Defenses to a Trademark Infringement Action: The Fair Use Defense

Descriptive Use

Descriptive use is exactly what it sounds like: it lets you use a word that functions as another party’s trademark to describe your own product, so long as you do so in good faith. This is the “classic” or descriptive fair use defense, codified at 15 U.S.C. § 1115(b)(4). To fall within it, your use of the other party’s mark must be:

1. otherwise than as a mark,
2. descriptive of, and used fairly and in good faith only to describe, your own goods or services, and
3. in good faith.

15 U.S.C. § 1115(b)(4). The statute reaches further than the bare three-part test. It also protects a use “otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party”: in other words, using your own individual name in your own business. And it expressly covers a term “descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin,” so a fair, good-faith use that describes where your goods or services come from is protected alongside the three-element test. 15 U.S.C. § 1115(b)(4).

This defense survives even against the strongest form of trademark rights. The fair use defense sits inside 15 U.S.C. § 1115(b), which makes an incontestable registration “conclusive evidence of the validity of the registered mark . . . and of the registrant’s exclusive right to use the registered mark in commerce,” but only “subject to the following defenses or defects.” Classic fair use is one of those enumerated defenses, so a descriptive fair use argument remains available no matter how established the plaintiff’s mark is. 15 U.S.C. § 1115(b).

One point often trips owners and defendants alike: you do not have to prove that no one will be confused. In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., the U.S. Supreme Court framed the question as “whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, 15 U. S. C. § 1115(b)(4), has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected,” and held “it does not.” The trademark plaintiff always carries the burden of proving likelihood of confusion as part of its prima facie case, “while the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense.” It follows, the Court explained, “that some possibility of consumer confusion must be compatible with fair use.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).

Do not over-read that holding. KP Permanent did not make confusion irrelevant. The Court declined to “pass upon the position of the United States, as amicus, that the ‘used fairly’ requirement in § 1115(b)(4) demands only that the descriptive term describe the goods accurately,” and it did “not rule out the pertinence of the degree of consumer confusion under the fair use defense.” A heavy showing of confusion can still bear on whether your use is objectively fair, even though you carry no burden to disprove confusion outright. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).

Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond’s USA Co. shows how this plays out. Chesebrough used the phrase “Seal it with a Kiss” next to postcards on a promotional display: the display “invited consumers to take one of the postcards, place a lipstick imprint of her lips on it, and mail it.” The Second Circuit affirmed the District Court’s grant of summary judgment for Chesebrough, holding that “the challenged phrase ‘Seal it with a Kiss’ . . . is a clear instance of a non-trademark use of words in their descriptive sense,” was not used to identify the product, and was therefore descriptive fair use under Section 33(b)(4) of the Lanham Act. Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28, 30-31 (2d Cir. 1997).

The same opinion adds a practical point worth remembering. Because “the defendants in good faith are using the phrase in its descriptive sense and prominently identifying the product with the defendants’ marks, the defendants incur no liability simply because the materials containing the descriptive phrase are so widely disseminated.” Good-faith descriptive use paired with prominent branding of your own mark does not become infringement merely because the descriptive phrase circulates widely. Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28 (2d Cir. 1997).

Reference to the Owner or the Owner’s Goods or Services

You can also use a trademark to refer to the owner of the mark, or to the owner’s own goods or services, rather than to brand your own product. This is nominative (referential) fair use, and its governing federal articulation is New Kids on the Block v. News America Publishing, Inc., not an unpublished district-court decision. There, the Ninth Circuit held that “where the defendant uses a trademark to describe the plaintiff’s product, rather than its own . . . a commercial user is entitled to a nominative fair use defense” if three requirements are met:

1. “the product or service in question must be one not readily identifiable without use of the trademark”;
2. “only so much of the mark or marks may be used as is reasonably necessary to identify the product or service”; and
3. “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”

New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306-08 (9th Cir. 1992).

The rationale explains why this kind of use is lawful. Nominative use of a mark, “where the only word reasonably available to describe a particular thing is pressed into service . . . lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306-08 (9th Cir. 1992).

