"Fair use" is a legal doctrine that lets people copy or otherwise use other people's intellectual property without permission under certain circumstances. You might be familiar with the fair use defense for copyright, but not everyone knows that the defense also applies to trademark law.
Under trademark law's fair use doctrine, you can use another owner's trademark without their permission for purposes such as comparative advertising, news reports, parodies, and criticisms.
Take an online video review of someone's recent trip to Disney World. In their video, they talk about shopping in Star Wars Galaxy's Edge while drinking a Starbucks coffee. They've used the trademarks "Star Wars Galaxy's Edge" and "Starbucks" in their review without the permission of the respective trademark owners. But the online reviewer is, in all likelihood, legally allowed to name Star Wars Galaxy's Edge and Starbucks under the concept of fair use.
This article breaks down the rights of trademark owners, and it explains when you can use another owner's trademark without their permission under the fair use doctrine.
A trademark is a distinctive word, phrase, design, or combination of these features that's used to identify and distinguish products or services in the marketplace. A trademark indicates the source of the particular goods or services.
When you register a trademark with the United States Patent and Trademark Office (USPTO), you (as the trademark owner) are granted the right to exclusively use your trademark across the United States. In other words, only you can use your mark, and you can prevent others from illegally using your mark.
When someone else uses your mark without permission, they're infringing on or diluting your trademark, or both.
Trademark infringement is the unauthorized use of a trademark in a way that would likely confuse or deceive customers as to the source or origin of the connected goods or services.
For example, making electronic gadgets and stamping Apple's recognizable fruit-shaped logo onto your products would be fairly obvious trademark infringement. Customers would likely be confused about the origin of the goods, and you would essentially be profiting from the goodwill that Apple has generated over many decades.
Put differently, consumers would mistakenly buy your product assuming it was the "real" Apple product. In such a situation, Apple could sue for trademark infringement. Not only could it win a court order requiring you to stop infringing on their mark, but it could also win money damages.
Trademark dilution is less common than trademark infringement because it's only recognized for owners of famous marks, like Amazon or Google (or Apple). Trademark dilution is when someone uses a mark that's similar to or the same as a famous mark in a way that diminishes the value or strength of the famous mark.
There are two kinds of trademark dilution:
When you use someone's mark without their permission in a way that infringes on or dilutes their mark, then your use is usually unlawful. The trademark owner can normally sue you to stop you from using their mark, and they can collect money damages.
But there are circumstances when you can lawfully use someone else's mark in a way that infringes on or dilutes it. The fair use doctrine provides several defenses and exceptions to using another's trademark without their permission.
If someone's use of a trademark is considered "fair," then there might not be any kind of dispute over it. If there's a dispute, then the user can hold up the defense of fair use.
Federal law—specifically the Lanham Act—and the courts have defined what's considered fair use. They allow for two main types of fair use: descriptive fair use and nominative fair use.
Descriptive fair use is when you use someone else's trademark as a descriptor and not as a trademark. It can be used as a defense against trademark infringement and dilution. (15 U.S.C. §§ 1115, 1125 (2023).)
With descriptive fair use, you're not using the trademark to indicate the source of the connected goods or services, which means the trademark isn't actually functioning as a trademark.
For instance, if your local ice cream shop is called "Cold Cream," you could probably still use "cold cream" to describe your homemade ice cream.
Descriptive fair use only applies to what are considered descriptive trademarks. A trademark is descriptive if it describes a feature or characteristic of the goods or services—like an ingredient, quality, function, purpose, or use—that are sold under the mark. Going back to our example, the trademark "Cold Cream" is descriptive because it includes a characteristic (cold) and an ingredient (cream) of ice cream.
Descriptive trademarks fall under the category of nondistinctive trademarks. The law provides less protection for nondistinctive trademarks. But a descriptive trademark is still protected as a trademark.
Consider another example. Suppose you manufacture and sell toy building blocks shaped as bricks and figurines. But someone else owns the descriptive trademark "Building Bricks" for the same kind of product. You could still describe your product as "building bricks" in your advertising because those words happen to characterize your product.
But you wouldn't be able to name your brand of blocks "Building Bricks" because that name is already taken as a trademark. Nor would you be able to name your brand "Lego" because that mark isn't descriptive of your goods and only functions as a trademark.
Nominative fair use is when you use someone else's trademark to identify the trademark owner's goods or services. You're not using another's trademark to describe your own goods or services, but instead to describe theirs.
