Fair use defenses in trademark law protect free speech and promote competition. Classic fair use allows descriptive use of terms, while nominative fair use permits necessary references to trademarks. These defenses balance trademark rights with public interest.

Courts consider factors like necessity, good faith, and potential confusion when evaluating fair use claims. Landmark cases have shaped the application of these defenses, ensuring trademarks don't monopolize language or hinder legitimate market communication.

Fair Use Defenses in Trademark Law

Classic vs nominative fair use

• Classic fair use defense
  • Defendant uses descriptive term in primary sense to describe own product or service
  • Not employed as trademark to identify source of goods or services
  • Examples: "micro color" for permanent makeup pigments, "sweet-tart" for cranberry juice flavor
• Nominative fair use defense
  • Defendant uses plaintiff's trademark to refer to plaintiff's product or service
  • Necessary when no other reasonable way exists to identify the product or service
  • Examples: using band name in reader poll, former Playmate referencing "Playboy" title on website
• Key differences
  • Purpose: Descriptive (classic) vs referential (nominative) use
  • Relationship to mark: Own description vs referring to plaintiff's product
  • Necessity: Alternative terms available (classic) vs no practical alternative (nominative)

Case law of fair use defenses

• Classic fair use examples
  • KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004)
    • "Micro color" used to describe permanent makeup pigments
    • Supreme Court ruled some consumer confusion doesn't preclude fair use defense
  • Sunmark, Inc. v. Ocean Spray Cranberries, Inc. (1995)
    • "Sweet-tart" described cranberry juice flavor
    • Court found descriptive use, not trademark use
• Nominative fair use examples
  • New Kids on the Block v. News America Publishing, Inc. (1992)
    • Newspaper used band name in reader poll
    • Ninth Circuit established three-factor test for nominative fair use
  • Playboy Enterprises, Inc. v. Welles (2002)
    • Former Playmate used "Playboy" and "Playmate" on her website
    • Court ruled nominative fair use for necessary reference to past title

Factors in fair use determination

• Classic fair use factors

  • Use descriptive of defendant's goods or services
  • Defendant's good faith intent
  • Prominence and presentation of mark in defendant's use
  • Degree of likely confusion caused by use

• Nominative fair use factors (New Kids on the Block test)

  1. Product not readily identifiable without use of mark
  2. Only so much of mark used as reasonably necessary for identification
  3. No suggestion of endorsement or sponsorship by trademark holder

• Additional considerations

  • Commercial vs non-commercial use
  • First Amendment concerns and expressive uses
  • Competitive relationship between parties

Balance of rights in fair use

• Protecting free speech
  • Allows criticism, commentary, and news reporting using trademarks
  • Prevents monopolization of language by trademark owners
  • Supports parody and artistic expression (political cartoons, satire)
• Promoting competition
  • Permits descriptive use of terms in marketing and advertising
  • Prevents unfair marketplace advantages for trademark owners
  • Allows comparative advertising and product references (side-by-side comparisons)
• Limiting trademark rights
  • Prevents overreach of trademark protection
  • Ensures trademarks serve intended purpose of source identification
  • Balances exclusive rights with public interest in free use of language
• Consumer benefits
  • Increases access to product and service information
  • Facilitates consumer choice through comparative advertising
  • Supports market efficiency by allowing accurate product descriptions (ingredient lists, technical specifications)