The 3rd U.S. Circuit Court of Appeals has become only the second circuit court to recognize the “nominative fair use” doctrine, partially adopting it as an affirmative defense in a trademark infringement action. Century 21 Real Estate Corporation v. LendingTree, Inc., 425 F.3d 211 (3d Cir. 2005). In 1992, the 9th Circuit formulated the doctrine in The New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 23 U.S.P.Q.2d (BNA) 1534, 20 Media L. Rep. 1468 (9th Cir. 1992).
In The New Kids on The Block, defendants, both newspapers, used the trademark “NEW KIDS ON THE BLOCK” as part of a poll to determine which “new kid” was the most popular. Thus, the newspapers used phases such as “Which of the New Kids on the Block would you most like to move next door?” The newspapers asserted a First Amendment defense in the District Court, and were successful on summary judgment. In affirming, however, the 9th Circuit crafted the nominative fair use doctrine and affirmed summary judgment on this basis:
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