Nominative use
From Wikipedia, the free encyclopedia
 |
The examples and perspective in this article or section may not represent a worldwide view of the subject. Please improve this article or discuss the issue on the talk page. |
- See also Fair use (US trademark law).
Nominative use, also "nominative fair use", is a defense to trademark infringement in the United States, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either related to, or a type of "trademark fair use" (sometimes called "classic fair use" or "statutory fair use"). All "trademark fair use" doctrines, however classified, are distinct from the fair use doctrine in copyright law. The nominative use doctrine was first enunciated by the U.S. Court of Appeals for the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), which decreed that one party may use or refer to the trademark of another if the following conditions are met:
- The product or service can not be readily identified without using the trademark (i.e. trademark is descriptive of a person, place, or product attribute)
- The user only uses so much of the mark as is necessary for the identification (i.e. the words but not the font or symbol)
- The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.
Furthermore, if a use is found to be nominative, then by definition it can not dilute the trademark.
In New Kids, the court had examined a "New Kids on the Block survey" performed by the defendant, and found that there was no way to ask people their opinion of the band without using its name. This use was extended to metatags in Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), where former Playboy Playmate Terri Welles was sued for using the trademarked term, "Playmate of the Year" in a meta element in her website. The court found that Welles had to use the term to describe herself, as she had been given that title by the trademark holder.
Among the older cases cited by the Court in Playboy vs Welles was Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969), in which the Ninth Circuit had ruled that an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company.
