Trademark Fair Use: Lessons from Landmark Cases and Examples

Trademark fair use is a legal doctrine that allows for the use of a trademark under certain conditions without constituting trademark infringement. This doctrine balances the rights of trademark owners with the public interest in free expression and fair competition. There are two main types of trademark fair use: descriptive fair use and nominative fair use.

Trademark Fair Use to Avoid Liability for Infringement Damages

Correctly analyzing trademark fair use is crucial because if the fair use defense is not available and trademark infringement is proven, the infringing party can be liable for several types of damages. These damages include actual damages, which compensate the trademark owner for any direct financial loss caused by the infringement. The infringing party may also be required to pay the trademark owner’s lost profits, which represent the income the trademark owner would have earned if the infringement had not occurred. Additionally, the infringer can be liable for statutory damages, especially in cases involving counterfeit goods, providing a set amount of damages per type of violation. In some instances, the court may award treble damages, tripling the amount of actual damages as a punitive measure against willful infringement. Furthermore, the infringer might be responsible for the trademark owner’s legal fees and court costs, adding a significant financial burden. This list of potential liabilities underscores the importance of thorough and accurate analysis of trademark fair use to avoid substantial financial consequences and legal repercussions.

Descriptive Fair Use

Descriptive fair use occurs when a trademark is used in good faith to describe the goods or services of the user, rather than to indicate the source of those goods or services. This type of fair use applies when the trademarked term is used in its ordinary, descriptive sense. For example, using the term “apple” to describe the fruit would be considered descriptive fair use, even though “Apple” is a registered trademark for the technology company.

According to U.S. Trademark Law under the Lanham Act, Title 15 of the United States Code, the primary U.S. trademark statute, a descriptive use is permissible if it is used:

• In good faith
• Descriptively, and
• Not as a trademark

Nominative Fair Use

Nominative fair use applies when a trademark is used to refer to the trademarked product or service itself, particularly when there is no other way to refer to it without using the trademark. This type of fair use typically occurs in contexts such as news reporting, commentary, criticism, and comparative advertising.

For a use to qualify as nominative fair use, it generally must meet the following criteria:

1. The product or service in question must not be readily identifiable without use of the trademark.
2. Only as much of the mark as necessary for the identification should be used.
3. The use should not imply sponsorship or endorsement by the trademark holder.

Here are three current precedent cases in the United States that address trademark fair use:

1. New Kids on the Block v. News America Publishing, Inc. (1992): This case established the nominative fair use test. The court allowed the use of the band’s name in a poll about the band conducted by a newspaper, ruling that there was no other way to refer to the band without using its trademarked name​..
2. K-P Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004): The U.S. Supreme Court held that a party using a trademark descriptively does not have to prove the absence of consumer confusion for the fair use defense to apply. Instead, the burden of proving likelihood of confusion remains with the trademark holder​ (FindLaw)​.
3. Jack Daniel’s Properties, Inc. v. VIP Products, LLC (2023) In this case, the Supreme Court ruled on the limits of the parody defense in trademark claims. VIP Products made a dog toy resembling a Jack Daniel’s whiskey bottle with humorous modifications. Jack Daniel’s sued for trademark infringement and dilution by tarnishment. The court found that the Rogers test, which often protects expressive works, did not apply because VIP used the parody mark to designate the source of its own goods. This decision clarifies that the fair use defense does not apply when a mark is used as a source identifier, even in parodies​
4. Rolex Watch USA, Inc. v. Beckertime, LLC (2024) This case involved Beckertime selling pre-owned Rolex watches with some original and some aftermarket parts. Rolex sued for trademark infringement, claiming that Beckertime’s use of the Rolex mark on these modified products constituted misuse. The court examined whether Beckertime’s actions fell under fair use. The decision reinforced that fair use must not mislead consumers regarding the origin or authenticity of the products, highlighting the fine line between permissible resale and trademark infringement​.

These cases illustrate the evolving landscape of trademark fair use and the nuanced legal interpretations that courts apply to determine whether a particular use of a trademark is permissible under the fair use doctrine.

Importance and Impact

Trademark fair use is crucial because it allows individuals and businesses to use descriptive terms and references without fear of legal repercussions, as long as their use does not mislead consumers about the origin or endorsement of the goods or services. This doctrine promotes free speech, comparative advertising, and the dissemination of information.

For further reading and detailed examples, you can refer to resources like the United States Patent and Trademark Office (USPTO) and legal analysis on trademark fair use.

Trademark Fair Use Attorney

Protecting your brand while navigating the complexities of trademark fair use is crucial for your business’s success. Whether you need legal consultation with descriptive or nominative fair use, our expert trademark fair use lawyers at L.A. Tech and Media Law Firm are here to help.

Our experienced attorneys understand the nuances of trademark law and are dedicated to providing you with the strategic legal guidance necessary to safeguard your intellectual property. Don’t leave your brand’s protection to chance—consult with our expert team today and ensure your business is fully equipped to handle any trademark challenges.

Contact us now for a consultation and let our expertise work for you!