In Part V and our blog post titled “Laches – The Second Limitation on Trademark Protection,” we hammered on the concept of “laches” and mentioned that laches is a doctrine or defense on equity that individuals will not be entitled to bring an action in a court of law if they delayed too long to assert an equitable right. We also added that, thus, it implies a lack of activity and diligence in making a legal claim concerning a given matter or asserting a legal right or privilege. To move this discussion forward, we have hammered on “Fair Use,” the third limitation on trademark protection in this blog post and Part VI of the miniseries.
Fair Use – The Third Limitation on Trademark Protection
The concept of “fair use” implies a situation where a third party uses another person’s trademark but does not essentially violate trademark law. Under the trademark law, there are two forms of fair use: “normative fair use” and “descriptive fair use.”
Normative Fair Use
This form of fair use arises when Party A uses Party B’s trademark to refer to Party B’s product in a way that is not likely to cause confusion or that is not deceptive. For instance, a company may claim that it manufactures cell phone cases that would fit certain cell phone brands without incurring liability for infringement.
When asserting normative fair use, the issue of concern is whether the confusion as to whether the defendant was sponsored or endorsed by the trademark owner was created by the defendant’s reference to the mark in question. When any of the following is applicable, such confusion may exist:
- Defendant misled clients into believing that the trademark owner endorsed or sponsored the product related to the mark in question-
- The defendant’s use of the mark was more than necessary-and-
- It was easy to identify the product without the mark being in use.
Descriptive Fair Use
Trademark infringement does not encompass the good faith use of a term to describe a third party’s services or goods. This implies that although the term is adopted as a trademark for a similar product by another party, using a term to describe one’s own product, with no deception, will not be considered trademark infringement. Pursuant to 15 U.S.C. § 1115(b)(4), courts usually consider a number of issues when evaluating an assertion of the descriptive fair use defense by a defendant. Such considerations include, but are not limited to, the use of a trademark (1) in good faith, (2) in a descriptive manner, and (3) other than as a mark.
In the next blog post and Part VII of the series, we shall move forward to the “First Sale Doctrine,” the fourth and final “Limitation on Trademark Protection.”
Stay tuned for more legal guidance, training, and education. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.