Fair Use of Trademarks

Figure 4.13. (credit: Kellogg's via Wikimedia Commons / Public domain)

Learning Objectives

After completing this section, you will be able to

• Discuss fair use of trademarks.
• Identify examples of fair use cases.

Not every use of a trademark is infringement.

Individuals and entities may be permitted the fair use of another’s trademark under two conditions. These are known as
nominative fair use
and
classic fair use.

Nominative fair use
covers many occasions on which a party other than the trademark owner is using the mark another party to refer to genuine goods or services. An example of nominative fair use is when an auto repair shop advertises that it repairs BMWs and Hondas. It
is using the mark “Honda” to refer to cars genuinely produced by the Honda Motor Company, and simply asserting that it is able to conduct repairs on those cars. Another example of nominative fair use is use of a competitor’s trademark in comparative
advertising. When Verizon advertises that it has better coverage than AT&T, it is making nominative fair use of AT&T’s mark because it is actually referring to AT&T’s services.

Under nominative fair use, the entity using the trademark is permitted to use only so much of the mark as is necessary to identify the good or service to which it is referring, and cannot imply any sponsorship or endorsement by the
mark holder (unless, of course, the repair shop really is a BMW- or Honda- approved repair facility). Another example is the use of another’s trademark for the purpose of a product review.

Classic fair use
occurs when a trademark is used in good faith for its primary meaning, and no consumer confusion is likely to occur. Classic fair uses typically involve marks that are descriptive. For example, even though Kellogg’s has gained secondary meaning for
the mark “All Bran,” another cereal manufacturer might be able to describe its cereal as “all bran,” if indeed it consists entirely of the hard outer layers of cereal grains.

Although fair use of trademarks is in many ways similar to the fair use of copyrights, there are differences. Under copyright law, you can use a copyright for the purpose of parody. You can also use trademarks for the purpose of
parody, but whoever does so must be very careful to avoid confusion in the marketplace and diluting or tarnishing the trademark in question.

Where this page came from

This page was imported from OpenStax, Introduction to Intellectual Property. Section 4.11 of Introduction to Intellectual Property by David Kline, David Kappos, published by OpenStax (Rice University) under CC BY 4.0; the book is free at openstax.org. Changed here: set as a page on its own.

Nobody has written it yet — it is the source material at a new address, which is why search engines are asked to skip it and why no one earns from it. It is up for grabs: take it on, and it is yours to rewrite and to earn from.