Fact Sheet: Protecting a Trademark
Fair Use of Trademarks (Intended for a Non-Legal Audience)
Updated: December 16, 2020
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 to prevent confusion about the source of the goods or services. In some circumstances however, someone may use another party’s trademark if the use is considered a “fair use.” This “fair use” exception is recognized throughout most of the world.
2. What are the types of fair use?
In general, there are two types of fair use: descriptive fair use and nominative fair use.
Descriptive fair use permits use of another’s trademark to describe the user’s products or services, rather than as a trademark to indicate the source of the goods or services. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark. For example, WD-40 Company’s use of the term “inhibitor” was found to be descriptive fair use of the registered mark THE INHIBITOR when used to describe a long-term corrosion inhibitor (WD-40) product.
Nominative fair use permits use of another’s trademark to refer to the trademark owner’s goods and services associated with the mark. 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 as is reasonably necessary to identify the product or service is used; and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. For example, one could refer to “the professional basketball team from Chicago,” but it is simpler and more understandable to say the Chicago Bulls. Here, the trademark is used only to describe the thing rather than to identify its source, and does not imply sponsorship or endorsement. Nominative fair use generally applies to comparative advertising, parody and non-commercial use of trademarks in academic articles, media reports, etc. In Europe, use in comparative advertising must comply with the European Union directive concerning misleading and comparative advertising.
3. What common situations are considered fair use?
Using a geographical name (e.g., a city’s 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. The fair use exception generally permits use of descriptive terms about the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering the service, main raw materials, functions, weight or other characteristics of the goods or services. Care should be taken, however, to ensure that use of another’s mark under this type of fair use is 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.
4. Is the concept of fair use universally recognized by that name?
No. Some countries, including Argentina, Canada, 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. This is also the case with European Union law.
5. What are some additional examples of fair use?
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 an iPhone.
Below are additional examples from cases in select jurisdictions.
- Photographer’s use of the BARBIE mark and trade dress was nominative fair use because his work was a criticism and parody of “Barbie.” (USA)
- Motorcycle manufacturer Harley-Davidson’s use of the phrase “ride hard” was fair use and did not infringe an apparel company’s trademark RIDE HARD. (USA)
- Use of the term “love potion” on fragrance products was fair use of the LOVE POTION mark used on a perfume product. (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. (USA)
- Newspaper publisher’s use of the headline “The joy of six” on memorabilia related to the Chicago Bulls’ sixth championship, was a descriptive, non-trademark use of that phrase, and thus supported the publisher’s fair use defense to a claim of trademark infringement, since the phrase was not used to identify the newspaper as the source of memorabilia but rather to describe the happiness associated with the six championships. (USA)
- Use of “MAO SHAN” (茅山) by a restaurant did not infringe the registered trademark 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 gift bags for wedding presents was considered a message to wedding couples that received the bags, not use of the trademark HAPPY WEDDING. (Japan)
- A label indicating “containing Takara genuine sweet cooking rice wine” on “soup stock” was considered descriptive fair use because it merely indicated the raw material used in the soup stock. (Japan)
- Use of the BMW brand by a third party for the purpose of indicating to the public that he sells, repairs, or maintains BMW vehicles, or even that he is specialized in such activities, will not infringe BMW’s rights provided the mark is not used in such a way as to create the impression that there is a commercial connection (e.g., affiliation) between the third party and the proprietor of the mark. (EU)
- Use of the GILLETTE trademark by a third party, to indicate that its blades are compatible with Gillette’s handles, will not infringe Gillette’s rights, even though the blades are an essential part of the Gillette product (razors) and not a mere accessory. In order to be non-infringing, however, the use must be necessary to indicate the intended purpose of the product and must be made in accordance with honest commercial practices. (EU)
NOT Fair Use
- Oprah Winfrey and Harpo Studios’ use of the term “Own Your Power” was not fair use of the registered service mark OWN YOUR POWER. (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 the plaintiff’s trademarks. (USA)
- Use of well-known trademarks such as TRÉSOR, MIRACLE, ANAÏS‑ANAÏS and NOA, in comparison lists used by marketers of imitation fine fragrances, was not fair use because it gave the marketers an unlawful comparative advertising advantage by allowing them to trade off the reputation of the well-known marks. (EU)
- 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)
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