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  • The defense of fair use is available in infringement cases but not inter partes proceedings before the TTAB, concerning the issue of registrability.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Even if we assume that applicant properly pleaded "fair use" as an affirmative defense (and opposer disputes that point), we find that the defense is legally unavailable to applicant in this case. The "fair use" defense of Trademark Act §33(b)(4), 15 U.S.C. §1115(b)(4), is a defense available to a defendant in a federal action charging infringement of a registered mark, and it has no applicability in inter partes proceedings before the Board, which deal with the issue of registrability. See Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1454 (TTAB 1986).
  • The defense of fair use does not apply to terms included in the contested mark for which registration is sought.
    • Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006).
      • Moreover, even if the defense were legally available in this proceeding, applicant cannot rely on it. Applicant is not using the words GENUINE and SKIN merely in a non-trademark, descriptive manner, but instead has included those words as part of the mark it seeks to register. This is trademark use, not non-trademark fair use; applicant's disclaimer of the words apart from the mark as shown does not remove them from the mark. Accordingly, we have given no consideration to applicant's arguments in support of a "fair use" defense, qua defense.
Truescents LLC v. Ride Skin Care, L.L.C., Opposition No. 91158556, (TTAB 2006) Grand Total
Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) 1
Grand Total 1 1
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