Fair Use Under U.S. Trademark Law

January 2012

One year ago, we wrote about fair use under U.S. copyright law (click here to view this article). There is a similar "fair use" doctrine under U.S. trademark law, and this article provides a summary of the fair use defense as it applies to trademark infringement and dilution. Although the two doctrines are similar, the standard for determining fair use under trademark law is not the same as it is under copyright law.

Trademark fair use includes two basic constructs: descriptive use and nominative use. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (describing two types of fair use). With respect to descriptive use, the Lanham Act (the federal trademark statute) provides that "use of [a] name...[that] is descriptive of and used fairly and in good faith only to describe the goods or services of [a] party, or their geographic origin" is a defense to trademark infringement. 15 U.S.C. Section 1115(b)(4). Thus, if a company were to tout that its goods come from Patagonia, there would be no infringement of the Patagonia® trademark as long as such claims were factually accurate.

Nominative fair use applies when a mark is used to identify someone else's product. There are certain limitations on nominative fair use, however. In New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), the U.S. Court of Appeals for the Ninth Circuit held that a survey company did not commit trademark infringement by referring to the band "New Kids on the Block" in a telephone poll. In reaching this decision, the court noted that: (1) the group was not readily identifiable without referring to the name of the band (which is also a registered trademark); (2) the survey company only used so much of the mark as was reasonably necessary to identify the group; and (3) the survey company did not suggest that it was endorsed or sponsored by New Kids on the Block. Under these circumstances, the court concluded that use of the registered mark by the survey company constituted fair use.

Although not considered descriptive or nominative fair use, parody is sometimes treated as fair use. The primary factor in determining whether parody is fair use is whether the parody is for a commercial or noncommercial purpose. Generally speaking, if the parody is for a commercial purpose, it will not be considered fair use. For example, courts have held that "Gucchie Goo" diaper bags (as a parody of Gucci® handbags) and posters displaying an "Enjoy Cocaine" logo (as a parody of Coca-Cola's registered trademark) were not protected by fair use. Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). On the other hand, courts have found fair use to exist in connection with non-commercial parodies and/or where the parties are not competitors. See, e.g., L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987); Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996).

Given the complexities of trademark fair use, we recommend that clients obtain a legal review of scripts, manuscripts, websites and other promotional materials that mention other party's trademarks. Such a review will help clients determine whether it is necessary to obtain permission from the trademark owners prior to publication. Keep in mind that claims of superiority over competing products may raise issues of trademark fair use.

Lastly, it is important to note that although trademark fair use allows you to use your own name in referring to yourself (see 15 U.S.C. Section 1115(b)(4)), you may not be able to use your name as a trademark if it is already registered by someone else. (For trademark infringement, the issue is whether your goods and services are related to the goods and services covered by the registration. For trademark dilution, the issue is whether the registered mark is famous.) For our previous article on trademark issues relating to personal names, please click here.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.