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In the United States, trademark law includes a fair use defense, sometimes called "trademark fair use" to distinguish it from the better-known
fair use Fair use is a doctrine in United States law that permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is one of the limitations to copyright intended to balance the interests ...
doctrine in copyright. Fair use of trademarks is more limited than that which exists in the context of copyright. Many trademarks are adapted from words or symbols that are common to the culture, as
Apple, Inc. Apple Inc. is an American multinational technology company headquartered in Cupertino, California, United States. Apple is the largest technology company by revenue (totaling in 2021) and, as of June 2022, is the world's biggest company b ...
using a trademark that is based upon the apple. Other trademarks are invented by the mark owner (such as
Kodak The Eastman Kodak Company (referred to simply as Kodak ) is an American public company that produces various products related to its historic basis in analogue photography. The company is headquartered in Rochester, New York, and is incorpor ...
) and have no common use until introduced by the owner. Courts have recognized that ownership of a trademark or service mark cannot be used to prevent others from using the word or symbol in accord with its plain and ordinary meaning, such as if the trademark is a descriptive word or common symbol such as a pine tree. As a result, the less distinctive or original the trademark, the less able the trademark owner will be to control how it is used. For the potentially infringing use of a trademark or service mark, fair use by a non-owner of the mark falls under two categories: * Nominative fair use: referencing a mark to identify the actual goods and services that the trademark holder identifies with the mark. For example, it is not trademark infringement to refer to a printer produced by
Casio is a Japanese multinational electronics manufacturing corporation headquartered in Shibuya, Tokyo, Japan. Its products include calculators, mobile phones, digital cameras, electronic musical instruments, and analogue and digital watches. It ...
as a "Casio printer". * Descriptive fair use: Using a descriptive mark in an ordinary, descriptive manner to describe a product or service. For example, describing a component within a dehumidifier as "honeycomb-shaped" was a fair use of a registered trademark for HONEYCOMBE dehumidifiers. In other words, for descriptive fair use to arise, the following must be true: **Plaintiff owns a mark that is descriptive of its goods or services (i.e., it immediately conveys information regarding quality, characteristic, function, feature, or intended use of the goods/services). If Plaintiff's mark is ''suggestive'' (i.e., it requires thought or imagination to understand the nature of the underlying goods or services, such as TIDE for laundry detergent), ''arbitrary'' (i.e., a word or phrase that exists in language, but has no relation to the goods or services, such as APPLE for computers), or ''fanciful'' (i.e., a new word, created as a trademark, such as KODAK for cameras), descriptive fair use does not apply. **Defendant uses the mark ''as a descriptive word or phrase'' (i.e., to accurately describe something). If Defendant uses the mark as a trademark (i.e., a brand, product name, company name, etc.) or if Defendant uses the term in a ''suggestive'' manner, it is not descriptive fair use. Nominative fair use of a mark may also occur within the context of comparative advertising. Under
U.S. Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...
precedent, the fair use defense in trademark law is not precluded by the possibility of confusion. However, courts may consider the possibility of confusion in analyzing whether a use is fair or not. Intent to show confusion is also relevant; hence, as a general rule the trademark should be used no more than necessary for the legitimate purpose. By the same token, use of a word mark is preferred to a logo, and a word mark in the same style of type as surrounding text is preferred to a word mark in its trademarked distinctive type.


See also

* Nominative use * '' Rogers v. Grimaldi'' and the Rogers test


References

{{DEFAULTSORT:Fair use (U.S. trademark law) United States trademark law First Amendment to the United States Constitution Fair use