A party is entitled to use a trademark in such as way as to describe the qualities that a mark represents, as long as the use of the mark is not in a trademark manner but in a descriptive sense. Fair use of a trademark occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the fair use defense set forth in the Lanham Act that provides that it is not an infringement when the use of a trademark (name, term or device) is not used as a mark but which is used in a descriptive sense and used fairly and in good faith to describe the goods or services of the party. While a trademark will protect a word which is used by a manufacturer or merchant to identify goods and distinguish them from others, trademark law will not prevent the use of such a word in good faith where the primary purpose is to describe a product or service, not to infringe the trademark resembled by it. The statutory fair use defense provided in the Lanham Act prevents a trademark owner from monopolizing or appropriating a descriptive word or phrase. It allows non-owners of the trademark to accurately describe their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then only where the descriptive term is used descriptively.
Judge-Made Categories of Fair Use
Although the Lanham Act contains the statutory fair use provision mentioned above, there are three additional judge-made categories where use of the trademark of another may be considered non-infringing. They are (1) nominative fair use, (2) comparative advertising as fair use, and (3) parody as fair use.
Nominative fair use involves the descriptive use of another’s mark to describe or identify the plaintiff’s goods or services, not the defendant’s. Comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor’s goods. Parody is a humorous form of social commentary and literary criticism.
Factors Considered in Determining Fair Use
Several different factors are considered by courts to determine whether a particular use is an infringing use or a fair use. Those factors are as follows:
the manner in which the word or mark is being used by the defendant is considered;
whether the defendant is using the word or mark in good faith is considered; and
whether the use of the word or mark is likely to confuse consumers is also considered.
The author’s use of the mark must accurately describe the trademark owner’s product or service, the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work, and the author’s use must be in good faith in order for the fair use defense to be successful.