Trademark Fair Use: Descriptive vs. Nominative
Descriptive Fair Use: Classic Fair Use
Descriptive Fair Use. Arises when one uses another’s trademark in its ordinary and descriptive context to describe a product or service. The rationale for this use is that the trademark owner should not be permitted to monopolize everyday terms that competitors and others need to describe a product or service. Therefore, owners of strong marks which are found to be less descriptive and more distinctive trademarks are less vulnerable to the descriptive fair use defense.
To qualify as descriptive fair use, the following elements must be met:
the term is used in its primary context and not as a trademark
the term is descriptive of the user’s products or services, or geographic origin
the use is made in good faith
Nominative Fair Use
Nominative fair use arises when the use of another's trademark is used to identify the trademark owner's products or services. There is no infringement so long as the use does not create a likelihood of confusion.
The user of the mark in question generally must show that the:
trademark owner’s product or service in question is not readily identifiable without use of the mark.
mark is used only to the extent reasonably necessary to identify the product or service.
use of the trademark or its surrounding context does not suggest sponsorship or endorsement by the trademark owner.
Nominative fair use arises in a variety of situations. Some common examples are detailed below.
News Reporting, Commentary, and Reviews. A frequent concern for media commentators, bloggers, and online publishers is whether their ability to engage in reporting, commentary, criticism, and other forms of political, social, artistic expression is limited by or encroaches upon trademark laws. Trademark law does not permit a trademark owner to use its trademark rights to silence or stifle commentary and criticism, because doing so would run afoul of first amendment protections. The main purpose of trademark law is to avoid consumer confusion, and the fundamental question in any trademark dispute is whether the secondary user’s use of a trademark creates a likelihood of confusion between their products or services and those of the senior user. Thus, if an individual is commenting on, reporting on, or criticizing a trademark owner, ordinary consumers will not be confused about the source or sponsorship of the trademark owner.
Parody. Parody of a trademark owner or its products or services is another permissible use. As with commentary and criticism, courts generally recognize parody as being entitled to First Amendment protections. Parody is not deemed to create a likelihood of confusion because the secondary user used the primary user’s mark as the subject of a joke. However, it is important to understand that merely labeling your work a parody will not be sufficient to prevail in a trademark infringement or dilution claim. The courts take a relatively narrow view of what qualifies as a parody. A true parody treads the line between evoking the original trademark while making it clear that it is not the original - it is new commentary or criticism of the trademark owner. If the parody confuses consumers into believing that the trademark owner is the source or sponsor of the parody, then the secondary user may be liable for infringement or dilution.
To determine whether the defendant's use is a parody courts typically examine the extent to which the use:
effectively differentiates the original product or service from the claimed parody
involves humor, satire, or ridicule of the plaintiff or its products or services
A famous parody example is Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC. Louis Vuitton sued a manufacturer of dog toys that parodied various well-known brands. The dog toy manufacturer sold stuffed toys that imitated the Louis Vuitton logo and handbag design, and were sold under the name “Chewy Vuiton.” The court ruled in favor of the toy manufacturer finding that although the toys were intentional representations of the Louis Vuitton handbags that the “Chewy Vuiton” dog toys were successful parodies, because the differences in the products (i.e. nature of product, design of the product, price, and target market) make it clear that there was no confusion as to the source of the products and most notably, the dog toy immediately conveys a joking and amusing parody -
The furry little “Chewy Vuiton” imitation was something to be chewed by a dog, clearly pokes fun at the elegance and expensive price tag of a Louis Vuitton handbag, which clearly should not be chewed by a dog;
The Louis Vuitton handbag is provided for the most elegant and well-to-do celebrity, to proudly display to the public and the press, whereas the imitation “Chewy Vuiton” handbag chew toy is designed to mock the celebrity and for the use and enjoyment of a dog.
The court found that the dog toy irreverently presented “haute couture” as an object for casual canine destruction. Accordingly, the satire was unmistakable. The “Chewy Vuiton” dog toy was meant to be a comment on the rich and famous, on the Louis Vuitton name and related marks, and on conspicuous consumption in general. The court also found that the parody was enhanced by the fact that “Chewy Vuiton” dog toys were sold with similar parodies of other famous and expensive brands “Chewnel No. 5,” targeting “Chanel No. 5,” “Dog Perignonn” targeting “Dom Perignon,” and “Sniffany & Co.,” targeting “Tiffany & Co.
Identifying Customers and Business Partners. Companies often identify their customers or other business partners on their websites or other marketing materials, often with use of the customer or business partner’s logo. Nominative fair use allows such use, but one should proceed with caution when using the logos of customers or business partners. One should only use only as much of the logo is necessary to accurately convey the relationship and nothing more. In addition, it might be necessary to include a statement indicating that no endorsement may be implied.
Comparative Advertising. Comparative advertising is generally defined as “advertising that compares alternative brands on objectively measurable attributes or price, and identifies the alternative brand by name, illustration or other distinctive information.” Comparative advertising is encouraged in the United States as it gives consumers vital information and promotes product improvement and innovation. When using comparative advertising, the ad must be truthful and non-deceptive, and any use of a third-party’s trademark must be only for comparison purposes. For this reason, only the word mark should be used; there is no legitimate purpose to use a competitor’s logo. The claim that “Brand A products are more efficient and last longer than Brand B products” is an example of a comparative claim. Some examples of hypothetical uses that might qualify as a “nominative fair use” are: comparative advertising (e.g. “Our Alpha thing-a-ma-bobs last longer than Beta thing-a-ma-jigs.”).
Compatibility and Ingredient Claims. Compatibility claims are statements made by one party claiming that its products can be used with or are compatible with the products of another. For example, the statement “Brand A parts work with Brand B products” is a compatibility claim. These claims are generally made to inform consumers about the purpose and uses of the product. For those companies that use compatibility claims, it is important that the statement is accurate and that it does not suggest endorsement. For example, a statement that “Brand A is compatible with Brand B” would be permissible. However, “Brand C is recommended for use with Brand D” may not be.
Authorized Resellers; Distributors and Repair Service Providers.Authorized resellers, distributors, and brokers sometimes specialize in the products from a particular company. If that is the case, that reseller, distributor, or broker may use the trademarks of the other company to inform the consumer about their specialty. However, in doing so, that reseller, distributor, or brokers must avoid any implication that the brand owner has endorsed their services or is otherwise affiliated with them. Thus, “Independent Brand A Reseller” is permissible, but “Buy Your Next Brand A From Independent Reseller” From Independent Reseller” or “Your Preferred Source for Brand A ” may not, due to the fact that it may be construed as implying that it is an authorized sales channel.
As with most areas of the law, fair use is not black and white. Each fair use assessment is highly fact-sensitive, but an honest examination of these factors will help to determine how to appropriately use or what may be done to correct the use of another’s mark. If there is legitimate non-infringing need to use another’s mark, consider the business purpose for the use and think about whether it is possible to identify the party in a different manner. It is always best to seek the other brand owner’s permission before proceeding with use. It is the best way to avoid disputes down the road.
If you need assistance in identifying whether your advertising and promotion efforts run afoul of trademark laws of the Federal Trade Commission’s regulations, contact Boyd, Cooper and Associates for assistance in ensuring compliance.
This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, schedule your legal consultation today.