When you register your trademark with the United States Patent and Trademark Office (USPTO), you have taken the most important step to protect your brand from misuse by others. However, there are still a limited number of situations in which a third party may be allowed to use your trademark. Under the Lanham Act, the doctrine of “fair use” permits another to use a registered trademark as long as there wouldn’t be a likelihood of confusion that there is a connection with the mark’s actual owner.
“Fair use” is a term in trademark law that means using a mark in such a way that it will not infringe upon the owner’s rights. A common defense in trademark infringement litigation, fair use provides that a party may use a protected mark not as an actual trademark, but rather, for its descriptive meaning. Specifically, there are two types of fair use: classic fair use and nominative fair use.
Classic fair use, also sometimes called “descriptive fair use,” occurs when someone else’s trademark is used to describe one’s goods or services. This type of use does not indicate the source of the goods or services but instead uses the word that is registered as the trademark to describe them.
Notably, the Lanham Act limits trademark rights when it comes to using descriptive terms to avoid creating monopolies on words that are needed to define products or services — not only are descriptive trademarks more difficult to obtain, but also to enforce. A word is deemed “descriptive” if it references a characteristic, quality, flavor, function, or purpose of the goods or services.
Nominative fair use allows for using another’s mark to name the owner’s goods and services if they could not otherwise be easily identified. For instance, a media outlet might use a registered trademark name to report on an event or poll readers. Or, an instructor might provide classes on how to use a specific type of software program — the instructor can use the name of the software in advertising materials as long as they do not falsely suggest an affiliation with the company.
Fair use in trademark law can apply in a wide variety of scenarios, as long as the mark is used in good faith and the use wouldn’t be likely to cause confusion among consumers. Some common situations where trademark fair use applies are as follows:
A court will usually consider several factors when determining whether an allegation of infringement qualifies as fair use. However, the circuits have applied different criteria when nominative use is at issue. For example, to prevail in using fair use as a defense in the Third Circuit, a defendant must show: (1) the use of the plaintiff’s mark is necessary to describe their goods or services; (2) they use only as much of the mark as is necessary to describe the product; (3) their conduct reflects the accurate relationship they have with the plaintiff.
In the Ninth Circuit, nominative fair use is not considered an affirmative defense because it does not shield a defendant from liability if there is a likelihood of confusion. A three-prong test is applied which considers whether: (1) the plaintiff’s goods or services is not readily identified without the use of the mark; (2) the defendant used only as much of the mark as is reasonably necessary to identify the plaintiff’s goods or services; (3) the defendant did not do anything to suggest endorsement by the plaintiff.
The Second Circuit combined the approaches of the Third and Ninth Circuits to create its own test. In addition, it also directs district courts to not only consider the likelihood of confusion regarding the source of the defendant’s goods, but also potential confusion concerning affiliation, sponsorship, or endorsement by the trademark owner.
The concept of fair use in trademark law is complex. It’s best to have a knowledgeable trademark lawyer assess your case if you think the fair use defense might apply in your situation. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC assists business owners and entrepreneurs in various industries to help ensure their trademarks are shielded from misuse — and their bottom lines are protected. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.