Trademarks are valuable assets that help companies distinguish their products and services in the marketplace. Their value is so significant that trademark owners will often pursue legal action against others who use their marks without express permission. However, there are situations where third parties can use another company’s trademarks, including those of a competitor, without infringing on the owner’s rights. After all, how else can people refer to trademark owners and their products and services without using the trademarks themselves?
Generally, when such use is done in a way that is truthful and not misleading, it is more likely to be considered “nominative fair use,” which, in legal terms, is an affirmative defense to claims of trademark infringement. In other words, although making nominative fair use of another’s trademark will not prevent an infringement claim from being made, it can possibly provide a reasonable defense to those claims. Since nominative fair use of another company’s trademark(s) is not a risk-free endeavor, a careful risk-benefit analysis and guidance of legal counsel should always precede such use.
With this in mind, we offer several suggestions on how to potentially make nominative fair use of another company’s trademarks.
Nominative Fair Use of Another’s Trademark
Assuming a company has assessed and is comfortable with the business risk associated with using another’s trademark, the following suggestions may help support a defense of nominative fair use:
- Generally, use of another company’s trademark should be truthful and not misleading. When specifically comparing products or services to those of another trademark owner, be mindful of the risks associated with false advertising. Our companion post on comparative advertising provides additional insight on this topic.
- Using the trademark owner’s logos is not recommended since some courts consider use of logos as more than is necessary to communicate a message about the trademark owner.
- When referencing another company's trademark, use a plain text that generally matches the surrounding text in the marketing materials being produced. Also, if the other company's trademark typically appears in a distinctive typeface or color, avoid using the same or a similar typeface or color.
- Position your own trademark larger and more prominently than the other company's trademark so that the origin of the marketing materials is immediately clear to the consumer.
- Any statement or implication that the trademark owner is an affiliate, endorser or sponsor should not be included in the marketing materials.
- Although not required, a disclaimer may help to reduce any consumer confusion and might look something like this: “We are not endorsed by, affiliated with or sponsored by [trademark owner company]. Keep in mind, however, that a disclaimer should never be viewed as a replacement for any of the above suggestions, but may be a useful supplement.
In closing, when referencing another company’s trademark(s), if such use is done in a way that is truthful and not misleading, including taking steps to clearly distinguish the owner’s marks from your own, the doctrine of nominative fair use may offer an affirmative defense in the event an infringement claim is made. In our next post, we will explore a common form of nominative fair use known as comparative advertising.
If you have questions about trademarks in general or use of trademarks in marketing, please contact Wade Savoy at email@example.com.
Wade Savoy is a Partner with our sister firm, Patent GC. Wade focuses his practice on the rapidly changing intersection of law and technology. His genuine love and deep knowledge of the law, coupled with 25 years of experience and an intensely practical, business-oriented perspective, define his work helping clients achieve their IP-related goals.