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Nominative Fair Use – Using Another’s Trademark

—Daniel M. Levine

From sampling in hip-hop [Central District of California Strikes Gold for Music Samplers-http://rmczlaw.com/blog/?p=36] to budding YouTube entrepreneurs the concept of using another’s copywritten material “fairly” is better known and more widespread as the Digital Age continues.  However, what about the use of another’s trademarks?  “Nominative fair use,” a lesser known but similar concept to “fair use,” covers these situations.

Even though the use of another’s trademarks is generally impermissible, there are certain specific circumstances under which they can be used.  These exceptions fall into one of four categories:

1)      Comparative Advertising – “Our phone has twice the battery life of the Apple iPhone 6s”;

2)      Expressing compatibility/interoperability – “This product is compatible with all Apple iPhone models 4, 5, 5s, 6, and 6s;

3)      Indicating services – “We repair all Apple iPhones and Apple Macbooks”; and

4)      Educational or non-commercial, informational purposes – “Apple iPhone 6s sales down by 15% this quarter

The Lanham Act, the source of federal trademark law, does not specifically define “nominative fair use”. As a result, the federal courts have created a patchwork of guidance.  Generally, the use of another’s trademark must meet the following three criteria:

1)   The product or service in question is not readily identifiable without use of the trademark;

2)   Only so much of the mark is used as is reasonably necessary to identify the product or service; and

3)   Use of the mark does not suggest sponsorship or endorsement by the trademark owner

The most common problem arises where businesses use too much of another’s mark.  The federal courts have provided the following guidance as to what is not permitted:

1)      Distinctive lettering instead of plain lettering.

2)      Use of design marks when the word mark would suffice.

3)      Color schemes.

However, in all cases, the burden is on the owner to show that the use triggers a likelihood of confusion and therefore, the argument of “fair use” is often available and persuasive.  KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).  This standard permits a business claiming “nominative fair use” to demonstrate that it has distanced itself from the trademark owner and the goods or services, such as through a disclaimer.  See e.g. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) (noting several times defendant made a ‘clear statement’ disclaiming any connection with plaintiff); Hensley Manufacturing, Inc. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009) (finding fair use of another’s mark when, in part, disclaiming connection with trademark’s owner).

Like “fair use” under copyright law, “nominative fair use” under trademark law is often based on facts and circumstances. As such, this article is not a substitute for legal advice.  If you have questions regarding the use of another’s trademark please contact one of the attorneys at Roberts McGivney Zagotta LLC.

The information in this article is for informational purposes only and does not constitute formal, legal advice.  Consult with one of the attorneys from Roberts McGivney Zagotta LLC for advice about your particular circumstance.