Insight

Fair Enough: The “Fair Use” Defense to Trademark Infringement

There are two arguments for fair use in a trademark infringement case. Here's your guide to understanding both.

Fair Use in Trademark Infringement
AH

Aaron Haar and Maria Crimi Speth

February 6, 2019 10:48 AM

In the context of trademarks, “fair use” is the term given to the use of someone else’s trademark in a way that will not subject the user to liability for infringing the owner’s rights. Fair use is a defense to a claim of trademark infringement. There are two categories of trademark fair use:

  • Classic fair use: When someone else's trademark is used to refer to the user's goods or services;
  • Nominative fair use: When someone else’s trademark is used to refer to the mark owner’s goods or services.

Classic Fair Use

Classic fair use is when someone else’s trademark is used to refer to the user’s goods or services. The classic fair use defense allows the use of another’s trademark in its primary descriptive meaning—in other words, the mark also describes a person, place, or attribute of the goods or services. This generally occurs where a trademark is descriptive, geographically descriptive, or is a personal name.

For example, where a food-products company adopted the descriptive (although uniquely spelled) name, Hygrade Food Products, the law did not preclude others from using the descriptive term “high grade.” The court found the owners of a grocery store who began using the phrase “High Grade Food Stores” to describe their stores did not infringe the HYGRADE mark because of fair use. Similarly, the makers of Sweet Tarts candy were unsuccessful in their lawsuit against cranberry juice company Ocean Spray, where the juice company had used the term “sweet-tart” in advertising for its juice. The court found fair use because Ocean Spray’s advertising was used only to describe the taste of the cranberry juice. And a court held that Abercrombie & Fitch could not prevent others from using its mark SAFARI to describe clothing intended for use on safari.

The doctrine of classic fair use tolerates some confusion in the interest of free competition. By choosing a descriptive term, the trademark owner must live with the result that others are free to use the term in its original, descriptive sense. Of course, classic fair use does not allow others to use someone else’s descriptive trademark as a trademark to designate the source of the good or service. From the above examples, Ocean Spray likely could not use the mark SWEET-TART as the name of a cranberry juice brand.

The extent of classic fair use is determined based on how truly descriptive the use of the mark is. A cosmetics company used the term "SEAL IT WITH A KISS" as part of an in-store marketing campaign, wherein the company asked customers to use its line of lipstick, kiss a complimentary postcard, and mail it to a loved one. A competitor—which owned the registered mark SEALED WITH A KISS for a competing product line—filed suit on grounds the cosmetics company was infringing its mark. The court found the cosmetics company’s use was descriptive because “[t]he phrase conveys the instruction to seal by kissing the complimentary postcard to signify the amorous sentiment conveyed to the recipient of the card.” Although the cosmetic company’s use of the phrase did not describe the company’s product, the phrase was used in its “descriptive sense,” which was sufficient to qualify the company for the fair-use defense.

Nominative Fair Use

Nominative fair use is when someone else’s trademark is used to refer to the mark owner’s goods or services. This use is deemed “nominative” because it “names” the owner of the mark. The nominative fair use defense allows the use of another’s trademark so long as there is no likelihood of confusion. Nominative fair use often happens with comparative advertising, media coverage, and independent retailers. For example, Coca-Cola might compare the quality of its classic drink to that of its competitor, PepsiCo. Or a news station might report on the Macy’s Thanksgiving Day Parade. A small watch company might tout that it sells and fixes Omega watches—though it must take care not give the impression that it is an “official” Omega retailer if, in fact, it is not. The user needs only show that its reference was to the trademark owner’s goods or services, at which point, the burden shifts to the trademark owner to show a likelihood of confusion based on the use.

The doctrine of nominative fair use arose because the market has a need to identify a mark owner. Such use is considered “fair” because there is no implication of sponsorship or endorsement by the trademark owner. With that in mind, courts have more closely scrutinized nominative fair use claims when the defendant actually used a logo or stylized lettering, rather than simply the word mark.

When the issue of nominative fair use is raised, courts replace the likelihood-of-confusion test typically used to evaluate trademark infringement with a likelihood-of-confusion test that is specific to nominative fair use. The court considers three questions under a nominative fair use analysis to determine if a particular trademark use might cause confusion:

  • Is the product or service of the trademark owner one which is readily identifiable without use of the trademark?

Note: The assumption is that the user has a legitimate need to identify the trademark owner by using its trademark.

  • Has the mark been used more than is reasonably necessary to identify the trademark owner?

Note: It may be problematic if the trademark is used too prominently or too often, in a way that draws a viewer’s attention.

  • Has the user falsely suggested sponsorship or endorsement by the trademark owner?

Note: This question evaluates whether the context of the use falsely suggests sponsorship, affiliation, or approval by the trademark owner.

[RELATED: Nomination deadline for the United Kingdom is February 18]

In one notable case, Playboy Enterprises, Inc. sued Terri Welles, Playmate of the Year 1981 for trademark infringement when she created a website that contained various headings and banner ads using the marks PLAYBOY, PLAYMATE, and PLAYMATE OF THE YEAR. The court ultimately determined this was nominative fair use because the use clearly referred to Ms. Welles’ title and the company that had bestowed her with the honor. The court noted Ms. Welles had not used Playboy’s logo or its stylized font and her website included a disclaimer of any affiliation with Playboy Enterprises. However, the court found Ms. Welles’ repeated use of another Playboy mark PMOY, which she used in its stylized form as wallpaper throughout her website, was far more than necessary to describe herself and was, therefore, not fair use.

