Trademark Fair Use

fair use, trademark, trademark infringement, nominative fair use

​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 -  

  1. 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;

  2. 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.