This article will address the doctrine of nominative fair use under the trademark laws. In a prior article, I discussed the doctrine of descriptive fair use. In a descriptive fair use case, the defendant uses the plaintiff's trademark to describe its own product or service. In contrast, in a nominative fair use case, the defendant uses the plaintiff's trademark to describe the plaintiff's product, even though its ultimate goal is to describe its own product or service.

In the Ninth Circuit

The nominative fair use doctrine was first recognized by the Ninth Circuit in New Kids on the Block v. News America Publishing, 971 F. 2d 302 (1992). The elements of this doctrine in the Ninth Circuit are that: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark is used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would suggest sponsorship or endorsement by the trademark holder.

In New Kids, the plaintiff was a popular teen band, and the defendants were two newspapers. The newspapers used the trademark to publicize their telephone polls about the band. The Ninth Circuit found that all three requirements were satisfied. First, the newspapers could not offer this “service” without use of the band's name. Second, the newspapers only named the band in order to identify them as the subject of the polls. Third, nothing in the announcements suggested endorsement or joint sponsorship by the band. Significantly, in the Ninth Circuit, the nominative fair use analysis is not an affirmative defense. Rather, it replaces the multipart likelihood of confusion test. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).