If you find yourself in the middle of a trademark infringement dispute, you might want to consider the defense of fair use. This defense can be used in one of two scenarios. The first is under classic fair use, and the second is termed nominative fair use.
Classic fair use occurs when the infringing party uses the trademark holder’s mark to describe the infringer’s own product. To be successful in claiming the classic fair use defense, the infringing party must prove (1) they did not use the mark as a trademark; (2) they used the mark “fairly and in good faith”; and (3) they used the mark only to describe the trademark holder’s goods or services. An important limitation to the classic fair use defense is that it can only be used if there is no likelihood of confusion between the marks at issue.
The other fair use defense you can raise is nominative fair use. Nominative fair use is where the infringing party uses the trademark holder’s mark to describe the trademark holder’s product. To claim the nominative fair use defense, the infringing party must prove (1) the trademark holder’s product is not readily identifiable without use of the trademark; (2) the infringing party only used the mark as much as was reasonably necessary to identify the trademark holder’s product; and (3) the infringing party did not do anything with the mark that would lead a consumer to believe the trademark holder has sponsored or endorsed the infringer’s goods or services. Unlike class fair use, nominative fair use can be used even if there is likelihood of confusion amongst consumers.
Finally, one last positive aspect of this defense: the infringing party raising the fair use defense does not have to prove or disprove the likelihood of confusion argument. That is, the trademark holder must first affirmatively prove that the infringing party’s use of their mark is likely to cause confusion amongst consumers as to the source of the goods or services; only after the they have met that burden must the infringing party raise the fair use defense, and they need not prove there is no likelihood of confusion when raising this defense.
So if you or your company ends up in the middle of a sticky infringement dispute, consider the above defenses. If you qualify for either categories of the fair use defense, there is a good chance you can end the dispute before it really begins.
Authored by Adelee E. Traylor