Nominative use
Encyclopedia
Nominative use, also "nominative fair use", is a legal doctrine
that provides an affirmative defense
to trademark
infringement as enunciated by the United States
Ninth Circuit
, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either related to, or a type of "trademark fair use" (sometimes called "classic fair use" or "statutory fair use"). All "trademark fair use" doctrines, however classified, are distinct from the fair use doctrine in copyright law
.
The nominative use test essentially states that one party may use or refer to the trademark of another if:
Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.
survey
" performed by the defendant
, and found that there was no way to ask people their opinion of the band without using its name.
This use was extended to metatags in Playboy Enterprises, Inc. v. Welles
, where Playboy Playmate Terri Welles
was sued for using the trademarked term, "Playmate of the Year" in a
. The court found that Welles had to use the term to completely describe herself, as she had been given that title by the trademark holder.
In New Kids and in Playboy v. Welles, the courts examined older cases, identifying a unifying principle that they then named "nominative use". Among the older cases cited by the Court in Playboy v. Welles was Volkswagenwerk Aktiengesellschaft v. Church, in which the Ninth Circuit had ruled that an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company.
Doctrine
Doctrine is a codification of beliefs or a body of teachings or instructions, taught principles or positions, as the body of teachings in a branch of knowledge or belief system...
that provides an affirmative defense
Affirmative defense
A defendant offers an affirmative defense when responding to a plaintiff's claim in common law jurisdictions, or, more familiarly, in criminal law. Essentially, the defendant affirms that the condition is occurring or has occurred but offers a defense that bars, or prevents, the plaintiff's claim. ...
to trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
infringement as enunciated by the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
Ninth Circuit
United States Court of Appeals for the Ninth Circuit
The United States Court of Appeals for the Ninth Circuit is a U.S. federal court with appellate jurisdiction over the district courts in the following districts:* District of Alaska* District of Arizona...
, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either related to, or a type of "trademark fair use" (sometimes called "classic fair use" or "statutory fair use"). All "trademark fair use" doctrines, however classified, are distinct from the fair use doctrine in copyright law
Fair use
Fair use is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work. In United States copyright law, fair use is a doctrine that permits limited use of copyrighted material without acquiring permission from the rights holders...
.
The nominative use test essentially states that one party may use or refer to the trademark of another if:
- The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
- The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
- The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.
Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.
History of the doctrine
The nominative use doctrine was first enunciated in 1992 by the U.S. Court of Appeals for the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc.. In New Kids on the Block, the court had examined a "New Kids on the BlockNew Kids on the Block
New Kids on the Block are an American boy band from Boston, Massachusetts, assembled in 1984 by producer Maurice Starr. The band currently consists of brothers Jordan and Jonathan Knight, Joey McIntyre, Donnie Wahlberg, and Danny Wood.New Kids on the Block enjoyed success in the late 1980s and...
survey
Opinion poll
An opinion poll, sometimes simply referred to as a poll is a survey of public opinion from a particular sample. Opinion polls are usually designed to represent the opinions of a population by conducting a series of questions and then extrapolating generalities in ratio or within confidence...
" performed by the defendant
Defendant
A defendant or defender is any party who is required to answer the complaint of a plaintiff or pursuer in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a criminal statute...
, and found that there was no way to ask people their opinion of the band without using its name.
This use was extended to metatags in Playboy Enterprises, Inc. v. Welles
Playboy Enterprises, Inc. v. Welles
-Facts:Former 1981 Playboy Playmate of the Year Terri Welles maintained a website which identified her as a former PMOY and displayed the registered trademarked terms Playboy, Playmate of the Year, and Playmate of the Month and the unregistered trademark "PMOY" in metatags, wallpaper, banner ads,...
, where Playboy Playmate Terri Welles
Terri Welles
Terri Welles is an American actress and adult model.Welles was born in Santa Monica, California. She first appeared on the cover of the May 1980 issue of Playboy, wearing a flight attendant costume to illustrate a pictorial on stewardesses...
was sued for using the trademarked term, "Playmate of the Year" in a
meta element in her websiteWebsite
A website, also written as Web site, web site, or simply site, is a collection of related web pages containing images, videos or other digital assets. A website is hosted on at least one web server, accessible via a network such as the Internet or a private local area network through an Internet...
. The court found that Welles had to use the term to completely describe herself, as she had been given that title by the trademark holder.
In New Kids and in Playboy v. Welles, the courts examined older cases, identifying a unifying principle that they then named "nominative use". Among the older cases cited by the Court in Playboy v. Welles was Volkswagenwerk Aktiengesellschaft v. Church, in which the Ninth Circuit had ruled that an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company.