"Good Faith" Trademark Infringement: The Ninth Circuit's Approach to the Tea Rose-Rectanus Doctrine

Abstract

In 2017, the United States Court of Appeals for the Ninth Circuit held in Stone Creek, Inc. v. Omnia Italian Design, Inc. that the “good faith” element of the Tea Rose-Rectanus doctrine, a common-law affirmative defense to trademark infringement, requires the junior user to have used the trademark without knowledge of the senior user’s prior use of the mark. This ruling echoed the Seventh Circuit’s similar finding in 1982 in Money Store v. Harriscorp Finance, Inc., and the Eighth Circuit’s finding in 2001 in National Association for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc. The Ninth Circuit decision deepened the split with the Tenth and Fifth Circuits, which ruled in 1991 and 2001, respectively, that knowledge is not dispositive of bad faith, but is merely one factor to consider in a good faith inquiry. This Comment argues that the Ninth Circuit correctly decided that knowledge of a senior user’s prior use of a mark destroys the good faith defense under the Tea Rose-Rectanus doctrine.