Nominative Fair Use

Topics: Trademark, United States trademark law, Fair use Pages: 8 (2935 words) Published: April 30, 2013
Fair use of trademark—by analyzing the classic fair use and the nominative fair use In trademark law, fair use remains an imprecise, catch-all term for a variety of related doctrines. In other words, fair use is a reasonable and limited use of a trademark without the owner's permission. Fair use is considered an integral part of trademark law, which is the limitation to the owners. Fair use is designed with the purpose of balancing the interests of both the trademark owners and public. Following the lead of some courts, law of fair use was organized into two parts: one covering classic fair use, and a second covering nominative fair use. Generally speaking, classic fair use is descripted under the§1115 (b)(4), Lanham Act. As one of all nine affirmative defenses, classic fair use is also defined as descriptive fair use, which is to describe the goods and services of the trademark owner in good faith, Unlike classic fair use, nominative fair use describes the plaintiff’s trademarked goods or services even though the goal is to describe the defendant’s presumably competing goods or services. Demonstrated in several cases, at least three requirements have to be met judging whether the nominative use exists and could be used as an affirmative defense. This paper will discuss the development of fair use by analyzing cases related and then try to find out the line between these two categories. I. Classic fair use

1. Statutory language
The doctrine of classic fair use has long been recognized at common law. As articulated in the restatement (third) of unfair competition: in an action for infringement of a trademark, trade name, collective mark, or certification mark, it is a defense that 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. A similar doctrine appears under §1115 (b)(4), Lanham Act. (4) the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or 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. A descriptive mark “directly describes something about the goods or services in connection with which it was used as a mark.” J. Thomas McCarthy, McCarthy's Desk Encyclopedia of Intellectual Property, 119 (2d ed.1995); Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1058 n. 19 (9th Cir.1999). “Although descriptive terms generally do not enjoy trademark protection, a descriptive term can be protected provided that it has acquired ‘secondary meaning’ in the minds of consumers, i.e., it has become distinctive of the trademark applicant's goods in commerce.” Similarly, a suggestive mark “conveys an impression of a good but requires the exercise of some imagination and perception to reach a conclusion as to the product's nature,” and therefore carries both a primary descriptive meaning and a secondary trademark meaning. 2. purpose of classic fair use

The fair use concept in trademark law reflects the limited nature of trademark rights, ensuring that trademark rights do not become in gross property rights that result in the removal of words from the language. Classic fair use forbids a trademark registrant from appropriating “a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods”. 3. case law

Classic fair use defense tends to arise when a defendant has used a term to describe its own goods or services, and this term...
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