New Kids remains the seminal, still-good-law source of the three-factor test, but be aware that the courts of appeals now differ on how the test operates. The Ninth Circuit treats the three factors as a replacement for the traditional likelihood-of-confusion analysis. The Third Circuit, in Century 21 Real Estate Corp. v. Lendingtree, Inc., treats nominative fair use as an affirmative defense available even where confusion is likely. The Second Circuit, in Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. University, LLC, rejected the affirmative-defense framing and instead requires the nominative factors to be weighed in addition to the ordinary likelihood-of-confusion factors, and the Supreme Court denied certiorari, leaving the split unresolved. Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d 153, 167-68 (2d Cir. 2016); Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005). Minnesota sits in the Eighth Circuit, which has not squarely adopted a nominative-fair-use test, so treat New Kids as the leading federal formulation rather than as settled Eighth Circuit law.

An unpublished district-court decision illustrates the doctrine in practice. In Clark v. America Online, Inc., America Online used Dick Clark’s name in a promotional mailing to AARP members (“If you danced to the Beatles, cruised in a Thunderbird, or tuned into Dick Clark, you have earned . . . 100 hours free” of Internet service on AOL). The plaintiffs, the entertainer Dick Clark and his company Olive Enterprises, Inc., argued the reference would confuse consumers into believing Dick Clark endorsed AOL. The court granted AOL summary judgment on the Lanham Act claims under the New Kids nominative fair use test, reasoning that AOL’s use of the “Dick Clark” name was “no more than reasonably necessary to identify the celebrity,” that “Nothing in the Mailer suggests joint sponsorship or endorsement by the plaintiffs,” and that the name was “but one of three verbal references on the Mailer to generational icons from the 1950s and 1960s.” Because “there was no endorsement by plaintiffs . . . as the uses in question were purely nominative,” AOL was “entitled to a fair use defense.” Clark v. America Online, Inc., 2000 WL 33535712 (C.D. Cal. Nov. 30, 2000).

Comparative Advertising

In comparative advertising, you can compare and contrast the qualities of competing goods or services and name the competitor while doing it. As long as the advertising contains no misrepresentation and creates no reasonable likelihood that purchasers will be confused as to the source, identity, or sponsorship of your product, using a competitor’s trademark in your advertising is permitted. As the court put it, “Trademarks of a rival company can be used in competitive advertising, so long as the advertising does not contain misrepresentations or create a reasonable likelihood that purchasers will be confused as to the source, identity, or sponsorship of the advertiser’s product.” Cuisinarts, Inc. v. Robot-Coupe Int’l Corp., 509 F. Supp. 1036 (S.D.N.Y. 1981).

Although some view comparative advertising as unfair, the Federal Trade Commission actually encourages naming and referring to competitors. Its Statement of Policy Regarding Comparative Advertising provides that “Commission policy in the area of comparative advertising encourages the naming of, or reference to competitors, but requires clarity, and, if necessary, disclosure to avoid deception of the consumer,” and that “the use of truthful comparative advertising should not be restrained by broadcasters or self-regulation entities.” 16 C.F.R. § 14.15(b). The FTC defines comparative advertising as “advertising that compares alternative brands on objectively measurable attributes or price, and identifies the alternative brand by name, illustration or other distinctive information.” 16 C.F.R. § 14.15(b).

The FTC takes this position for concrete reasons. “Comparative advertising, when truthful and nondeceptive, is a source of important information to consumers and assists them in making rational purchase decisions. Comparative advertising encourages product improvement and innovation, and can lead to lower prices in the marketplace.” 16 C.F.R. § 14.15(c). Consistent with that view, the FTC restated its comparative-advertising policy for the benefit of advertisers, advertising agencies, broadcasters, and self-regulation entities, providing that “the use of truthful comparative advertising should not be restrained by broadcasters or self-regulation entities.” 16 C.F.R. § 14.15(b). The Commission has also held that “disparaging advertising is permissible so long as it is truthful and not deceptive,” narrowing an order recommended in In re Carter Products that would have prohibited respondents from disparaging competing products more broadly. 16 C.F.R. § 14.15(c)(1).