The doctrine of fair use is usually associated with the copyright laws. There is, however, also a doctrine of fair use under the trademark laws. There are two branches of trademark fair use. One is descriptive fair use, which is often referred to as classic fair use. The other is nominative fair use. In classic fair use, the defendant uses the plaintiff’s trademark to describe its own product or service. Nominative fair use occurs when the defendant uses the plaintiff’s trademark to describe the plaintiff’s product or service, even though its ultimate goal is to describe its own product or service. This article will discuss descriptive or classic fair use. The doctrine of nominative fair use is worthy of another article.
The common law classic fair use defense is codified in 15 U.S.C. §1115(b)(4). It provides that it is a defense to an infringement claim that “the name, term or device charged to be an infringement is a use otherwise than as a mark … of a term or device which is descriptive of and used fairly and in good faith only to describe the good or services of such party, or their geographic origin.” To qualify as a descriptive fair use, defendant must have made use of plaintiff’s mark: (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. See, e.g., EMI Catalogue Partnership v. Hill, Holliday, Conners, Cosmopulos, 228 F. 3d 56, 64 (2d Cir. 2000).The central rationale for a fair use defense is to prevent a monopoly of a descriptive term which anyone should have right to use. See, e.g., Something Old, Something New v. QVC, 1999 WL 1125063 at *7 (S.D.N.Y., Dec. 8, 1999); Dessert Beauty v. Fox, 568 F. Supp. 2d 416, 426 (S.D. N.Y. 2008).
