a plaintiff claiming infringement of an incontestable mark must show likelihood of consumer confusion as part of the prima facie case, 15 U.S.C. § 1115(b), while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith.” Id. at 551.
Merriam Webster defines “homestead” as “the home and adjoining land occupied by a family.” “Urban” is defined as “of, relating to, characteristic of, or constituting a city.” Since I have a home and adjoining land in the city of Los Angeles, I have an “urban homestead.” And I will continue to keep my bees
on my urban homestead.
* My field does not lie in intellectual property.