In connection with the promotion or advertising of their goods, companies often try to compare their product offerings with those of a competitor. The use of comparative advertising often raises the question of how to refer to a third party brand properly without infringing that party's proprietary rights. This issue also arises when a company offers a service that directly relates to an already existing third party product offering and that company wants to reference the third-party brand in order to describe the services it offers (and the relative advantages).

US trade mark law provides a party with the ability to make a "fair use" of another party's registered trade mark under certain specific situations. Typically, US law recognizes two types of uses of a third party trade mark that constitute a "fair use" of that mark, each of which apply in different circumstances yet both constitute non-infringing uses. These two types of fair use are traditionally described broadly as "classic fair use" and "nominative fair use".

A "classic fair use" is recognized, generally, when a junior user uses a third party trade mark only to describe their product or service offerings, their geographic origin or the name of the person running the business. For example, if a mark is registered to a third party but is descriptive of a type of goods or services, use of that mark in a purely descriptive sense would likely constitute a "classic fair use".

A "nominative fair use", on the other hand, is acknowledged when a junior user uses the third party mark to describe the third party's goods or services (even in circumstances when the junior user's ultimate goal is to describe its own products or services). An example of a "nominative fair use" of a third party mark would include a repair shop which advertises that it repairs a certain type of product manufactured by a third party. The standard typically applied to ascertain whether a use of a third party mark constitutes a nominative fair use is if: (1) the use of the term is not as a trade mark or service mark; (2) the term is used fairly and in good faith; and (3) the term is used only to describe the goods or services offered.

Companies should be cautioned that not all uses of a third party trade mark qualify as "fair uses" and there are often risks associated with using someone else's registered trade mark. Therefore, it is recommended that any proposed advertising or promotional pieces which reference a third party's trade mark be reviewed by US trade mark counsel prior to being used in the marketplace.

Karen Artz Ash and Bret J Danow

Katten Muchin Rosenman LLP
575 Madison Avenue
New York
New York 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com 
www.kattenlaw.com