This article was written by Dallas-area trademark lawyer Tamera H. Bennett with great assistance from Video Game Lawyer Zack Strebeck.
Brands are everywhere. According to the U.S. Patent and Trademark Office, 193,121 trademark registrations were issued in 2013 alone. With brands pervading our daily lives, we’re accustomed to seeing those brands show up in alternate realities such as film, TV, comparative advertising and even video game worlds.
Is a “brand” any different than a trademark? Not really. Brand is the pop culture term for a trademark. A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this article, the terms “trademark” and “mark” refer to both trademarks and service marks.
Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. Use of another’s trademark may be permissible as “fair use” if the use does not infringe the trademark. We are going to take a look at how a third party may successfully and sometimes unsuccessfully use a trademark they don’t own in a media context.
I. Fair Use and Trademarks
A. Descriptive Fair Use
What do we do when a trademark also describes a person, a place or an attribute of a product? A trademark owner can’t have exclusive rights in such use as too many terms would be taken out of the language for commonevery day usage. Trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin." 15 U.S.C. § 1115(b)(4). "The [descriptive] `fair-use' defense, in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).
When the allegedly infringing term is ‘used fairly and in good faith only to describe to users the goods or services of [a] party, or their geographic origin,’ Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) (1976), a defendant in a trademark infringement action may assert the "fair use" defense. The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.
Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983) quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir.1980). The court held in Zatarain’s that “Fish-Fri” is a descriptive term for coating for fish. The term “Fish Fry” may be used by a competitor in its ordinary, descriptive sense.
B. Nominative Fair Use
Sometimes there is only one way to convey a message. And, when that situation arises, use of a third-party trademark will be considered fair use. In addition to a statutory descriptive fair use, we now have a judicial carve-out for nominative fair use.
With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute . . . when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.