Will the Confusion Ever End?
Envision an auto repair shop that advertises that it repairs Volkswagens,[1] or a company that resells and advertises used Tiffany & Co. jewelry.[2] Should these companies be allowed to use another’s trademark to identify the trademark holder’s goods or services, rather than to describe their own goods or services? Yes, these companies may use another’s trademark to identify the trademark holder’s goods in the Second, Third, and Ninth Circuits. The decision to protect this type of use, known as nominative fair use, is somewhat controversial.
Under the Lanham Act, a plaintiff may protect his or her trademark from infringement by demonstrating that the mark warrants protection under the Act and a defendant’s use of the mark is likely to cause consumer confusion.[3] The Lanham Act explicitly provides a classic fair use defense to bypass a likelihood of consumer confusion.[4] Classic fair use applies when an individual used another’s trademark to describe his own product.[5] Thus, classic fair use allows defendants to assert that they fairly used another’s trademark to describe their own product albeit the use’s creating confusion among consumers.[6] While classic fair use is codified in the Lanham Act, nominative fair use is not. Thus, nominative fair use’s controversy emanates from the fact that Congress has not amended the Act to include it despite its adoption in various Circuit Courts.[7] Also, nominative fair use’s controversy resides in the belief that a likelihood of confusion analysis alone is sufficient when a defendant used a plaintiff’s trademark to describe that plaintiff’s product.[8]
Some courts have declined to adopt nominative fair use, but several Circuit Courts have held nominative use constitutes fair use under the Lanham Act. Despite their agreement of permitting nominative fair use, Circuit Courts have disagreed as to its application. Since the doctrine’s inception in the Ninth Circuit in 1992, the Circuit Courts have been divided: is nominative fair use an affirmative defense that completely excuses consumer confusion, or is nominative fair use a way to determine the likelihood of consumer confusion?[9] The Third Circuit has adopted an affirmative defense of nominative fair use, allowing defendants to show that their use of another’s trademark was fair irrespective of a likelihood of confusion.[10] While the Second and Ninth Circuits employ a similar test, the Second Circuit fashioned a distinctive approach that concurrently examines nominative fair use factors and consumer confusion factors.[11] Thus, even the Circuits that apply nominative fair use are split on its application.
Currently, a nominative fair use case from the Second Circuit has petitioned for certiorari from the Supreme Court.[12] Granting this petition for certiorari would allow the Supreme Court to determine whether nominative use is an appropriate type of fair use; and if it decides to adopt nominative fair use, the Court can fashion a clear test for the Circuit Courts to apply. After almost 25 years of uncertainty and inconsistency, the Supreme Court must use this opportunity to quell the confusion that nominative fair use has created.
Footnotes
