By David A. Jones
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Trademark infringement, briefly, is the unauthorized use of a trademark or service mark of another in a manner that is likely to cause consumer confusion. In some cases, affirmative defenses may excuse the otherwise infringing actions of a later user, and permit that later user to continue its use of the protected mark. One of the more common defenses is “fair use.”

In general, fair use can fall into one of two categories. Descriptive fair use, as the name suggests, occurs where a later user makes use of a trademark to describe the user’s products or services, rather than for the purpose of indicating the source or origin of a particular good or service. This is often referred to as “classic” fair use. For a real-world example, SWEETARTS is a registered trademark for candy. The then-owner of the mark sued Ocean Spray for using the term “sweet-tart” to describe the taste of its cranberry juice. The court found Ocean Spray’s use of the term “sweet-tart” to be descriptive fair use and thus not an infringement. See Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

What is nominative fair use?

The second category is nominative fair use. In the case of nominative fair use, the second user deliberately uses the registered trademark of another, but does so for the purpose of referring to the goods or services of that trademark owner. For instance, it would be odd and cumbersome for every football fan to have to refer to “the football team from New York that wears red, white and blue uniforms” when you can just say the New York Giants. This type of fair use also encompasses things such as comparative advertising, media reporting, commentary and parody.

Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. See, e.g. New Kids on the Block v. News Am. Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

Limitations on nominative fair use

Nominative fair use does have its limitations, however. It is a doctrine that was created through case law. In other words, there is no law or statute that specifically carves out a nominative fair use exception. As a result of being a judicially-driven concept, the doctrine is not universally applied across all federal courts.

For example, disclaimers are often used to state that the party naming another’s trademark is not associated with the trademark owner, i.e., “NEW YORK GIANTS is a registered trademark of New York Football Giants, Inc.” or “XYZ company is not affiliated with the NEW YORK GIANTS football team.” Most courts view the use of disclaimers favorably, but even that is by no means a “Get Out of Jail Free” card. How prominent is the disclaimer? What does it say? Where is it placed? Is it legible? These are all things to consider when analyzing whether any particular use qualifies as a nominative fair use. (Both types of trademark fair use differ from fair use of copyrighted creative works, which we discussed in a prior blog post.)

In our current global-commerce society, it is also important to remember that fair use is not a universal concept that all countries recognize and treat the same. For instance, a comparative advertising campaign being launched in Europe must comply with the European Union directive governing comparative and misleading advertising.

In sum, if you are intending to make use of the trademark of another, you must tread carefully. Do not use any more of the mark than is necessary. If at all possible, try to use the trademark in a narrative form rather than “as a trademark.” This includes things such as making sure that if you are using someone else’s mark, it is not in a different color or font size or style than the surrounding text. As described above, disclaimers can help, but be careful how they are drafted, and remember that a disclaimer alone is not guaranteed to save an otherwise infringing use.

If you have questions regarding a use you intend to make of someone else’s trademark, or if you feel that someone else has made an improper use of your trademark, please feel free to contact our office. We will be happy to review it with you and discuss any relevant issues and potential pitfalls.