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When You Need Another Person’s Trademark: Fair Use in Trademark Law

Modern companies understand the importance of protecting their brand and reputation, and as such are often quick to dispatch a cease and desist letter as soon as they spot even a hint of potential trademark infringement. Consequently, many people are often hesitant to use someone else’s trademark, preferring to avoid the hassle of dealing with a threat of litigation. However, there are many times when companies can get a real advantage from using someone else’s mark, and there are situations where the trademark statute allows them to do it because it benefits consumers.

People may use trademarks that they do not own provided that they “use them fairly.” That requirement is often abbreviated as fair use to match up with a similar doctrine in copyright law. There are two broad situations where the law recognizes a fair use defense to trademark infringement: descriptive fair use and nominative fair use.

Descriptive Fair Use

Descriptive fair use occurs when a company wants to use a competitor’s trademark not as a trademark but to describe a product. That sounds a bit abstract, but it is easy to understand by example. Imagine a hypothetical air freshener company, “PineFresh.” A competing company would not be allowed to sell their own PineFresh air fresheners, but they would likely be allowed to market their air fresheners as having “a pine fresh scent.”

Qualifying for descriptive fair use also requires the alleged infringer to be using the mark in good faith. Good faith is a broad legal term that essentially connotes honesty and fair play. For instance, suppose PineFresh had a distinctive color scheme for their trademark in the above example. If the alleged infringer copied that color scheme in addition to using the words “pine fresh” then it would start to look more like they were acting in bad faith by trying to trick consumers into thinking they were purchasing actual PineFresh air fresheners.

Nominative Fair Use

The other common class of fair use defenses occurs when people use a trademark to refer to another company’s goods or services, known as nominative fair use because they are naming the company. This can show up in a variety of contexts. One of the most famous cases on the subject comes from California. A newspaper held a poll related to the band “New Kids on the Block,” using the band’s trademarked name. The band sued the paper for infringement, but lost. The court held that the newspaper was allowed to refer to the band by their name because there was no other way to do it, they did not imply any sort of affiliation with the band, and they only used as much of the band’s trademark as was necessary to refer to them.

A similar idea arises in the context of advertising between competitors. Although not always referred to as nominative fair use, courts use the same basic ideas if a company wants to engage in comparative advertising, ads touting the benefits of their product over one of their competitors.

Fair use is a nuanced defense that often turns of the specific facts of a given case. If your company has received a cease and desist letter and you believe you may qualify for one of these defenses, contact a Florida trademark attorney at Pike & Lustig, LLP today.

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