What is Trademark Fair Use?

When you register your trademark with the United States Patent and Trademark Office (USPTO), you have taken the most important step to protect your brand from misuse by others. However, there are still a limited number of situations in which a third party may be allowed to use your trademark. Under the Lanham Act, the doctrine of “fair use” permits another to use a registered trademark as long as there wouldn’t be a likelihood of confusion that there is a connection with the mark’s actual owner.

What is Fair Use?

“Fair use” is a term in trademark law that means using a mark in such a way that it will not infringe upon the owner’s rights. A common defense in trademark infringement litigation, fair use provides that a party may use a protected mark not as an actual trademark, but rather, for its descriptive meaning. Specifically, there are two types of fair use: classic fair use and nominative fair use.

Classic Fair Use versus Nominative Fair Use

Classic fair use, also sometimes called “descriptive fair use,” occurs when someone else’s trademark is used to describe one’s goods or services. This type of use does not indicate the source of the goods or services but instead uses the word that is registered as the trademark to describe them.

Notably, the Lanham Act limits trademark rights when it comes to using descriptive terms to avoid creating monopolies on words that are needed to define products or services — not only are descriptive trademarks more difficult to obtain, but also to enforce. A word is deemed “descriptive” if it references a characteristic, quality, flavor, function, or purpose of the goods or services.

Nominative fair use allows for using another’s mark to name the owner’s goods and services if they could not otherwise be easily identified. For instance, a media outlet might use a registered trademark name to report on an event or poll readers. Or, an instructor might provide classes on how to use a specific type of software program — the instructor can use the name of the software in advertising materials as long as they do not falsely suggest an affiliation with the company.

When Does Trademark Fair Use Apply?

Fair use in trademark law can apply in a wide variety of scenarios, as long as the mark is used in good faith and the use wouldn’t be likely to cause confusion among consumers. Some common situations where trademark fair use applies are as follows:

• News reporting and commentary — It is permissible to refer to another’s trademark in a news story, commentary, blog, or publication. Trademark owners are not allowed to use their trademark rights to silence criticism.
• Product reviews — In most cases, it would not be possible to identify a product and write a review without mentioning the brand name. However, those who write product reviews do not have to be concerned with trademark infringement under the fair use doctrine.
• Parody — Parody is considered fair use of a trademark as it would not result in a likelihood of confusion with consumers. In these cases, consumers would likely understand that the secondary use of the mark is the subject of a joke. In addition, courts usually recognize parody as falling under the protection of the First Amendment.
• Comparative advertising — Comparative advertising provides consumers with valuable information to make decisions about which products to purchase. In these cases, any ads must be non-deceptive, and the trademark can only be used for the purposes of comparison.
• Compatibility claims — Compatibility claims arise when a party makes a statement that its products or parts are suitable for use with another brand’s products. These statements qualify as nominative fair use.
• Identifying customers — Companies usually identify customers or business partners on their marketing materials. While nominative fair use allows a party to use another’s logo for these purposes, they are only permitted to use as much of the logo as necessary to show the relationship.

A court will usually consider several factors when determining whether an allegation of infringement qualifies as fair use. However, the circuits have applied different criteria when nominative use is at issue. For example, to prevail in using fair use as a defense in the Third Circuit, a defendant must show: (1) the use of the plaintiff’s mark is necessary to describe their goods or services; (2) they use only as much of the mark as is necessary to describe the product; (3) their conduct reflects the accurate relationship they have with the plaintiff.

In the Ninth Circuit, nominative fair use is not considered an affirmative defense because it does not shield a defendant from liability if there is a likelihood of confusion. A three-prong test is applied which considers whether: (1) the plaintiff’s goods or services is not readily identified without the use of the mark; (2) the defendant used only as much of the mark as is reasonably necessary to identify the plaintiff’s goods or services; (3) the defendant did not do anything to suggest endorsement by the plaintiff.

The Second Circuit combined the approaches of the Third and Ninth Circuits to create its own test. In addition, it also directs district courts to not only consider the likelihood of confusion regarding the source of the defendant’s goods, but also potential confusion concerning affiliation, sponsorship, or endorsement by the trademark owner.

Contact an Experienced Trademark Fair Use Attorney

The concept of fair use in trademark law is complex. It’s best to have a knowledgeable trademark lawyer assess your case if you think the fair use defense might apply in your situation. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs in various industries to help ensure their trademarks are shielded from misuse — and their bottom lines are protected. Contact us today to schedule a free 15-minute consultation.