That's Not Fair... Or Is It? The Concept Of Trademark Fair Use

Sunday, January 1, 2006 - 00:00

"But why can't we stop them from using our mark?" is a question often asked of trademark attorneys. As with most areas of the law, the answer is rarely simple. The trademark owner is given certain exclusive rights, but is not granted an absolute monopoly over the mark. The rights are limited since the principal purpose of trademark law is to prevent consumers from being confused by misuse of a mark. Accordingly, the key limitation on exclusivity in a mark is the need for the owner to establish a likelihood of confusion. Another limitation is the concept of fair use. Consider the situation where a party wants to use another's trademark in an incidental manner, or not as a mark but in its regular language, descriptive sense. The fair use doctrine addresses these issues.

Given the number of scenarios in which the fair use concept may be applicable, it is valuable for businesses to understand the parameters of the doctrine. While many clients are aware of the concept of fair use for copyrighted works, fewer have an understanding of its applicability under trademark law. Moreover, there are different types of trademark fair use. In this article we will discuss the two principal categories: (1) where a trademark is used simply to describe a product or service, and (2) where it is used in its "nominative" sense, i.e., by someone other than the trademark owner, to identify the trademark owner's product or service. We will first review the descriptive fair use exception, which is created by federal statute, including the recent U.S. Supreme Court case, KP Permanent Make-up, Inc. v. Lasting Impression I, Inc.1 We will then look at the judicially created nominative fair use exception. Finally, we will touch on the fair use doctrine's impact upon trademark owners, businesses selecting a new mark, and parties who wish to use another party's trademark.

Descriptive Fair Use

Section 33 of the Lanham Act2 provides a safe harbor for a potential trademark infringer where "the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark...of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." Under this so called statutory "fair use" provision, also known as classic fair use, a defendant may assert as an affirmative defense that its use of a certain designation, which is identical or closely similar to the claimant's trademark, merely serves to describe the defendant's goods or services. The doctrine was considered in the following illustrative cases:

  • The Second Circuit held that plaintiff's trademark registration for SEALED WITH A KISS for lip gloss did not preclude defendant's use of the tagline "Seal it with a Kiss" in connection with an in-store promotion for its Cutex lipsticks.3 Shoppers were encouraged to try Cutex lipstick and then kiss a complimentary postcard which they could mail to a loved one. The Court held that "the phrase conveys the instruction to seal by kissing the complimentary postcard to signify the amorous sentiment conveyed to the recipient of the cardÉ[the words] are surely used in their descriptive sense."4

  • The Southern District of New York held that plaintiff's trademark registration for LOOKS LIKE A PUMP, FEELS LIKE A SNEAKER for shoes did not bar defendant from advertising its competing shoes using the descriptive language "Feels like a sneaker." The court stated that the line "essentially restates the key selling claim of defendant's product - that the [shoe] was designed specifically to incorporate the comfort of athletic shoes.5

  • In a case that did not find fair use, the plaintiff's trademark registration for THIRST AID for soft drinks barred Gatorade's use of "Gatorade is Thirst Aid for That Deep Down Body Thirst."6 The Court noted that THIRST AID was used more prominently than GATORADE in some of the advertisements and that the rhyming quality of "Gatorade" and "Thirst Aid" further enhanced the association between the two terms.
  • The Supreme Court

    Is a party who pleads the affirmative defense of fair use required to prove that consumers will not be confused in order to sustain the defense? In December 2004, the U.S. Supreme Court, which rarely decides trademark cases, considered the question in KP Permanent Make-up. It resolved a split in the circuits and unanimously answered the question with a resounding "No."

    The parties in the Supreme Court case were direct competitors in the permanent makeup (cosmetic tattooing) industry. KP Permanent Make-Up used the term "micro color" in describing its product, and Lasting Impression objected on the basis of its trademark registration for MICRO COLORS for its competing line of permanent make-up pigments. The Ninth Circuit took the view that there could be no fair use where consumer confusion was likely.

    The Supreme Court held that a defendant asserting the statutory fair use defense has no independent burden to negate likelihood of confusion. Once a plaintiff has carried its burden of demonstrating likelihood of confusion, the defendant can rebut that evidence, or establish the affirmative defense of fair use (or both). The Supreme Court noted that contrary to the Ninth Circuit's view, fair use can exist even if there is some degree of consumer confusion. Why would Congress carve out an exception to trademark infringement, the Court asked, if it could only be applied where a trademark is not likely to be infringed?7 But, the Court did note that the level of confusion should be a factor in determining whether the defendant's use is in fact fair (remanding the case for consideration of this issue by the Ninth Circuit).

    While the full story has yet to be written with regard to how much public confusion must result to invalidate a fair use defense, the Permanent Make-up case squarely supports the vitality of the trademark fair use defense as it pertains to descriptive marks.

    Nominative Fair Use

    A party makes a nominative use where it uses a mark to identify the trademark owner's goods or services, rather than the defendant's goods or services. Where a defendant makes a nominative use, the classic fair use argument that consumers will not associate the words used with the trademark holder or its product is inapplicable; the party making the use intends for the public to associate the mark with the owner. Nominative uses are necessary because in some instances it is impossible to identify a company, product or service without using the relevant trademark.8 The question for a party contemplating using a mark in such a way becomes "How can I use a trademark without implying affiliation with its trademark owner?"

