As with all advertising, comparative advertising must not mislead or deceive. "Fair use" is a type of defense against claims of infringement in both trademark and copyright law. When Verizon advertises that it has better coverage than AT&T, it is making nominative fair use of AT&T's mark because it is actually referring to AT&T's services. Descriptive fair use occurs when a company wants to use a competitor's trademark not as a trademark but to describe a product. PDF The Trademark Fair Use Reform Act Using Another's Trademark. Infringement or Fair Use? This program will explore some of the contextual factors considered by courts in determining whether a use of another's mark is fair. Fair Use In Trademark Law | West Palm Beach Trademark Lawyers Text on this blog is licensed under a Creative Commons Attribution 2.5 License.Pictures and works quoted may be subject to other parties' copyrights. October 17, 2016 by KevinTM. Boston Patent Law Association - BPLA As the federal agency with primary responsibility for regulating trade, the FTC encourages comparative advertising, including use of a competitor's mark and only restrains comparative advertising that constitutes "unlawful or deceptive acts or practices in or affecting commerce." Comparative advertising: Fair use and good faith consider-ations are key in establishing whether third party use of a mark in comparative advertising is infringing or permissible. Nominative fair use often arises in the comparative advertising context, when a company compares its goods or services to those of a trademark owner's. All of the nominative fair use factors must be present, including the requirement that the use not be misleading, defamatory or imply any sponsorship by the trademark owner. Regardless of how fair your use of a trademark is, there is always a risk in using another's trademarks—the owner may be motivated to sue to prevent your use. By: Marina Maltykh and Igor Alfiorov. The comparisons you make must be accurate, should clearly indicate what . Promoting products and services by comparing them to your competitors is a common advertising method. In some cases, affirmative defenses may excuse the otherwise infringing actions of a later user, and permit that later user to continue its use of the protected mark. If the use of another's trademark is to indicate the trademark holder or its goods, for example, using the original mark on the repackaged goods or using another's trademark in comparative advertising, then the fair use doctrine does not apply. The trademark Fair Use Doctrine allows for certain uses of another company's trademarks when the use is "descriptive of and used fairly and in good faith only to describe the goods or services of such party." 15 U.S.C. § 1115 (b) (4) There are two types of trademark fair use. In the context of trademarks, "fair use" is the term given to the use of someone else's trademark in a way that will not subject the user to liability for infringing the owner's rights. The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks. Section 1115 (b) (4) of the Lanham Act states: That the use of the name, term, or device charged to be an infringement is 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, or of a term or device . In Europe, use in comparative advertising must comply with the European Union directive concerning misleading and comparative advertising. Rather, this practice should be regarded as trademark fair use and treated as a form of lawful comparative advertising. There are two categories of trademark fair use: Because the trademark owner's rights in the mark extend only to its significance in identifying source, not to the original descriptive . The use of someone else's trademark to refer to that party or their goods or services is allowed, provided no endorsement or other sponsorship is implied. The court . Nonetheless, one can make fair use of a mark, such as through comparative advertising and through free speech to talk about another's product. Over the years, we've lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads.. The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks. You have to use the marks to identify the products. See 15 U.S.C. Nominative fair use of a mark may also occur within the context of comparative advertising. Under U.S. Supreme Court precedent, the fair use defense in trademark law is not precluded by the possibility of confusion. Most often, nominative fair use arises in the context of comparative advertising. A woman who was a Playboy Playmate should be allowed to describe herself in the capacity without infringing the trademarks. This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use , there are rules that need to be followed. The use of a place name to state where a business is located is generally acceptable, provided it doesn't suggest an affiliation with the mark holder. In Europe, use in comparative advertising must comply with the European Union directive concerning misleading and comparative advertising. Under U.S. law, use of a competitor's trademark in accurate and non-deceptive comparative advertising is legal and does not constitute trademark infringement. In nominative fair use, others use a company's trademarks to simply refer to the actual trademark owner. This usually happens when marks also have descriptive attributes. First, you can always use a word in it's normal, non-trademark sense. Nominative fair use comes up in a variety of situations. There are two broad situations where the law recognizes a fair use defense to trademark infringement: descriptive fair use and nominative fair use. This is called comparative advertising, and it's considered fair use. . Sold - 23 Avellino, Irvine, CA - $3,500. But even though these defenses share the "fair use" name, they are different for trademarks versus copyrights. For more information, please contact Marina Maltykh or Igor Alfiorov at our Ukraine office. These are: (1) nominative fair use; (2) comparative advertising as fair use; and (3) parody as fair use. View details, map and photos of this single family property with 3 bedrooms and 3 total baths. A woman who was a Playboy Playmate should be allowed to describe herself in the capacity without infringing the trademarks. Nominative fair use generally applies to comparative advertising, parody and non-commercial use of trademarks in academic articles, media reports, etc. To come within this fair use defense a person must make use of the other party's trademark (i) other than as a mark, (ii) in a descriptive sense, and (iii) in good faith. • Sony Computer Ent. But there's a second type of fair use in the trademark world, known as nominative fair use. Comparative use of trademarks . If the trademark owner can demonstrate that there is a likelihood of confusion, then the use cannot be nominative fair use. The first is the classic fair use situation where the mark itself has a descriptive meaning and the third party uses the term descriptively to describe . The notion of "fair use" is well established in intellectual property law, and clearly extends to trademarks. But even though these defenses share the "fair use" name, they are different for trademarks versus copyrights. Yes you heard me right; trademark fair use exists! Yes you heard me right; trademark fair use exists! 