The nominative fair use defense applies only if the defendant does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a . Your use of a trademark owner's trademark in commentary and criticism on the website itself is largely protected because there is little likelihood of confusion, because use of the trademark may be nominative fair use, and because there is a statutory exemption from dilution claims for criticizing or commenting upon the famous mark owner . Protecting nominative fair use, parody, and other speech-interests by reforming the inconsistent exemptions from trademark liability samuel m duncan.
By ira s sacks and rachel b rudensky in an important decision delineating the boundaries of fair use of another person’s trademark, the second circuit announced a standard by which nominative fair use of a trademark will be evaluated in that circuit in international information systems security certification consortium, inc v security university, llc. This fact sheet is an exclusive inta member benefit if your organization is a member of inta, please use your username and password to login on the upper right . Nominative fair use overview “nominative fair use” is one exception to the general rule that you may not use another’s trademark in commerce that is, use of another’s trademark is allowed under the nominative fair use doctrine.
The legal definition of nominative fair use is the use of another's trademark to identify a thing and does not imply current sponsorship or endorsement. The federal courts of appeals have split as to how to apply the doctrine of nominative fair use in trademark infringement cases last week, the second circuit endorsed the nominative fair use factors used by the ninth and third circuits at the same time, however, the court rejected the manner in . Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. Overview us trademark law under the doctrine of nominative fair use, the defendant uses the plaintiff’s trademark to specifically identify the plaintiff for certain purposes — such as comparative advertising or advertising repair services or replacement parts for the plaintiff’s goods.
Applied inconsistently and confusingly, the nominative fair use analysis has been adopted in some us circuit courts of appeal this confusion is exemplified in the recent second circuit's international information systems security certification consortium v security university decision notably . Called nominative fair use because it is a use of a trademark to name the real owner of the mark, an illustrative example would be an advertisement by the acme travel agency that it books trips to disneyland. The nominative use doctrine allows third party references to trademark owners using the trademarks they chose as their preferred descriptors without a robust and well-functioning nominative use .
Nominative use may be considered to be either related to, or a type of trademark fair use (sometimes called classic fair use or statutory fair use) all trademark fair use doctrines, however classified, are distinct from the fair use doctrine in copyright law . On sunday, february 7, 2016, the carolina panthers® and denver broncos® will take the field for the kickoff of super bowl® 50this is the annual showcase game for the national football league®. This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed to qualify as proper nominative fair use, the use must not create a likelihood of confusion and the use cannot imply sponsorship or endorsement by the trademark owner where none exists.
We’re in the second circuit, so nominative fair use can’t be used to kick out the case on a motion to dismiss strength: registered without requiring a showing of secondary meaning, so presumed inherently distinct (though given what cpne stands for, that’s a little hard to accept) and plausibly has acquired distinctiveness due to use since 1975 and “significant” sums spent on . Ipo board adopts resolution on nominative fair use the theory of nominative fair use in trademark law has been treated differently throughout us circuit courts the tests for nominative fair use, and the parties’ respective burdens, depend greatly on the jurisdiction in which an action is pending. The concept of fair use in copyright law is well known to intellectual property practitioners an analogous concept exists in trademark law, where the use of another's mark is deemed fair. The second circuit on wednesday weighed in for the first time on trademark law’s nominative fair use doctrine, expressly endorsing it but ruling that it cannot be treated as an affirmative .
The second circuit disagrees with sister circuits and rejects arguments that nominative fair use is an affirmative defense that is available even when confusion is likely and that the traditional nominative fair use analysis supplants the polaroid test for likelihood of confusion plaintiff . 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. Nominative fair use definition a defense based on the rule that the unauthorized use of a trademark to describe the mark’s connected goods or services without any suggestion of sponsorship by the trademark owner is not trademark infringement. Similarly, uses that failed the “nominative fair use” test could equally be considered under the statutory fair use defense, and would likely face the same fate for example, in toho co v.