Unlawful Use Doctrine May (or May Not) be a Defense to Trademark Infringement in the Eleventh Circuit

This article that originally appeared in World Trademark Review discussed a case of first impression for the U.S. Court of Appeals for the Federal Circuit regarding assertion of “unlawful use” as a defense to trademark infringement. The case is VPR Brands, LP v. Shenzhen Weiboli Technology Co. Ltd., in which the Court reversed the grant of a preliminary injunction due to the district court’s failure to consider whether plaintiff could assert rights in its registered ELF mark for e-cigarettes against defendant’s use of ELFBAR. Defendants claimed that the asserted registration was invalid because plaintiff failed to obtain FDA approval for its products. On appeal, the Court held that the district court’s refusal to consider that defense was an error based on prior caselaw applicable in the Eleventh Circuit. The Court vacated the injunction and remanded the case for consideration of the “unlawful use” defense. The case is significant in upholding the “unlawful use” defense, as it provides another tool in one’s arsenal to defend a trademark infringement action and also serves as a reminder to trademark owners that only lawful use in commerce will support a trademark registration from the USPTO.