Defenses & Remedies
Descriptive fair use occurs when a defendant uses a mark in a descriptive sense to identify the defendant’s own good. It applies to use of any mark—not only descriptive marks. A person may use the mark to describe his own good.
Descriptive Fair Use
Nominative fair use is a defense to trademark infringement. It occurs where a defendant uses a mark to identify the mark owner’s good.
Nominative Fair Use
Affirmative defenses include laches, unclean hands, fraud in obtaining the mark, and fair use. Laches applies where the mark owner knows of the defendant’s use of her mark, delays taking action against that use (without excuse), and the defendant is prejudiced by the mark owner later asserting the right. Unclean hands is also called trademark misuse, and it applies (infrequently) where the mark owner has used the mark inappropriately. Fraud in obtaining the trademark applies where, in conjunction with registering a mark, a mark owner has made a materially fraudulent representation to the PTO. Fair use enables a defendant to use a trademark without incurring liability if his use is “fair.” There are two types of fair use: (1) descriptive fair use; and (2) nominative fair use.
Courts consider three questions in deciding whether a use is a permissible nominative fair use:
(1) Is the product or service of the mark owner one that may not be readily identified without use of the trademark?
(2) Is only so much of the mark used as is reasonably necessary to identify the product or service?
(3) Is the user doing anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the mark owner?
Courts may enjoin a defendant from using the plaintiff’s mark. In determining the scope of an injunction, courts consider several factors, among which are the strength of the protected mark and the likelihood of confusion (or dilution) from the defendant’s activity.
Courts craft injunctions by geographic boundaries. Those boundaries will depend on the market penetration of the mark.
With regard to monetary relief, the Lanham Act provides that a mark owner may recover the following:
(1) profits of the defendant;
(2) any damages sustained by the mark owner; and
(3) costs of the legal action.
Answer to Question 3
No. William has used RED JUICE to refer to his own product. He is using it to describe a characteristic of the product: the product is juice that is red in color. William thus makes a descriptive fair use of the RED JUICE mark. The fact that some customers are confused does not change the fact that William’s use is descriptive.
Answer to Question 4
Not likely. Together Airlines (TA) arguably uses the DARK BLUE mark in a way that describes its own services: TA claims that flying on its airlines is better than flying alone in the dark blue (presumably the dark blue of the sky). This would be a descriptive fair use. On the other hand, TA seems to refer to “Dark Blue” as a proper noun because it is capitalized. This suggests TA is using DARK BLUE to refer to the mark owner, DarkBlue. That use, then, could be a nominative fair use. This argument is plausible under the three factor test: (1) the service of DarkBlue cannot be identified without using its mark, DARK BLUE; (2) TA used only as much of the DARK BLUE mark as was reasonably necessary; and (3) TA’s use of DARK BLUE does not suggest sponsorship or endorsement by DarkBlue.
It is also arguable that TA’s use is not a nominative fair use. Arguably the use of DARK BLUE does not clearly communicate that TA is referring to the DarkBlue airline company. It could be that TA’s use causes people to mentally associate the DARK BLUE in TA’s advertisement with the DarkBlue company, without realizing that TA is actually referring to DarkBlue. Viewed in this light, TA’s use would be similar to the defendant’s use of STARBUCKS in the case of Starbucks Corporation v. Wolfe's Borough Coffee, Inc., which was covered in Chapter 21, Part A of the casebook. That use was held to be a dilution of the famous mark.
Answer to Question 2
Not likely. John is using Chris’s mark to refer to Chris, so John’s use cannot be a descriptive fair use. Arguably, John’s use is a nominative fair use. However, there is ambiguity as to whether John’s use suggests Chris’s endorsement of John’s sandwiches. John’s statement linking his sandwiches to Captain Chris could be interpreted as an endorsement from Captain Chris. Therefore, nominative fair use would not likely apply.
Answer to Question 1
No. No-Name is referring to the NERK mark in order to compare its product to NERK. This is a nominative fair use. No-Name is using the NERK mark to refer to the NERK mark owner. Referring to the NERK drug without using the NERK mark would be very difficult. The way that No-Name uses NERK does not suggest sponsorship by or affiliation with NERK Drug Co. Finally, No-Name uses no more of the NERK mark than is necessary.
Big Computer Inc. (BCI) has registered RED JUICE as a trademark for a computer line that it sells. It sells those computers in a retail store owned by a third party. In that same store, there is a vending machine owned by William. William stocks the vending machine with a particular juice which he describes as “Red Juice.” A few of the customers at the retail store mistakenly believe that the red juice drink is somehow affiliated with the RED JUICE computer line of BCI.
Question: Has William infringed on BCI’s trademark?
DARK BLUE is a famous mark for the services provided by the DarkBlue airplane company. DarkBlue’s competitor, Together Airlines, advertises its services as follows: “Flying Together is better than flying alone in the Dark Blue!”
Question: Does Together Airlines’ advertisement infringe on or dilute the DARK BLUE mark?
No-Name Drugs, Inc. sells a drug that competes with a drug called NERK (made by the NERK Drug Co.). The label of the No-Name drug container states: “Compare to NERK drug.”
Question: Is No-Name Drug, Inc. liable for either infringement or dilution?
Chris owns a sandwich shop called CAPTAIN CHRIS’S. John owns a sandwich shop called LITTLE JOHN’S. John advertises his sandwiches with the following line: “Made with ingredients found in the sandwiches of CAPTAIN CHRIS!”
Question: Is John’s advertisement a fair use?