As a follow up on the previous article on Trademark Basics, this articles covers the circumstances in which a third party can use a registered trademark. Fair use and nominative use are related but distinct concepts, which are each discussed below.
Trademarks are divided into roughly five categories: generic, descriptive, suggestive, arbitrary and fanciful. Fair use is a doctrine that allows anyone who is using a descriptive term in its primary (descriptive) sense, and not as a way to identify itself as the source of the goods. Registering a descriptive term is a difficult matter, as it must have secondary meaning before it qualifies for registration. “Secondary meaning” (a.k.a. acquired distinctiveness) is a term of art in trademark law referring to situations where the primary significance of the term in the minds of the consuming public is not the product, but the manufacturer. For example, KING SIZE was registered as a trademark by a mail-order clothing retailer in 1972, based on their advertising efforts and continued use since 1947. It was this use that they argued created secondary meaning, which would allow them to register a descriptive trademark. (The USPTO agreed, granting the federal registration, but the court did not not.)
However, regardless of the issues surrounding the registration’s validity, since king-size is descriptive synonym of big-and-tall or plus-sized, third parties were allowed to continue to use the term in descriptive manner. (See, King-Size, Inc. v. Frank’s King Size Clothes, Inc., 547 F. Supp. 1138 – Dist. Court, SD Texas 1982 for more information.)
Bottom line – if your trademark is descriptive, be prepared for third parties to use it in the descriptive sense, as allowed by the fair use doctrine.
When people talk to me about fair use, they are usually actually referring to nominative use. The doctrine of nominative use is invoked when a third party wishes to use another’s trademark to truthfully identify their goods or services for purposes of describing or comparing them. As always, this doctrine is limited such that the third party must avoid creating consumer confusion as to source, sponsorship, affiliation or approval. For example, a drugstore may truthfully compare the potency of its generic product to that of BENADRYL, so long as the advertisement does not imply that the makers of Benadryl are affiliated with the generic product.
Distinct from Copyright Fair Use
Always bear in mind that multiple intellectual property forms may be used to protect a brand or product. Therefore, consideration of trademark fair or nominative use concepts might not be sufficient. It’s also important to determine if any copyrighted material might be used, and if so, if that falls within the copyright fair use doctrine. I’ll discuss copyright fair use in a later article. Stay tuned!