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.
