A new action in Texas once again calls into question the breadth of the doctrine of “nominative fair use” in trademark. Boiled to its essentials, it allows a party to use a trademark, without permission, in order to refer to the actual goods of the trademark holder. Here’s part of what the International Trademark Association says about nominative fair use.
“‘Nominative fair use’ means the use of another’s trademark to refer to the genuine goods or services associated with the mark. The term “nominative” reflects that the mark generally is the most informative name for the specific goods or services intended to be referenced. As explained by one U.S. federal court of appeals:
With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute, and a problem closely related to genericity and descriptiveness is presented when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).
Nominative fair use generally is permissible as long as (1) the product or service in question is 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) use of the mark does not suggest sponsorship or endorsement by the trademark owner.” ( (c) 2015 International Trademark Assoc. (INTA))
Obviously, trademark holders generally dislike the nominative use doctrine. It allows others to effectively bootstrap from an established mark for their own benefit. For example, if I want to sell replacement parts for FORD (TM) products, my friends in Dearborn, Michigan, who also sell parts for their own cars, are not going to be happy.
In the Texas action (Mary Kay vs. RetailMeNot Complaint) the cosmetics giant Mary Kay, who does not sell directly to the public or issue online coupons, accuses coupon site RetailMeNot of trademark infringement for what it terms coupons “concerning, relating, and referring to Mary Kay products and services.” But is Mary Kay trying, as RetailMeNot answers, “to unilaterally restrict freedom and limit consumers’ freedom of choice, which would render the Internet less open, less informative and and less useful as a tool for consumers seeking to search for, share, gather and discuss information about merchants and the products and services they offer in the marketplace.” (RetailMeNot Answer) So far, looks pretty good for RetailMeNot. After all, if you wanted to buy Mary Kay cosmetics, you would be hard-pressed to find them without identifying the term “Mary Kay” in your search. So, this is a clear-cut case of nominative fair use, as RetailMeNot claims? Not so fast.
Remember points 2 and 3 from INTA. To successfully make the defense, you have to only use so much of the mark as necessary to make the identification, and must not “suggest sponsorship or endorsement by the trademark owner.” These are likely to be very fact, and opinion, intensive questions. As to only using so much of the mark as necessary to make the identification, it might be one thing to use the words “Mary Kay,” but entirely something else to include the logo or special colors or appearances that are associated with the product. As to the last point, not suggesting sponsorship or endorsement, one can only speculate what types of language, disclaimers or notices might be required to pass muster.
So the real question that remains is, how much viability is there really in “nominative fair use?” Is it a real defense for the average defendant, or one that is so balanced on subjective facts that only the most well-heeled of defendants can afford to invoke it, and face the litigation consequences that ensue?