Overview[]
U.S. trademark law[]
Under the doctrine of nominative fair use, the defendant uses the plaintiff’s trademark to specifically identify the plaintiff for certain purposes — such as comparative advertising or advertising repair services or replacement parts for the plaintiff’s goods. [1]
The nominative fair use defense is appropriate "where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product."[2] It “acknowledges that ‘it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.”[3]
| “ | The court looks at three factors in determining whether a defendant is entitled to the nominative fair use defense (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.[4] | ” |
References[]
- ↑ "A defendant may use a plaintiff's trademark to identify the plaintiff's goods so long as there is no likelihood of confusion about the source of defendant's product or the mark-holder's sponsorship or affiliation. Merck & Co. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402, 413 (S.D.N.Y. 2006).
- ↑ Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).
- ↑ Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003) (citation omitted).
- ↑ Horphag Res. Ltd. v. Pelligrini, 337 F.3d 1036, 1041 (9th Cir. 2003).