Fair to Use this Trademark?

This blog post builds on my previous post. This time I will be covering fair use for trademarks instead of copyright. Much like copyright, there are exceptions and limits to what protection owning a trademark can provide you, including what is and is not infringement. Fair use in the trademark space breaks down into two categories. 

The first is descriptive fair use. As Erin covered in an earlier post, trademarks are on a spectrum of distinctiveness. Descriptive marks are on the weaker side of the distinctiveness spectrum, so they generally receive narrower protection. That means others can sometimes use those descriptive marks in the sale of their own goods and services. For example, my hypothetical line of socks can advertise that they are “providing a new balance in comfort and utility” (oh yeah, the bit is still ongoing from my earlier post) while asserting a pretty good defense against trademark infringement claims from a certain shoe company with a descriptive trademark. 

The second is nominative fair use. Federal courts have applied this concept in a few different ways, but the point essentially is that it is not necessarily trademark infringement to use a trademark to identify the specific goods and services originating from the trademark owner. For example, it is not trademark infringement for me to share my opinion that New Balance shoes look awesome. I’m just using the trademark to identify what specific brand of shoes I am talking about. However, it is a closer question if my hypothetical line of socks would use the slogan “fits best with New Balance shoes.” At that point, a court might lean toward finding infringement because of the risk of consumers mistakenly believing through that slogan that my socks came from the shoe company, or that the shoe company somehow sponsored or endorsed my socks. 

A subset of nominative fair use also has to do with protection against trademark infringement when trademarks are used in works of artistic expression. The perhaps most famous case involves dolls and pop music. My fellow millennials (and beyond) likely have Aqua’s 1997 hit “Barbie Girl” forever seared into their memories. What might not be as memorable is that Mattel did not take kindly to the use of its famous brand of dolls in the song’s title or lyrics, and it brought trademark infringement claims against Aqua’s record company. The 9th Circuit held that a combination of nominative fair use and First Amendment protections allows artists to use trademarks in their works, so long as that use does not suggest sponsorship or endorsement. 

Now you might be thinking, “Didn’t I read something in the news about Jack Daniel’s, dog toys, and trademarks recently? When are you going to talk about that?”  

Tune in next time to find out more.