'Beach Boys' Ruling Demonstrates Complexity Of Fair-Use Trademark Infringement Defense

In general, trademarks are grouped on a scale of increasing protection, based on their level of distinctiveness. Generic terms are those with broad-based meanings, such as the word 'movie,' and don't qualify as trademarks. The scale moves up to descriptive marks, which directly describe the quality or characteristics of goods or services, such as 'Loud Music,' in relation to their use as marks. These generally aren't protectible unless they acquire secondary meaning. Suggestive marks are those with an imaginative element, like 'Larkspark Record Productions,' that may be protected without a secondary meaning. Next, arbitrary marks are based on common words that are inherently distinctive, such as 'A-Plus.' The less these marks are used by others, the greater protection they receive. At the top of the scale are fanciful marks, like 'Kodak,' which are new terms created as an exclusive property right.

A defendant in a trademark infringement action may raise two types of fair-use defenses. The classic fair-use defense, set forth in the federal Lanham Act at 15 U.S.C. Sec. 1115(b)(4), applies where a defendant uses a plaintiff's mark to describe only the defendant's product. Section 1115(b)(4) states that 'the use of the name, term or device charged to be an infringement is a use, otherwise than as a mark … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.' The classic fair-use defense applies to marks that have both primary and secondary meaning, but, as Sec. 1115(b)(4) notes, are used by a defendant only in their primary descriptive sense.