19
May/16

Spot the Differences in These Nominative Fair Use Tests


Here is the first factor from the Ninth Circuit nominative fair use test, courtesy of the New Kids on the Block case:

First, the product or service in question must be one not readily identifiable without use of the trademark;

Here’s the first factor from yesterday’s Second Circuit decision:

(1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark;

Ninth
Circuit second factor:

second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service;

Second Circuit second factor:

(2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service;

Ninth
Circuit third factor:

third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Second Circuit third factor:

(3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services.

What are the differences and significances thereof? OK, pencils down.

Here’s Prof. Goldman’s sample answer.

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