When Unauthorized Use Is Not Trademark Infringement

Abhishek Kumar

30 Mar, 2024

Trademarks are vital for businesses to establish brand identity and safeguard intellectual property. While unauthorized trademark use typically constitutes trademark infringement, certain exceptions exist where such usage may be considered legitimate. In this blog post, we will delve into the instances when unauthorized use does not amount to trademark infringement, shedding light on relevant exceptions and analyzing noteworthy case studies.

Nominative Fair Use:

Nominative fair use allows using a trademarked name or logo to describe or refer to the actual goods or services associated with the trademark. This exception enables businesses, journalists, and commentators to use trademarks in a non-infringing manner for purposes such as comparative advertising, commentary, criticism, and parody. The key factors considered in determining nominative fair use are:

1. Necessity: The trademarked name or logo must be essential to identify the product or service being discussed accurately.
2. Non-Endorsement: The use should not imply endorsement or affiliation with the trademark owner.
3. Limited Use: The scope of use should be reasonable and not exceed what is necessary for the intended purpose.

Case Study: In the case of New Kids on the Block v. News America Publishing Inc., the court held that the use of the band’s name and logo in a magazine article reporting on their reunion concert fell under nominative fair use, as it accurately identified the subject matter without implying sponsorship or endorsement.

Descriptive Fair Use:

Descriptive fair use allows using a descriptive term that is a registered trademark for its primary illustrative purpose. This exception recognizes that specific terms are necessary for accurate and informative communication, even if they are also trademarked¹. The key factors considered in determining descriptive fair use are:

1. Descriptive Nature: The trademarked term should have a primary descriptive meaning rather than serving as a source identifier.
2. Good Faith: The use should be made in good faith to convey factual information about the product or service.
3. No Likelihood of Confusion: The user should avoid creating confusion among consumers regarding the source of the goods or services.

Case Study: In the case of Bosley Medical Institute Inc. v. Kremer, the court found that the defendant’s use of the trademark “Bosley” to describe his negative experience with the hair restoration company was a permissible descriptive fair use, as it accurately conveyed factual information without creating confusion.

Parody and Satire:

Parody and satire are forms of artistic expression that often involve trademarks. Courts generally allow the unauthorized use of a trademark for parody or satire purposes, provided that it does not mislead consumers or dilute the distinctive nature of the mark. This exception recognizes the importance of free speech and artistic creativity.

Case Study: In the famous case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, the court ruled in favour of Haute Diggity Dog. This company produced dog toys mimicking Louis Vuitton handbags. The court considered the use a protected parody, as it humorously commented on the luxury brand without creating confusion or diluting the trademark’s distinctiveness.

Conclusion:

While unauthorized trademark use generally constitutes trademark infringement, exceptions such as nominative fair use, descriptive fair use, and parody/satire provide leeway for legitimate services. It is essential to understand these exceptions and consider the specific circumstances and factors involved to determine whether an unauthorized use of a trademark falls within the realm of infringement.

FAQs

1. https://www.uspto.gov/trademarks