----------------

Maria Crimi Speth is a shareholder and intellectual property attorney at the Phoenix law firm of Jaburg Wilk. She is the department head of the intellectual property group and has expertise in copyright law, trademark law, and Internet law. She focuses on litigation involving intellectual property rights and First Amendment rights. Ms. Speth is the author of the book, Protect Your Writings: A Legal Guide for Authors.

Aaron K. Haar is an attorney with Jaburg Wilk who practices in the areas of commercial litigation and intellectual property.

Related Articles

"Lawyer of the Year"


Women with blond hair and earrings poses for headshot

Nancy Rubner Frandsen

Trademark Law

Philadelphia, PA

2023

What Entrepreneurs Should Know About Intellectual Property


by Todd Fichtenberg

With the growing rates of entrepreneurs and startups during 2020, applications for EINs and intellectual property protections should grow proportionately.

Business Owners And Intellectual Property

New Rules for Patent Venue


by Michael B. Fein

Where can you be sued for patent infringement?

Patent Venue

New Greek Copyright Law


by Kriton Metaxopoulos

The procedure applies only to infringements committed by users who make available to the public and upload content or works for which they do not own/control the copyrights. However, it does not apply to infringements committed by end users by downloading, peer to peer file sharing, streaming, or cloud computing.

Greek Copyright Law

Trending Articles

Announcing the 2023 The Best Lawyers in America Honorees


by Best Lawyers

Only the top 5.3% of all practicing lawyers in the U.S. were selected by their peers for inclusion in the 29th edition of The Best Lawyers in America®.

Gold strings and dots connecting to form US map

Announcing the 2022 Best Lawyers® in the United States


by Best Lawyers

The results include an elite field of top lawyers listed in the 28th Edition of The Best Lawyers in America® and in the 2nd Edition of Best Lawyers: Ones to Watch in America for 2022.

2022 Best Lawyers Listings for United States

2021 Best Lawyers: The Global Issue


by Best Lawyers

The 2021 Global Issue features top legal talent from the most recent editions of Best Lawyers and Best Lawyers: Ones to Watch worldwide.

2021 Best Lawyers: The Global Issue

The U.S. Best Lawyers Voting Season Is Open


by Best Lawyers

The voting season for the 31st edition of The Best Lawyers in America® and the 5th edition of Best Lawyers: Ones to Watch® in America is officially underway, and we are offering some helpful advice to this year’s voters.

Golden figures of people standing on blue surface connected by white lines

How To Find A Pro Bono Lawyer


by Best Lawyers

Best Lawyers dives into the vital role pro bono lawyers play in ensuring access to justice for all and the transformative impact they have on communities.

Hands joined around a table with phone, paper, pen and glasses

What the Courts Say About Recording in the Classroom


by Christina Henagen Peer and Peter Zawadski

Students and parents are increasingly asking to use audio devices to record what's being said in the classroom. But is it legal? A recent ruling offer gives the answer to a question confusing parents and administrators alike.

Is It Legal for Students to Record Teachers?

How Palworld Is Testing the Limits of Nintendo’s Legal Power


by Gregory Sirico

Many are calling the new game Palworld “Pokémon GO with guns,” noting the games striking similarities. Experts speculate how Nintendo could take legal action.

Animated figures with guns stand on top of creatures

The Best Lawyers in Australia™ 2024 Launch


by Best Lawyers

Best Lawyers is excited to announce The Best Lawyers in Australia™ for 2023, including the top lawyers and law firms from Australia.

Australian Parliament beside water at sunset

Inflation Escalation


by Ashley S. Wagner

Inflation and rising costs are at the forefront of everyone’s mind as we enter 2023. The current volatile market makes it more important than ever to understand the rent escalation clauses in current and future commercial lease agreements.

Suited figure in front of rising market and inflated balloon

Best Lawyers: Ones to Watch in America for 2023


by Best Lawyers

The third edition of Best Lawyers: Ones to Watch in America™ highlights the legal talent of lawyers who have been in practice less than 10 years.

Three arrows made of lines and dots on blue background

A Celebration of Excellence: The Best Lawyers in Canada 2024 Awards


by Best Lawyers

As we embark on the 18th edition of The Best Lawyers in Canada™, we are excited to highlight excellence and top legal talent across the country.

Abstract image of red and white Canada flag in triangles

8 Different Types of Criminal Defenses in Law


by Best Lawyers

Learn about the different types of criminal defenses available in law, including innocence, self-defense, insanity and more. Protect your rights today.

Silver handcuffs laying on finger printed papers

Wage and Overtime Laws for Truck Drivers


by Greg Mansell

For truck drivers nationwide, underpayment and overtime violations are just the beginning of a long list of problems. Below we explore the wages you are entitled to but may not be receiving.

Truck Driver Wage and Overtime Laws in the US

The Upcycle Conundrum


by Karen Kreider Gaunt

Laudable or litigious? What you need to know about potential copyright and trademark infringement when repurposing products.

Repurposed Products and Copyright Infringemen

Choosing a Title Company: What a Seller Should Expect


by Roy D. Oppenheim

When it comes to choosing a title company, how much power exactly does a seller have?

Choosing the Title Company As Seller

The 2024 Best Lawyers in Spain™


by Best Lawyers

Best Lawyers is honored to announce the 16th edition of The Best Lawyers in Spain™ and the third edition of Best Lawyers: Ones to Watch in Spain™ for 2024.

Tall buildings and rushing traffic against clouds and sun in sky