Nominative fair use can be used as a defense against trademark dilution. People who are sued for trademark dilution can sometimes point to a fair use exception in the Lanham Act, which we discuss below. (15 U.S.C. §1125)(c)(3)(2023).)
Courts have said that nominative fair use can also sometimes be used as a defense against trademark infringement. When someone is sued for trademark infringement, the court has to weigh the user's First Amendment rights against the trademark owner's intellectual property rights. The courts will typically apply a test—a set of factors or requirements—to the case.
To determine whether the nominative fair use defense applies to your case, many courts look to see if your situation meets three requirements:
Here's a trademark scenario where nominative fair use could be a defense. Suppose you're writing a review for baby products and you use "Pampers diapers" to refer to diapers made by Pampers. Most courts would probably agree that your use would be considered nominative fair use. You're using the trademark "Pampers" to refer to the diapers that are sold under that brand and your use likely wouldn't confuse customers.
In terms of our Pampers example:
Usually, if you can meet these three requirements (or a slightly different set of requirements used by your court), your use will likely be considered fair.
The Lanham Act and the courts have recognized a number of situations where nominative fair use can apply to claims of trademark infringement and trademark dilution.
Under trademark law, you're generally permitted to use another's trademark as a means for comparison in your advertisements. So, you could probably run a television advertisement that compares your brand of product to another product brand while specifically naming your competitor.
For instance, if you sell tennis shoes, then you could compare the price and quality of your tennis shoes to those of Reebok. But your use of the Reebok trademark would need to follow the three requirements for the nominative fair use defense.
First, it would have to be the case that consumers wouldn't be able to immediately recognize the competitor tennis shoes as Reebok brand without your identifying them as such. Second, you would have to use the Reebok mark only as much as necessary to identify the shoe brand. Third, you wouldn't be able to say or imply any connection with or endorsement by Reebok.
You can also use someone else's trademark in a news report or academic work when reporting or commenting on the trademark owner or on the associated goods or services.
Suppose a local news channel runs a story about the nation's rising gas prices. In the broadcast, the reporter lists the average gas prices for Exxon, Chevron, and BP. The reporter and news agency can use the trademarks in their story because their use is for a news report.
Even if one of the gas companies believes that the report has tarnished their brand, the news agency can argue their use was allowed under the nominative fair use defense in the Lanham Act.
If sued for trademark infringement, the news agency would likely need to show how they meet the three requirements listed earlier. The agency would probably need to prove that:
News agencies that use trademarks in their reports or academics that use trademarks in their research or papers are often entitled to the fair use defense.
You're allowed to use someone else's trademark to parody, criticize, or comment on the trademark owner or their products or services. This Lanham Act protection stems from First Amendment principles against punishing or limiting free speech.
In addition, there's one popular school of thought that believes it would be bad public policy to limit people's ability to fairly criticize a certain product or service. The idea is that the public should know if a product on the market isn't good or safe.
So, for example, you can write a negative online review about any delivery pizza chain or critique the latest Marvel and DC films without violating trademark law. (Keep in mind that the right to mention a trademark in this context doesn't mean that you have the right to make any defamatory statements about the product or its owner.)
The Lanham Act provides an automatic defense for dilution claims for parodies, criticisms, and commentary that would apply to your fair use review of your pizza chain or the superhero films.
If the trademark holder claimed you infringed (rather than diluted) their trademark, the court would separately need to determine whether your use of the trademarks in your reviews is fair use. Instead of using the three-requirement test in this sort of situation, many courts have applied the Rogers test. The test applies to "expressive works" or works with artistic value—like, some reviews, parodies, and political and social commentary.
If your work is considered expressive and the court uses the Rogers test, then your use will need to meet two requirements for the nominative fair use defense to apply:
For example, suppose you make a parody short film called "The Real Batman." The film features a vigilante that dresses up like a superhero, and it makes fun of the vigilante's detective skills and bat obsession. DC Comics sues for trademark infringement and the court applies the Rogers test.
Applying the Rogers test to our example:
So, your parody would probably be considered nominative fair use and the court would likely dismiss DC's infringement claim.
If you're considering using another person's trademark without their permission and are unsure if your use qualifies as fair use, you should reach out to a trademark attorney. They can help you determine whether your specific use is lawful and provide guidance on what qualifies as fair use.
If you've received a cease-and-desist letter from a trademark owner, you should also contact a trademark lawyer. They'll help you determine if you're protected under fair use. An attorney can also respond to the letter on your behalf.
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