Registering and protecting your trademark from infringement is necessary to maintain your brand identity. Allowing someone else to use your trademark unchecked has the potential to dilute and, in extreme cases, heavily damage the strength and reputation of your brand.
However, there are cases where other brands can use your trademarked assets — and circumstances where you might want to refer to your competitors.
The law does not consider all unsanctioned uses of trademarks as infringement, and there are exceptions when people and businesses can use marks without permission. This exception is known as trademark fair use.
Understanding trademark fair use is essential, both so you can protect your own trademarks as well as avoid infringing on those of others. In this article, we’ll examine trademark fair use, its types, and how to distinguish them from trademark infringement.
What is Trademark Fair Use?
Trademark fair use outlines the exception to trademark rules of use and allows unsanctioned use of trademarks. Under this exception, people and entities can use trademarks, but only in specific instances and ways.
This is important because a trademark is a set of unique, protected identifiers associated with a business or its products. When a company registers a trademark with the United States Patent and Trademark Office (USPTO), the trademarks are legally protected from other businesses’ usage. Because of this protection, other brands need the permission of the trademark owners to use any of their marks.
There are two circumstances under which the unsanctioned usage of trademarks is allowed. They are descriptive fair use and nominative fair use.
Descriptive Fair Use
Some trademarks are essential descriptive words that can’t be avoided when discussing a product. “Buttercream Cakes” is a good example — buttercream is a common term for cake frosting, making it necessary for other bakers to use when describing their products.
While the USPTO tries to prevent trademarking general descriptive terms, some still get approved. The trademark fair use exception allows these words to be used without legal consequences when they describe a product feature or characteristic, like buttercream describing a frosting ingredient.
However, this exception doesn’t permit using the mark to brand another business. While a baker can describe their products as buttercream cakes, naming their business “Buttercream Cakes” would constitute trademark infringement.
Nominative Fair Use
Nominative fair use allows people and brands to use trademarked names when they are used to identify the brand itself. The cases under which this is permitted include comparative advertising, parody, and non-commercial use. In these contexts, the trademarked asset is being used fairly, and the usage is permitted.
For example, journalists can use the trademarked brand name Nike in articles because this is non-commercial. Parody cases are more complex and occur when a trademarked name is used for comedic effect. These cases often end up in court, because the commercial gain in using the trademarked asset is debatable: for example, a raunchy comedy show might be titled Bed, Bath & Beyond the Pale, parodying the trademarked name Bed, Bath & Beyond. This could be determined to be nominative fair use, so long as there is no chance consumers will think that the real Bed, Bath & Beyond is involved in the comedic production.
Comparative advertising cases are relatively simple: if you’re a sneaker brand, you are always permitted to say your shoes are cheaper, lighter, or more durable than Nike sneakers (so long as you’re telling the truth).
In general, nominative fair use is protected under trademark fair use because it considers the First Amendment rights of individuals: the right to freedom of speech.
Trademark Fair Use Examples
Some trademark fair use examples:
- A good example of trademark fair use is in the automobile industry. Auto repair shops catering to a specific car brand can use the brand’s name. A good example is a shop bearing “Mercedes Auto Repairs” or “Mercedes Spare Parts.” The use of Mercedes’ brand name is descriptive to indicate the type of service they offer.
- The 1997 song Barbie Girl by the band Aqua is another example of nominative use. The makers of Barbie, Mattel, took the record label to court for trademark infringement but ultimately lost the case because ‘Barbie’ was being used in an expressive, artistic context.
Criteria For Fair Use
In some cases, differentiating between an infringement and fair use can be challenging. Indeed, these cases often end up in court, as each side attempts to prove or defend itself against trademark infringement.
The following criteria outline key points that differentiate infringement from fair use. If a trademark usage is fair use, it must avoid the following:
- Confusion about the trademarked brand. Its usage should not cause any confusion about the brand.
- A misleading sense of affiliation or association with the trademark owner
- The impression of sponsorship by the trademark owner
If you avoid these three points, you’ll be in good standing when using a trademark.
Wrapping Up
Trademark fair use gives us room to breathe when talking about brands in our daily lives and work. Whether you’re running a Mercedes Garage or writing a blog about trademark fair use, these exceptions keep trademark law practical and prevent big companies from owning common words.
However, trademark law has its gray areas, and what seems like fair use might actually cross a line. The difference between mentioning a brand and infringing on it isn’t always obvious — and mistakes can be expensive.
Before you make assumptions about using another company’s mark, let our Trademark Research team do the legwork. A quick trademark check now beats a lawsuit later.
