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Nominative Fair Use

Posted Wednesday, September 30, 2009 by Katie Long

One valid defense to a trademark infringement claim based on likelihood of confusion is the doctrine of fair use. Nominative fair use may occur when the only practical way to refer to a product or service is by using a trademarked term. Classic fair use occurs where a defendant uses another’s trademark to describe his or her own product. The burden of proving likelihood of confusion, even in fair use cases, remains with the plaintiff.

Courts use the following multi-factor test in assessing for likelihood of confusion in fair use cases:
(1) price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(2) length of time the defendant has used the mark without evidence of actual confusion;
(3) intent of the defendant in adopting the mark;
(4) evidence of actual confusion;
(5) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
(6) the extent to which the targets of the parties’ sales efforts are the same;
(7) the relationship of the goods in the minds of consumers because of the similarity of function; and
(8) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market or that he is likely to expand into that market.

Once a plaintiff proves likelihood of confusion, the burden shifts to the defendant to prove that the nominative use of the plaintiff’s mark constitutes fair use. While the circuits do not agree on the exact test, fair use can generally be illustrated by answering the following questions:
(1)Is the use of plaintiff’s mark necessary to describe (a) plaintiff’s product or services and (b) defendants product or service?
(2)Is only so much of plaintiff’s mark used as is necessary to describe plaintiff’s products or services?
(3)Does the defendant’s conduct of language reflect the true and accurate relationship between plaintiff and defendant’s products or services?

If these questions can be answered in the affirmative, use of the plaintiff’s mark will generally be deemed fair use.

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