    The concept of nominative fair use was first articulated in the Ninth Circuit case, New Kids on the Block v. News America Publishing, Inc.,9 involving the then-popular music group. As New Kids mania swept the nation, the USA Today and Star newspapers advertised a vote via a 900 phone number to determine which New Kid was the sexiest and most popular.10 The Ninth Circuit was asked to consider a claim by the New Kids that the newspaper poll implied an affiliation with or sponsorship by the group. Fashioning the following three-part test, the court determined that the poll and the advertisements were protected nominative uses of the New Kids trademark.

    1. The product or service in question cannot be readily identified without use of the trademark;

    2. Only so much of the mark as is reasonably necessary to identify the product or service is used (with the court suggesting that using a logo with the name may go beyond the bounds); and

    3. The user does nothing that would suggest sponsorship or endorsement by the trademark holder.11

    The Ninth Circuit applied its New Kids test in subsequent cases to determine whether a nominative trademark fair use defense was appropriate. In Playboy Enterprises, Inc. v. Welles, Playboy protested the use of its trademarks PLAYBOY, PLAYMATE OF THE YEAR, and PMOY by former Playmate of the Year Terri Welles on her personal web-site.12 The court held that use of the marks as headlines and meta-tags on the web-site was a protected nominative use because a readily available non-trademark substitute for the term PLAYMATE OF THE YEAR did not exist and Welles' use did not suggest sponsorship by Playboy. However, expansive 'wallpaper' use of PMOY '81 failed the first prong of the nominative use test as it was unnecessary to identify Welles.

    In Brother Records, Inc. v. Jardine, the Ninth Circuit held that the defendant, Jardine, could not avail himself of the trademark nominative fair use defense because although he satisfied the first two prongs of the New Kids test, he violated the third factor.13 The defendant, a founding member of the Beach Boys, advertised his performances with children of Brian Wilson, another founding member, using the name "Beach Boys Family And Friends." The Court noted that Jardine's promotional materials displayed 'The Beach Boys' more prominently and boldly than 'Family and Friends,' suggesting sponsorship by the Beach Boys.

    Although Permanent Make-up involved descriptive fair use, the decision has been applied very recently to nominative fair use situations. In October 2005, the Third Circuit considered a nominative use defense in Century 21 Real Estate Corp. v. LendingTree, Inc., a case which involved claims by Century 21 that LendingTree advertising improperly suggested Century 21 was affiliated with LendingTree. In adopting a refined version of the Ninth Circuit's nominative use test, the Third Circuit gave deference to Permanent Make-up in requiring that plaintiff prove confusion is likely before beginning analysis of defendant's nominative use defense.14


    It is clear that the trademark fair use doctrine, both "classic" fair use and nominative fair use, plays a critical role in striking the necessary balance between the extremes of allowing complete control over a term by a single entity and allowing unfettered use by others.

    An understanding of the trademark fair use defense is instructive for those who currently own trademarks as well as those who are considering adopting new marks. A mark comprising common wording may still be protectable as a trademark. However, the trademark owner needs to recognize that another party may use that mark or a close variation in describing its own products. Finally, when considering using someone else's trademark, whether to describe your product or to identify the trademark owner's product, make sure the use complies with established fair use requirements.

    1 543 U.S. 111, 160 L.Ed.2d 440 (2004).
    2 15 U.S.C. 1115(b)(4).
    3 Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997).
    4 Id. at 30.
    5 The United States Shoe Corp. v. Brown Group, Inc ., 740 F. Supp. 196, 199 (S.D.N.Y. 1990); aff'd, 923 F.2d 844 (2d Cir. 1990).
    6 Sands, Taylor & Wood Co. v. Quaker Oats Co ., 978 F.2d 947 (7th Cir. 1992); cert. denied, 507 U.S. 1042 (1993).
    7 KP Permanent Makeup, 160 L.Ed.2d at 450.
    8 Comparative advertising, which has been considered a type of nominative use, is outside the scope of this article.
    9 New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
    10 The actual poll questions were "New Kids on the Block are pop's hottest group. Which of the five is your fave? Or are they a turn off?" (USA Today) and "Which of the New Kids on the Block would you most like to move next door? STAR wants to know which cool New Kid is the hottest with our readers." (Star)
    11 New Kids, 971 F.2d at 308.
    12 Playboy Enterprises, Inc. v. Terri Welles, 279 F.3d 796 (9th Cir. 2002).
    13 Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003).
    14 Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3d Cir. Oct. 11, 2005).

    Jeffrey C. Katz is a Partner in the Intellectual Property Department of New York-based Davis & Gilbert LLP, where he represents leading companies and worldwide advertising agencies in intellectual property matters. The author gratefully acknowledges the assistance of his colleagues, Joy Wildes and Brooke Erdos Singer, Counsel, and Peter Welch, Associate, in the preparation of this article.

    Please email the author at with questions about this article.