Duhaime's Law Dictionary


Nominative Fair Use Definition:

The use of another's trademark to identify a thing and does not imply current sponsorship or endorsement.

Related Terms: Trademark, Fair Use

In New Kids on the Block, Justice Kuzinsky of the United States Court of Appeals used these words:

"[W]e may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark — where the only word reasonably available to describe a particular thing is pressed into service — lies outside the strictures of trademark law. Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth....

"[W]here the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."

But in Century 21, Justice Renbdell of the same Court wrote:

"Nominative fair use is said to occur when the alleged infringer uses the trademark holder's product, even if the alleged infringer's ultimate goal is to describe his own product. Nominative fair use also occurs if the only practical way to refer to something is to use the trademarked term....

"[W]e adopt a two-step approach in nominative fair use cases. The plaintiff must first prove that confusion is likely due to the defendant's use of plaintiff's mark.... Once plaintiff has met its burden of proving that confusion is likely, the burden then shifts to defendant to show that its nominative use of plaintiff's mark is nonetheless fair. To demonstrate fairness, the defendant must satisfy a three-pronged nominative fair use test ... (1) that the use of plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service; (2) that the defendant uses only so much of the plaintiff's mark as is necessary to describe plaintiff's product; and (3) that the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services."

And in 2010, the US Court of Appeals in Tiffany v eBay:

"The doctrine of nominative fair use allows a defendant to use a plaintiff's trademark to identify the plaintiff's goods so long as there is no likelihood of confusion about the source of the defendant's product or the mark-holder's sponsorship or affiliation....

"To fall within the protection, according to that court: first, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."

In Merck v Mediplan, Justice Chin of the United States District Court wrote:

"A defendant may use a plaintiffs trademark to identify the plaintiffs goods so long as there is no likelihood of confusion about the source of defendant's product or the mark-holder's sponsorship or affiliation. The nominative fair use defense is proven when first, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.... A common example of nominative use arises in comparative advertising."

In Canadian Trademark Law, Teresa Scassa wrote:

"While no such nominative fair use doctrine expressly exists in Canadian law, it is clear that such activity would not violate §19 (of the Trade-marks Act). If the plaintiff's mark is used to correctly identify wares for sale from the defendant's site, such use is not as a trademark - in other words, the mark is not being used so as to distinguish the wares of the defendant from those of others. As a matter of principle, it cannot be trademark infringement to make an accurate reference to wares or services."

REFERENCES:

  • Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F. 3d 211 (2005)
  • Merck & Co. v. Mediplan Health Consulting Inc, 425 F. Supp. 2d 402 (2006)
  • New Kids on the Block v. New America Pub., Inc., 971 F. 2d 302 (1992)
  • Scassa, Trersa, Canadian Trademark Law (Toronto: LexisNexis, 2010), page 419
  • Tiffany (NJ) Inc. v. eBay Inc., 600 F. 3d 93 (2010)
  • Trade-marks ActR.S.C. 1985, c. T-13

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