Use of Trademarked Perforated Border on Postage Stamp Cards Was Descriptive and a Fair Use

Case: International Stamp Art v. US Postal Service (11th Cir. 7/18/06 - No. 05-13492)

The One Sentence Summary: The panel affirmed summary judgment of trademark fair use in favor of the defendant US Postal Service when its display of trademarked perforated borders on stamp art was not intended to misappropriate plaintiff's goodwill.


What They Were Fighting About: Plaintiff had a registered, incontestable trademark for the display of perforated borders in connection with greeting cards that resembled postal stamps. The US Postal Service began to sell cards with reproductions of stamps, and in some cases showed the perforations on the stamps. The district court granted summary judgment for the Postal Service, finding fair use of the trademark.

Eleventh Circuit Holdings:

• Trademark fair use requires a defendant to prove that its use is "(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." Fair use prevents a trademark registrant from appropriating a descriptive term for its exclusive use, and preventing others from using it. Plaintiff did not challenge the district court's findings that the USPS used the perforated border other than as a mark, and that it used the border descriptively.
• The panel agreed with other circuit courts that a determination of trademark fair use required an inquiry into the subjective purpose in using the trademark, and whether defendant intended to capitalize on plaintiff's good will.
• The evidence supported a finding that the USPS did not intend to mislead or confuse customers. The USPS included its trademark eagle on its products, ensuring that customers understood the source. The fact that USPS could have chosen not to market its stamps as art was not an alternative that demonstrated bad faith. USPS was not required to consult with counsel before selling its cards, and mere knowledge of plaintiff's mark did not demonstrate the absence of good faith.