By: Jake Bryant, Law Clerk
The Difference Between Trademark Infringement & Fair Use
According to the United States Patent and Trademark Office, a trademark is a type of intellectual property that takes the form of a symbol, word, phrase, design, or combination thereof which identifies the source of the holder’s goods or services and distinguishes them from the goods and services of others. Generally, federally registered trademarks protect the owner from having their trademark registered by others and helps the owner prevent entities dealing in similar goods or services from using a trademark similar to the owner’s. An unauthorized or unlawful use of another’s trademark is referred to as trademark infringement. However, the use of another’s trademark which would otherwise be considered infringement is lawful if it falls under “fair use.”
What Is “Fair Use?”
Fair use is an exception to the general rules of trademark law and fair use is accepted throughout most of the world. This exception allows an entity to use a trademark owned by another if that trademark falls under “fair use.”
Generally, there are two types of fair use:
- Descriptive Fair Use: Descriptive “fair use” (sometimes called “classic fair use”), allows the user to utilize another’s trademark to describe the user’s goods or services. Trademark use falls under descriptive “fair use” when “the term used by the actor is descriptive or geographically descriptive of the actor’s goods, services, or business, or is the personal name of the actor or a person connected with the actor, and the actor has used the term fairly and in good faith solely to describe the actor’s goods, services, or business or to indicate a connection with the named person.”[1] Essentially, descriptive “fair use” allows one to use the trademark of another when the user does so in order to describe their own goods or services and act in good faith.
- Nominative Fair Use: The second type of “fair use” under trademark law is nominative “fair use”. Nominative “fair use” allows one to use a trademark owned by another in reference to the trademark owner’s goods or services which are associated with that trademark. Many courts have applied what are called the “New Kids Factors” in testing for whether use of another’s trademark falls under nominative “fair use.” The New Kids Factors dictate that the product or service must not be “readily identifiable without use of the trademark.” One may also use the trademark or enough of the trademark as is necessary to identify the product associated with the trademark. While these are permissible under nominative fair use, the user must not do anything which suggests the trademark owner sponsors or endorsed the user.[2]
Examples of Fair Use of Trademarks
Some common examples of “fair use” of trademarks include: the use of a geographical name relating to a business location, use of brand names in comparative advertising, or use of brand names by repair shops stating that their location is suitable to repair that brand’s items. While this is not an exhaustive list of “fair use” trademark uses, these are some common general displays of “fair use.”
As you may have already realized, the relationship between “fair use” and trademark law can be difficult to navigate, which is why you need a trusted legal advisor in your corner. If you need legal assistance related to the use of a specific name, logo, or other identifying feature, contact one of our Lynchburg, Virginia trademark lawyers here at Darkhorse Attorneys to schedule a consult.
[1] Carl Regellman, Trademark Nominative Fair Use: The relevance of the “New Kids on the Block Factors” After The Supreme Court KP Permanent Make-Up v. Lasting Impression Decision, 16 DePaul-LCA J. Art & Ent. L. 1, 4 (2005) (discussing the distinctions between nominative and descriptive fair use in trademark law).
[2] New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992) (discussing the test for whether trademark use falls under “nominative fair use”).
