11th Cir. Pattern Jury Instr. (Civil) 10.3

If you find that [name of plaintiff] has shown a likelihood of confusion, you

must consider [name of defendant’s] defenses. [Name of defendant] claims that

[name of defendant] is not liable to [name of plaintiff] for trademark infringement

because one or more of the following defenses exist. [Name of defendant] has the

burden of proving [a] defense[s] to trademark infringement by a preponderance of

the evidence.

[The following instruction should be given in cases in which defendant claims that

the use of plaintiff’s trademark is a nominative fair use:

Nominative fair use is a defense to a claim of trademark infringement. Under

this defense, [name of defendant] may use [name of plaintiff]’s trademark to refer

to [name of plaintiff]’s goods, but [name of defendant] may not use [name of

plaintiff]’s trademark to refer to [name of defendant]’s own goods. You must find

that [name of defendant]’s use of the trademark was not infringing if [name of

defendant] proves by a preponderance of the evidence that [his/her/its] use of

[name of plaintiff]’s trademark meets the following elements:

1. [Name of plaintiff]’s trademark is the only name, term, or symbol

reasonably available to describe [name of defendant]’s goods;

2. [Name of defendant] does not attempt to capitalize on consumer

confusion or to appropriate the prestige of [name of plaintiff]’s

trademark; and

3. [Name of defendant]’s use of [name of plaintiff]’s trademark does

not identify [name of plaintiff] as the source of [name of

defendant]’s goods.]

[The following instruction should be given in cases in which defendant claims that

[his/her/its] use of plaintiff’s trademark is descriptive fair use:

Descriptive fair use is a defense to a claim of trademark infringement.

[Name of defendant] is not liable for infringement if [he/she/it] proves by a

preponderance of the evidence that [his/her/its] use of [name of plaintiff]’s

trademark is necessary to accurately describe a characteristic of [his/her/its] goods.

To establish this defense, [name of defendant] must prove that [name of plaintiff]’s

trademark is used:

1. Other than as a trademark;

2. In a descriptive sense; and

3. Fairly and in good faith – that is, [name of defendant] did not intend

to trade on the goodwill of [name of plaintiff] by creating

confusion as to the source of [name of defendant]’s goods.]

[The following instruction should be given in cases in which defendant claims that

plaintiff abandoned [his/her/its] trademark:

Abandonment of a trademark is a defense to a claim of infringement. To

prove abandonment, [name of defendant] must prove the following by a

preponderance of the evidence:

1. [Name of plaintiff] discontinued the bona fide use of [name of

plaintiff]’s trademark, and did so with the intent to not resume

[his/her/its] use in the reasonably foreseeable future. If you find

that [name of plaintiff] has not used the trademark for three

consecutive years, you may presume that [name of plaintiff] did

not intend to resume use of the trademark, but [name of plaintiff]

can rebut that presumption by producing evidence that [he/she/it]

intended to resume use; or

2. [Name of plaintiff] acted or failed to act, and as a result [name of

plaintiff]’s trademark no longer identifies the source of [name of

plaintiff]’s goods and has become a generic term for the associated

goods.]

1. [The following instruction should be given in cases in which

defendant claims to be the senior user of a mark under Section 15 of the

Lanham Act, 15 U.S.C. § 1065 (2012), in an action brought by a plaintiff

owning an incontestable federal registration on the Principal Register:

2. Prior use of a trademark in a particular geographic area is a

defense to a claim of infringement. To prove prior use, [name of defendant]

must prove the following by a preponderance of the evidence:

• [Name of defendant] began using its mark in a particular

geographic area before [name of plaintiff] began using its mark in

that area; and

• [Name of defendant]’s use of its mark in that geographic area has

been continuous since that use began.]

3. [The following instruction should be given in cases in which a

defendant claims to be an intermediate junior user of a mark under Section

33(b)(5) of the Lanham Act, 15 U.S.C. § 1115(b)(5) (2012), in an action

brought by a plaintiff owning a federal registration on the Principal Register:

4. Prior use of a trademark in a remote geographic area before a

plaintiff’s registration issued is a defense to a claim of infringement. To

prove prior use, [name of defendant] must prove the following by a

preponderance of the evidence:

• [Name of defendant] began using its mark in a particular

geographic area before [name of plaintiff] received a federal

registration of [name of plaintiff]’s mark;

• [Name of defendant] began using its mark without knowledge of

the [name of plaintiff]’s prior use of its mark; and

• [Name of defendant] has used its mark continuously in its

geographic area since before [name of plaintiff] received a federal

registration of [name of plaintiff]’s mark.

