By Doni Robinson
A trademark serves to inform the public of the source of the goods or service associate with that mark. It follows that most unauthorized usage of a confusingly similar mark on competing goods and services would be considered infringement, since the public is likely to be mislead about the source of the goods and services. However, what happens when the usage is for the purposes of describing ones own goods and services, or for designating the true goods and service of the mark? If the usage of another’s trademark is “descriptive” or “nominative” then such use is “fair” (i.e. non-infringing).
1. Nominative Fair Use:
Nominative fair use permits the usage of another’s trademark to simply identify that product or service, but cannot be used in a way that suggests affiliation, sponsorship, or endorsement. Courts will consider the following factors to determine if the usage is nominative or not: 1) Does the use falsely suggest sponsorship or endorsement by the trademark owner? (Answer should be NO); 2) Is the usage only so much as necessary to identify the product or service? (Answer should be YES); 3) Is the product readily identifiable without the use of the trademark? (Answer should be NO).
The usage must be for advertising or promotion that permits consumers to compares goods or services, so long as the factors above are met. A common example of nominative fair is seen in comparative advertising: Product A vs. Product B. Nominative fair use can also be seen in parody and noncommercial use, and news reporting. For example, using an image of Barbie in an image commenting on the objectification of women was considered nominative because it was a criticism and parody of Mattel’s mark for BARBIE. Using another’s mark should be done with caution in these instances, and any indication that suggests a trademark owner approved, sponsored or endorsed such usage, or that such usage that harms the goodwill of the mark should be avoided.
2. Descriptive Fair Use:
Descriptive fair use allows one to use another’s mark for the purposes of describing their own goods and services. This occurs not when one is refraining the actual trademark to identify that owner or product, but instead to describe its own products or services. Here, the mark should be used in its ordinary, descriptive meaning to simply describe a product or service. Also, the usage of the mark must be in good faith, and only for the purposes of describing one’s own goods and services. For example, the makers of a cranberry juice were allowed to use the mark SWEETARTS to describe their juice as “sweet-tart.” Here, the mark was being used solely to describe how the juice tasted, and was not related to the trademark for the candy. The purpose of this defense is to ensure that descriptive terms that may otherwise be protectable trademarks don’t prevent others from using the mark in a solely descriptive sense. So, this type of fair use is seen when a mark in question has a clearly understood descriptive meaning.
It’s important to remember that circuits differ as to their analyses of these factors, and it can oftentimes be difficult to ascertain whether a usage is fair or rises to the level of infringement. If you’re concerned whether your use of another’s mark is “fair”, contact a trademark attorney at Jayaram Law who will perform a detailed analysis.