Fair Use is Sweet and Tart - Do these two always go well together?

October 18, 2017

A trademark or service mark is any word, name, phrase, design, symbol, or combination thereof that identifies the source of goods/services. A trademark or service mark distinguishes a provider of goods/services from other providers. Trademark rights can either be acquired through registration – federal or state – or by use.


Once trademark rights are acquired, you – as the owner of your trademark – can protect against trademark infringement. Trademark infringement occurs when another uses your trademark or a confusingly similar mark in commerce without your permission. For example, you have registered the mark “Krispy Kreme” with the United States Patent and Trademark Office in association with donuts and therefore have enforceable trademark rights across the U.S. Yet Margot, who lives halfway across the country, starts using “Krispy Kreeme” to sell her own donuts. Margot is infringing on your trademark rights by using “Krispy Kreeme” to sell her donuts.


But how is this trademark infringement? Margot spells Kreme with two “ee”’s and you only spell Kreme with one “e”. The standard here is “likelihood of confusion.” There is a 7-factor test to determine whether likelihood of confusion exists. But, in short, likelihood of confusion exists when two trademarks are so similar and the goods/services associated with the marks are so similar that consumers would believe the goods/services come from the same source. So, do you think consumers would mistakenly believe that Margot’s donut shop “Krispy Kreeme” is the same or at least associated with your donut business? Probably so. But you should check with a trademark attorney before you make any final determination.


Another piece of information that you should keep in mind is that fair use exists in trademark law just as it exists in copyright law. There are different factors and considerations of course but the overall idea is the same. There are situations in which another can use your mark legally under a fair use exception in a way that does not amount to trademark infringement. So, the two ways trademark infringement can be avoided is through (1) a lack of likelihood of confusion and through (2) fair use.


There are two kinds of fair use: descriptive and nominative.



Descriptive Fair Use



Descriptive fair use is when someone who is not the owner of a mark uses the mark in good faith only to describe the good/services and not to refer to the source or brand itself.  A common example is the trademark “SweeTARTS.” The trademark “SweeTARTS” is owned by Nestle to sell the SweeTARTS candies that come in hard, chewy, gummy, and rope form. Someone other than Nestle used the phrase “sweet-tart” to describe a fruity drink for sale.


This is an example of descriptive fair use because the person was describing the fruity drink as having a “sweet-tart” flavor and not actually as relating to Nestle’s SweeTARTS brand. Because the phrase “sweet tart” is known by consumers as being a way to describe a flavor and not just a brand, others can use “sweet tart” without infringing on Nestle’s trademark rights as well.


The other kind of fair use is nominative fair use and this “fair use” exception can be applied in multiple ways.



Nominative Fair Use


Nominative fair use differs from descriptive fair use because nominative fair use allows someone to use the mark to refer to the source of the goods/services. Remember, descriptive fair use can only be used to describe the goods/services and not to refer to the source of the goods/services. So, in what situations may a person use a trademark to refer to a particular source of goods/services? Generally, these situations exist when there is no other way to describe something or there is no reasonable alternative.


There’s a three-part test to determine whether a reasonable alternative exists. If a reasonable alternative exists, then the person’s use of the mark does not qualify as nominative fair use. However, if someone meets all three requirements of the test, then the person may use the mark as part of the nominative fair use exception. The three requirements to determine whether nominative fair use applies are:


  1. The trademark owner or goods/services in question must not be readily identifiable without use of the trademark;

  2. The defendant may use only as much of the mark as is reasonably necessary to identify the trademark owner or goods/services; and

  3. The defendant may not do anything that would imply sponsorship or endorsement by the trademark owner.


A 1992 federal case involving the popular boy band New Kids on the Block (NKOTB) established this three-part test and still serves as a good example for those investigating nominative fair use. In this case, two national newspapers, USA Today and Star, conducted two different polls asking readers which band member was the most popular and the sexiest, respectively. Readers could call a 900 number to vote for their favorite member. But fans had to put their money where their mouths were because dialing 900 numbers cost money. Though to be fair, USA Today did note that profits would be donated to charity.


Afraid that these polls would come between the band and its loyal following, NKOTB filed a complaint. After all, NKOTB is used to using its trademark name and popularity to make money from fans. The band even had its own 900 numbers where fans could call in and either listen to the band members and other fans or fans could leave their own messages to the band and fellow Blockheads.

As you may have already guessed, NKOTB do not prevail. The newspapers were allowed to conduct their polls under the newfound nominative fair use exception. The court explained that there was not a way for the newspapers to ask readers who their favorite band member was without using the band’s name. In other words, there was no reasonable alternative. It would have been odd and difficult to ask readers what their favorite band member was in that popular boy band from Boston.


Looking at the three factors, the court determined that fair use existed. First, it was determined that it was hard to identify NKOTB without actually using the band’s name. Second, the newspapers only used the band’s name to ask the relevant question. Third, the newspapers did nothing to suggest that NKOTB sponsored or endorsed the poll.


But enough about celebrity trademarks. Small businesses can relate too. So, what are other situations in which a trademark can be used because there are no reasonable alternatives? There are plenty of other examples of nominative fair use at work. For instance, a mechanic can use the trademark “Volvo” to indicate that he can do work on Volvo cars. You can also imagine the Charlotte Observer referring to the NFL team the Carolina Panthers as “The Panthers” rather than the professional football team that plays at Bank of America stadium.



Examples of Fair Use


You can use another’s trademark in the following situations:


  • To describe your goods/services


A permanent makeup company can use the trademark “microcolor” to describe its products.


  • To explain your product/service compatibility


A company selling phone cases can use the “iPhone” trademark to explain that its phone cases fit certain iPhone models.


  • In comparative advertising


AT&T may use Verizon’s trademark when comparing the service quality of the cell phone companies.


  • Parody


The band Aqua was able to use Mattel’s “Barbie” trademark in its song “Barbie Girl” because it was a parody of the Barbie image.


  • Criticism/Commentary


A YouTube channel that reviews newly released movies and television shows may use the words “Disney” or “Marvel.”


  • Non-commercial uses such as in the media or in academic reports


A news station reporting on people standing in line at the Apple store may show Apple’s logo and say “Apple” or Apple’s product names. A professor can use “Nike” and “Adidas” when discussing the results of his experiment on the two brands.



Whether you’re the trademark owner or the fair user, it’s important to understand the applications and limitations of the fair use doctrine in trademark law. As always, before you take any action yourself, I recommend consulting a trademark attorney. Trademark law is confusing and fact-based so it helps to have a lawyer on your side.

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October 18, 2017

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Disclaimer: This information is not legal advice

Attorney Amanda Hayes is licensed in NC and MA.

Can file U.S. federal trademarks for anyone, regardless of location.


3 Hampton Avenue, #35

Northampton, MA 01060