What is a trademark? And what is fair use of a trademark?

We see trademarks every day. Ones that we recognize, like Coca-Cola, Apple, Exxon, Pepsi and Ford, and ones that may go unnoticed, like the color of a Tiffany’s blue box.

A trademark is a word, phrase, slogan, symbol, design, or combination that (1) identifies the good or service and (2) distinguishes source. Trademarks can (but do not have to) be registered with the United States Patent and Trademark Office and can allow exclusivity of use indefinitely as an identifier of source for a good or service. A trademark owner can enforce the exclusivity of its use to prevent the public from being confused of where a good or service comes from.

The protection of a trademark, however, is not absolute. A third-party can use another’s trademark if it qualifies as a fair use of the trademark. There are two types of fair use, descriptive (classic) fair use and nominal fair use. Descriptive fair use is where a third-party uses the trademark owner’s mark to describe the third-party’s goods, while nominal fair use is when the third-party uses the trademark owner’s mark to describe the trademark owner.

Courts do not want to give individuals monopolies over words that others would have to use to simply describe their products. To qualify for descriptive fair use the mark in question should not be used as a trademark, meaning not being used as a identifier of source. An example of descriptive fair use can be found in Jessica Simpson’s bath products, where she described a body lotion as a “love potion,” which was challenged by a woman who had registered the trademark “love potion.” Ms. Simpson’s use of the trademark was found to fall under descriptive fair use, as it was used to describe the product (Dessert Beauty v. Fox). Another common example of descriptive fair use is truthful comparative advertising. It is fair use to assert in a commercial that Brand X lasts longer/tastes better/drives smoother than Brand Y, even if you do not own the rights to use Brand Y’s name.

Nominative fair use, on the other hand, occurs when a third-party uses the trademark owner’s mark to describe the trademark owner. This use is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. For example, instead of having to say “the very popular doll that has blonde hair,” a party could just say “Barbie” when referring to the toy. The trademark must be used to describe the thing and not identify a source.

These two carve-outs in trademark protection show the goal of trademark law to limit confusion, but not to limit the ability of other producers to describe their own products or for others to discuss products.