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Protecting a Trademark

Fair Use of Trademarks

Updated, February 2015

1. What is fair use?

Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. There are, however, circumstances when someone other than the trademark owner may use another party’s trademark as long as the use is considered a “fair use” (initially an American term and broadly understood as a type of exception to the rights that trademark law confers) and does not violate or infringe the rights of a trademark owner. In fact, most jurisdictions throughout the world recognize some type of “fair use” exception to trademark infringement. 

Generally, use of another’s trademark is permissible—that is, it is considered a “fair use” that does not infringe a trademark right—in two types of situations: descriptive fair use and nominative fair use. For a trademark comprising a term that has a descriptive meaning in addition to its secondary meaning as a trademark, descriptive fair use permits use of the term descriptively to describe the user’s products or services, rather than as a trademark to indicate the source of the products or services. Nominative fair use permits use of another’s trademark to refer to the trademark owner’s actual goods and services associated with the mark.

2. What common situations are considered fair use?

Using a geographical name relating to the user’s business location, even if that name is the same as or similar to another’s mark, generally is considered fair use. Under the fair use exception, a user generally is permitted to use descriptive indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, main raw materials, functions, weight, or other characteristics of the goods or services. Of course, this type of fair use typically is subject to such use’s being in accordance with honest commercial practices that do not suggest association with the trademark owner and that do not depreciate the value of the goodwill in the mark.

3. Does fair use vary from jurisdiction to jurisdiction?

Yes. Every jurisdiction may interpret fair use differently. For that reason, a usershould always check with local counsel competent to practice in the jurisdiction of interest before assuming that a use will be considered fair.

For example, some jurisdictions, including Canada, the European Union and Taiwan, consider use of one’s personal name as a trade name to be fair use, even if that personal name is the same as or similar to another’s trademark.

Other jurisdictions, such as the United States, do not recognize an absolute right to use one’s personal name as a trade name, such as when a use is confusingly similar to a famous mark associated with another source. Thus, for example, in the United States an individual with the last name McDonald has no absolute right to use his or her personal name in connection with fast-food restaurant services, just as an individual whose last name is Marriott has no absolute right to use his or her personal name in connection with hotel services. Such users may still have a right to identify themselves personally in the context of commercial dealings, however, as long as such identifications do not create a likelihood of confusion.

4. What is nominative fair use?

“Nominative fair use” means the use of another’s trademark to refer to the genuine goods or services associated with the mark. The term “nominative” reflects that the mark generally is the most informative name for the specific goods or services intended to be referenced. As explained by one U.S. federal court of appeals:

With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute, and a problem closely related to genericity and descriptiveness is presented when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.

New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).

Nominative fair use generally is permissible as long as (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.

Nominative fair use generally applies to comparative advertising, parody and noncommercial use of trademarks in academic articles, media reports, etc. In Europe, use in comparative advertising must comply with the Comparative Advertising Directive (Directive 2006/114/EC of 12 December 2006 Concerning Misleading and Comparative Advertising).

5. Is the concept of fair use universally recognized by that name?

No. Some countries, including Argentina, Hong Kong SAR, Japan, Malaysia, Mexico and the Philippines, may not explicitly refer to the concept of “fair use” in case law or statutes, yet they recognize legal theories similar to fair use.

6. How are fair use, nominative fair use and analogous concepts applied in practice?

In general, the following uses are considered fair use:

  • Use in comparative advertising that is an opinion (or a truthful fact). Example:
    • Statement that “BRAND X tastes better than BRAND Z.”
  • Use to advertise goods that are being sold or repaired, or for which a product is suitable for use. Examples:
    • Statement by a repair shop: “We repair ROLLS ROYCE cars.”
    • Use of “iPhone” in non-stylized form on packaging for phone cases to indicate that it is usable with iPhone 6.

Below are additional illustrative examples from cases in selected countries.

Fair Use

  • Photographer’s use of the BARBIE mark and trade dress constituted nominative fair use, as his work was a criticism and parody of “Barbie.” Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 810 (9th Cir. 2003). (USA)
  • Motorcycle manufacturer Harley Davidson’s use of the phrase “ride hard” was fair use and did not infringe apparel company’s trademark RIDE HARD. Bell v. Harley Davidson Motor Co., 539 F. Supp. 2d 1249, 1255 (S.D. Cal. 2008). (USA)
  • Use of the term “love potion” on fragrance products was fair use of LOVE POTION mark used on perfume product. Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416, 420 (S.D.N.Y. 2008), aff’d, 329 F. App’x 333 (2d Cir. 2009). (USA)
  • Competitor’s use of the words “Betty Boop” as a prominent feature on its products was fair use, as it was extremely unlikely that a prospective consumer would understand those words as identifying the source of the goods rather than merely naming the character shown on the products. Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 925 F. Supp. 2d 1067 (C.D. Cal. 2012). (USA)
  • Newspaper publisher’s use of headline “The joy of six” on memorabilia related to Chicago Bulls’ sixth championship was a descriptive, non-trademark use of that phrase, and thus supported publisher’s fair use defense to claim of trademark infringement, since phrase was not used to identify newspaper as source of memorabilia but to describe the happiness associated with the six championships. Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001). (USA)
  • Use of “MAO SHAN” (茅山) by a restaurant did not infringe the registered mark MAO SHAN owned by another because “Mao Shan” is a generic name, the restaurant was located in Mao Shan and the restaurant used “Mao Shan” in good faith. (China)
  • Use of the words “Happy Wedding” on bags for wedding presents considered a message to the wedding couples, which distinguished the words from the goods associated with the trademark HAPPY WEDDING. (Japan)
  • A label indicating “containing Takara genuine sweet cooking rice wine” on “soup stock” considered descriptive fair use because it merely indicated the raw material used in the soup. (Japan)

NOT Fair Use

  • Oprah Winfrey and Harp Studios’ use of the term “Own Your Power” was not fair use of the registered service mark OWN YOUR POWER. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013). (USA)
  • Radio station’s use of university’s marks GONZAGA UNIVERSITY, GONZAGA UNIVERSITY BULLDOGS and ZAGS did not constitute nominative fair use because there were numerous ways in which the radio station could have entertained its Gonzaga fans without infringing plaintiff’s trademark(s). Corp. of Gonzaga Univiversity v. Pendleton Enterprises, LLC, No. CV-14-0093-LRS, 2014 WL 4792032, at *8 (E.D. Wash. Sept. 25, 2014). (USA)
  • Discrediting a claimant’s trademarks for therapeutic dancing on a TV show in a way that ridiculed the trademark, affecting its reputation, seriousness and/or attractiveness, was considered contrary to good faith and, therefore, unlawful. (Argentina)

Additional INTA Resources

Trademark Use Fact Sheet

Figurative Use (United States) Fact Sheet

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