Trademark Nominative Fair Use: Guidance for IP Counsel

The Lanham Act has long recognized the concept of “statutory” or descriptive fair use which allows the use of a term even if it is a trademark provided that the use is consistent with its ordinary meaning, is not used as a trademark, and is made in good faith. In 1992, the Ninth Circuit coined the term “nominative fair use” to describe the use of a trademark other than by its owner for purposes of identifying the trademarked product.

In the seminal New Kids on the Block decision the Ninth Circuit posited that such use would not be an infringement if (1) the product or service in question is not readily identifiable without use of the trademark, (2) the user only takes what is reasonably necessary to identify the product, and (3) the user does nothing to suggest that he is connected to or sponsored by the trademark owner.

Fair use cases were relatively rare until the around 2000, but the number of both statutory fair use and nominative fair uses cases have substantially increased since. Notwithstanding that the Supreme Court accepted one fair use case during this period, many questions arise about the interplay between confusion and both statutory fair use and nominative fair use, the proper test for addressing confusion in such cases, and who bears the burden of proof.

Listen as our authoritative panel of IP attorneys briefly compares nominative fair use with statutory/classic fair use. The panel will discuss statutory fair use and explain the issue of what it means for fair use to be an affirmative defense and then examine nominative fair use, exploring it as an affirmative defense, its relationship to confusion, its impact on comparative advertising strategies, and court treatment of nominative fair use. The panel will also provide best practices for nominative fair use.

1. Compare nominative fair use vs. statutory/classic fair use
2. Statutory fair use
   1. Does confusion matter in deciding if a use is statutory fair use?
   2. What is “use other than as a trademark”?
   3. Implications on brand clearance and enforcement?
3. Nominative fair use
   1. Is this an affirmative defense or just a category of cases that require a different test for evaluating likely confusion?
   2. Should the strength of a mark matter in a nominative fair use case?
   3. When is use of a trademark reasonably necessary to describe a product or service?
   4. The differences between the Third Circuit approach in Century 21 v. Lending Tree and the Ninth Circuit.
   5. What do the other circuit courts say about the doctrine?
4. Best practices for both statutory and nominative fair use

The panel will review these and other key issues:

• What factors should counsel consider when analyzing nominative fair use?
• Is nominative fair use an affirmative defense or just another way of analyzing confusion?
• How have the courts addressed the issue of nominative fair use and its application?