Trademarks – What is Fair Use?

As our Charleston trademark attorneys have expressed throughout the trademark sections of this site, the core function of a trademark for any business is to serve as an exclusive identifier of the source of a products, good or service.  One of the most important trademark benefits enjoyed by a business or entrepreneurs holding a registered trademark is the right to prevent others in the marketplace from using the same or a similar trademark.  To that end, due to the global growth in technology and media industries, it has become increasingly common to see trademarks being used by third parties in various platforms – media, advertising, parody, comparative product marketing.  Are such third party uses legitimate when made without a trademark owners permission?

Under the Lanham Act, the Trademark Fair Use Doctrine protects certain trademark fair uses of registered trademarks from trademark infringement claims when the use of the name, term, or device is “a use, otherwise than as a mark, of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services of [a] party, or their geographic origin.”15 U.S.C. § 1115(b)(5)(A)-(C) (2006).

Trademark law provisions for the concept of “fair use,” which recognizes that in some situations it may be permissible to use another business’ registered trademark if certain conditions are met. Trademark owners should understand the concept of fair use so that they can better evaluate when a third party’s use of their trademark is fair. On the other side of the coin, third party users of trademarks should know when they may be crossing the line from fair use to trademark infringement.

What is Trademark Fair Use?

In general, courts have identified two types of trademark fair use – descriptive fair use and nominative fair use.  When employed properly, neither of these fair uses of trademarks have been held to infringe or dilute a trademark owners exclusive rights in the mark. Both trademark fair uses provides a third party with an affirmative defense to trademark infringement as enunciated by the United States Court of Appeals for the Ninth Circuit.

  • Descriptive (or Classic) fair use is where a third party uses another business’ mark not as a trademark, but merely to describe its own goods and services;
  • Nominative fair use, on the other hand, is where a third party uses another business’ trademark deliberately to refer to that party for purposes such as: news reporting, commentary, parody, comparative advertising?

Descriptive fair uses exists where a trademark owner’s mark is being used for its ordinary, descriptive meaning to describe a good, product or service.  In other words, descriptive fair use allows a third party to use a business’ trademark to describe that business’ products or services, rather than as a trademark to indicate the source of the products or services.  Descriptive fair use most often occurs when a trademark has a clearly understood descriptive meaning and it is necessary for others to use the trademark to describe their own goods, products and services in the marketplace.  The rationale surrounding descriptive fair use is that a trademark owner of a mark incorporating one, or multiple, descriptive terms should not have the right to exclude competing businesses from using terms or words that are legitimately needed to identify and describe their goods, products or services.  The fair use exception in certain situations would allow use of descriptive terms to identify the kind, quality, intended purpose, geographic origin of the goods, products or service.

Far more common are lawsuits involving what is called “nominative fair use.” Nominative use occurs when a third party uses another business’ trademark not to describe that business’ products or services but to refer to the actual trademark owner or identify a product or service of that certain trademark owner.  This affirmative fair use defense most often occurs in good faith advertising.  The fact that a third party is not authorized by the trademark owner to use its mark does not always make such use infringing. To qualify as nominative fair use, the following elements must be satisfied:

  • The use must accurately refer to the owner of the trademark or the goods or services sold under the trademark— it cannot be misleading or defamatory;
  • The use must not imply any endorsement or sponsorship by the trademark owner?
  • There should be no easier way to refer to the owner or its products; and
  • Only so much of the trademark can be used as is needed to identify the trademark owner and no more—this is often taken to mean that only words may be used but not logos.

Personal Names

Under the Lanham Act, the statutory Fair Us e Doctrine also protects certain uses of registered trademarks from infringement claims when the use of the name, term, or device charged to be aninfringement is “a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party.”15 U.S.C. § 1115(b)(4) (2006).

Therefore, one can use his or her own personal or surname in business to identify and promote himself or hersefl, even if a third party holds a trademark registration in connection with your personal or surname.

Contact Us

Please contact our Charleston trademark attorneys to determine whether your proposed trademark is available for use.  We provide flat fee comprehensive trademark search services with a three business day turnaround. Please feel free to email or call our Charleston law office directly at 843-564-5115 to inquire about your trademarks.

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