———.———

Defenses to Claim of Infringement of a Trademark

SPECIAL INTERROGATORIES TO THE JURY

Do you find by a preponderance of the evidence that:

[Use these special interrogatories if defendant is claiming that [his/her/its] use

is nominative fair use:

1. [Name of plaintiff]’s trademark is the only reasonable way to

describe [name of defendant]’s goods?

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury

charges for Infringement of Registered Trademark or Infringement of an

Unregistered Trademark.

2. [Name of defendant]’s use of [name of plaintiff]’s trademark is not

an attempt to capitalize on consumer confusion or to appropriate the prestige

of [name of plaintiff]’s trademark?

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury

charges for Infringement of Registered Trademark or Infringement of an

Unregistered Trademark.

3. [Name of defendant]’s use of [name of plaintiff]’s trademark is not

intended to identify [his/her/its] goods with the source of [name of

plaintiff]’s goods?

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the

last page of this verdict form. If your answer is “No,” then go to the special

interrogatories on Remedies in either the jury charges for Infringement of

Registered Trademark or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant is claiming that [his/her/its] use

is descriptive fair use:

4. [Name of defendant] used [name of plaintiff]’s trademark in a way

other than as a trademark.

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury

charges for Infringement of Registered Trademark or Infringement of an

Unregistered Trademark.

5. [Name of defendant] used [name of plaintiff]’s trademark in a

descriptive sense.

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury

charges for Infringement of Registered Trademark or Infringement of an

Unregistered Trademark.

6. [Name of defendant] used [name of plaintiff]’s trademark in good

faith.

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the

last page of this verdict form. If your answer is “No,” then go to the special

interrogatories on Remedies in either the jury charges for Infringement of

Registered Trademark or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant asserts that plaintiff has

abandoned [his/her/its] trademark through nonuse:

7. [Name of plaintiff] has ceased using the trademark with the intent

to not resume [his/her/its] use in the reasonably foreseeable future?

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the

last page of this verdict form. If your answer is “No,” then go to the special

interrogatories on Remedies in either the jury charges for Infringement of

Registered Trademark or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant asserts that plaintiff has

abandoned [his/her/its] trademark through acts or omissions causing the

mark to lose its significance as a mark:

8. Because of [name of plaintiff]’s acts or omissions, the trademark no

longer identifies the source of the goods but rather identifies the goods

themselves?

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the

last page of this verdict form. If your answer is “No,” then go to the special

interrogatories on Remedies in either the jury charges for Infringement of

Registered Trademark or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant has asserted a counterclaim for

cancellation of plaintiff’s registered trademark registration on the basis that

plaintiff abandoned the trademark:

9. [Name of plaintiff] has abandoned [his/her/its] trademark?

Answer Yes or No _____________

If your answer is “Yes,” then your foreperson should sign and date the last

page of this verdict form. If your answer is “No,” then go to the special

interrogatories on Remedies in either the jury charges for Infringement of

Registered Trademark or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant asserts prior use under 15

U.S.C. § 1065 and plaintiff owns an incontestable registration:

10. [Name of defendant] has used its mark in a particular geographic

area since prior to the [name of plaintiff]’s use of its mark?

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury charges

for Infringement of Registered Trademark or Infringement of an Unregistered

Trademark.

11. [Name of defendant]’s use of its mark has been continuous in that

geographic area?

Answer Yes or No _____________

If your answer is “Yes,” your foreperson should sign and date the last page

of this verdict form. If your answer is “No,” then go to the special interrogatories

on Remedies in either the jury charges for Infringement of Registered Trademark

or Infringement of an Unregistered Trademark.]

[Use these special interrogatories if defendant asserts prior use under 15

U.S.C. § 1115(b)(5):

12. [Name of defendant] has used its mark in a particular geographic

area since prior to the [name of plaintiff]’s registration of its mark?

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury charges

for Infringement of Registered Trademark or Infringement of an Unregistered

Trademark.

13. [Name of defendant]’s use of its mark has been continuous in that that

geographic area?

Answer Yes or No _____________

If your answer is “Yes,” then go to the next question. If your answer is

“No,” then go to the special interrogatories on Remedies in either the jury charges

for Infringement of Registered Trademark or Infringement of an Unregistered

Trademark.

14. [Name of defendant] adopted its mark without knowledge of [name of

plaintiff]’s use of its mark?

Answer Yes or No _____________

If your answer is “Yes,” your foreperson should sign and date the last page of this

verdict form. If your answer is “No,” then go to the special interrogatories on

Remedies in either the jury charges for Infringement of Registered Trademark or

Infringement of an Unregistered Trademark.]

S

O SAY WE ALL.

___________________________

Foreperson’s Signature

DATE: ___________________