Whether the courts may rewrite the trademark statute to include a fair use defense for use of an incontestable mark to describe users

QUESTIONS PRESENTED For at least a decade, the petitioner has been using the registered and now-incontestable trademark “Freelancer” in commerce with various goods and services. Because the mark has been granted “incontestable” status, a secondary meaning of the term is presumed and defenses to infringement are severely limited. One of petitioner’s direct competitors began using the mark as the name of goods and services that themselves compete directly with petitioner’s similar goods and services that have borne the “Freelancer” mark for years. Petitioner moved for a preliminary injunction. To deny the preliminary injunction, the district court rewrote the trademark statute, extending the “fair use” defense and constricting the “counterfeit mark” definition (based on a recent Ninth Circuit opinion that constricted the definition). The “fair use” defense is statutorily limited to using the mark “only” to describe “goods or services”, but the district court extended fair use to describing “users.” The Ninth Circuit and the district court have imposed a new restriction on a “counterfeit mark,” requiring side-byside consideration of product appearance, when the statutory language, legislative history, and at least five circuits reject this requirement. The district court also required a showing of “actual” irreparable harm rather than “likelihood” of irreparable harm. And the Ninth Circuit ignored a retroactive statute that was enacted during the appeal and that requires a presumption of irreparable harm. In view of this, the questions presented are: 1. Whether the courts may rewrite the statute (15 U.S.C. §1115(b)) to include a fair use defense for use of an incontestable mark to describe “users,” where the statute iii limits the fair use defense to uses “only to describe the goods or services of such party, or their geographic origin.” 2. Whether the courts may rewrite the counterfeit mark statute to include side-by-side consideration of the “product as a whole” where the legislative history specifically indicates that the statute was not so extended, and where the statutory language only includes requirements unrelated to product appearance, i.e., (i) “counterfeit of a mark”; (ii) “registered on the principal register...”; (iii) “for such goods and services sold...”; and (iv) “that is in use.” 3. Whether the courts may require “evidence of actual losses” to obtain a preliminary injunction, when this Court’s jurisprudence clarifies that the party seeking an injunction need show only a “likelihood of” irreparable harm. 4. Whether the courts may ignore a retroactive trademark statute that is enacted during the appeal (..e., Public Law No. 116-260 Section 226), and that requires a presumption of irreparable harm for a trademark owner seeking a preliminary injunction.