The Trademark Reporter®
Global Trademark Resources

May-June, 2012 Vol. 102 No. 3 Back to TMR Main Page
Trademark Nominative Fair Use: Toward A Uniform Standard
    This article (a) reviews the statutory and case law background that predated the Ninth Circuit’s groundbreaking New Kids decision; (b) traces the history of the nominative fair use doctrine in the U.S. courts; and (c) argues, in Part III, in favor of a new two-step standard for determining infringement where the defendant claims nominative fair use of the trademark owner’s mark. The new standard combines elements from both the Ninth Circuit and Third Circuit tests but does not cast the burden on the defendant to negate sponsorship confusion. The author contends that this new standard will clarify some of the confusion that currently exists in the case law regarding nominative fair use and help the courts to apply a uniform standard.
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