The notion of fair use is something that every person or party with a trademark or copyright should be aware of. While having a trademark and a copyright exists to provide protection so the person who owns that trademark or copyright can protect it, there are instances where a third party may use the trademark or copyright as long as certain parameters are met. If it falls under one of these parameters then its use is considered “fair use.”
Descriptive Fair Use
The first kind of fair use is descriptive fair use. This means that just because someone has copyrighted or trademarked a certain word does not mean that the word then disappears from common vernacular. Some examples of descriptive fair use would be the word “Apple.” Just because Steve Jobs and Macintosh use “Apple” as name for their computer business, it does not stop people from selling apples described as apples.
Another example would be to use the words sweet tart. People can still describe something such as a type of fruity drink even though there is a candy company named “SweeTarts.” In those instances the words sweet tart are merely describing something using a trademark word and not specifically describing a brand, thus, it is not trademark infringement and falls under fair use.
Nominative Fair Use
The second kind of fair use is nominative fair use. A person can use a trademark and refer to a trademark owner or its goods for the purposes of reporting, commentary, or comparative advertising. The three requirements for defendants who want to take advantage of nominative fair use include:
- The trademark owner, product or service in question cannot readily identifiable without use of the trademark,
- The defendant must use only as much of the mark as is necessary to identify the trademark owner, product or service, and
- The defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner.
Another example would be if your client was selling an app to be used by Apple’s operating system. Your client, of course, wants to promote and advertise this app and wants to advertise that it is compatible with Apples iOS. Your client is able to do so as long as there is no implication that there is an association between your client’s app and Apple computers.
Comparative Fair Use
If your client is a competitor of the candy SweeTarts and wants to run an ad where their candy is compared to SweeTarts and uses the SweeTarts trademark, it can do so under competitive fair use.
It is important, however, that your client uses the mark within the bounds described under nominative and comparative fair use as to not invite a lawsuit by SweeTarts. Even if your client does use a registered trademark, it would be important to advise your client not to use any taglines such as Chevrolet’s tagline “Like a Rock.” There are very few instances where any use of a tagline would be considered fair use.