6 See Benjamin F. Sidbury, Comparative Advertising on the Internet: Defining the Boundaries of Trademark Fair Use for Internet Metatags and Trigger Ads, 3 N.C. J.L. The fact that the third-party didn't seek the trademark owner's permission to use their trademark for such references doesn't necessarily make such non-authorized use infringing. The First Amendment also recognizes the use of parody, comedy, or satire as fair use. When can a brand owner lawfully use a competitor's trademark on the brand owner's product? October 17, 2016 by KevinTM. September 7, 2020. Honda, therefore, is free to claim that its "Honda Accord is better than the Ford Taurus" in its advertising even though Ford and Taurus are both trademarks owned by Ford Motor Company. Our interactive presentation will focus on trademark fair use issues including as they arise in comparative advertising scenarios, on social media and where marks owned by others might be used in a descriptive . The law also amends the existing provision on trademark fair use in comparative advertising, specifying that such use must solely be intended for distinguishing goods and services and emphasizing their differences. Trademark owners should be familiar with the concept of fair use so that they can better evaluate when a third party's use of their trademark is fair. Nominative Fair Use. (ii) Only to describe its goods or services. The more problematic and hence controversial of the two is the doctrine of 'nominative fair use' where someone else's trademark is used to refer to the mark owner's goods or services . The test in Hong Kong is surprisingly "fair use‒like" and is based on references to "honest practices," "unfair advantage," and "detrimental to the distinctive character or repute." The classic case of nominative use is comparative advertising such as "Coca-Cola tastes better than Pepsi," or vice versa. Nominative fair use generally applies to comparative advertising, parody and noncommercial use of trademarks in academic articles, and media reports is also lawful . Comparative Advertisements Advertisers no longer must resort to calling a competitor "Brand X." They specifically name a brand they are trying to outsell. There decide whether the ads' use of "micro color" was a fair, non-trademark use of the words to describe the makeup. The classic case of nominative use is comparative advertising such as "Coca-Cola tastes better than Pepsi," or vice versa. However, courts may consider the possibility of confusion in analyzing whether a use is fair or not. The panel will also explore the relationship to confusion and its impact on comparative advertising strategies and provide best practices for nominative fair use. One situation involves compatibility advertising; use a third party's trademark . In particular, the nominative fair use and First Amendment defenses are the subject of circuit splits. § 107, courts look at the following four non-exclusive factors to determine fair use: • (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; • (2) the nature of the copyrighted work; • (3) the amount and substantiality of the portion used in relation to the You need permission to use a logo unless it is for editorial or information purposes, such as when a logo is used in a written article or being used as part of a comparative product statement. Nominative fair use generally applies to comparative advertising, parody and non-commercial use of trademarks in academic articles, media reports, etc. The three requirements for defendants who want to take advantage of nominative fair use include: The trademark owner, product or . Regardless of how fair your use of a trademark is, there is always a risk in using another's trademarks—the owner may be motivated to sue to prevent your use. Four Fair Use Factors • Under 17 U.S.C. At the end of the day, however, the three prong legal inquiry into whether a use qualifies as fair requires a subjective determination that is best assessed from the perspective of an experienced trademark . MLS# 320008683. More often, speakers capitulate A person can use a trademark and refer to a trademark owner or its goods for the purposes of reporting, commentary, or comparative advertising. In order to rely on nominative fair use as a defense, the user would need to have only used as much of the mark as was necessary and did nothing to suggest an endorsement or approval by the trademark owner. regard to comparative advertising, as the Frogpedals.com product does compare to the commercial pedal in the ways that we claim. In fact, truthful comparative advertisements - even those that display a competitor's trademark, are considered to be informational for consumers and beneficial to competition, provided . Fair use in comparative commercial advertising is a new notion which cannot be explained by applying either the fair use doctrine under the confusion test of trademark law or the fair use defense of copyright law. Nominative Fair Use. portrayals, commentary, political speech, parody, and comparative advertising. Another example of nominative fair use is use of a competitor's trademark in comparative advertising. Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. Nominative fair use is available as a defense to trademark infringement where the defendant uses a trademark to describe the trademark holder's product or service and (1) the product or service . 2002). To increase the likelihood such fair use will be considered permissible, care must be taken to adhere to the following: dispel any implicit affiliation with the famous mark, such as with a disclaimer, Under the Lanham Act, theFair Use Doctrineprotects certain uses of registered trademarks from infringement claims whenthe use of the name, term, or device is "a use, otherwise than as a mark, of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services of [a] party, or their geographic origin." 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