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Trademark Nominative Fair Use: Navigating the Affirmative Defense, Comparison With Statutory Fair Use, Court Treatment

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Monday, November 20, 2023

Recorded event now available

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This CLE course will provide guidance for IP counsel on nominative fair use. The panel will compare it with statutory fair use and examine it as an affirmative defense. The panel will also discuss the relationship to confusion and its impact on comparative advertising strategies and provide best practices for nominative fair use.


The Lanham Act has long recognized the concept of "statutory" or descriptive fair use which allows the use of a term even if it is a trademark provided that the use is consistent with its ordinary meaning, is not used as a trademark, and is made in good faith. In 1992, the Ninth Circuit coined the term "nominative fair use" to describe the use of a trademark other than by its owner for purposes of identifying the trademarked product.

In the seminal New Kids on the Block decision the Ninth Circuit posited that such use would not be an infringement if (1) the product or service in question is not readily identifiable without use of the trademark, (2) the user only takes what is reasonably necessary to identify the product, and (3) the user does nothing to suggest that he is connected to or sponsored by the trademark owner.

Fair use cases were relatively rare until around 2000, but the number of both statutory fair use and nominative fair use cases has substantially increased since. Many questions still arise about the interplay between confusion and both statutory fair use and nominative fair use, the proper test for addressing confusion in such cases, and who bears the burden of proof.

Listen as our authoritative panel of IP attorneys briefly compares nominative fair use with statutory/classic fair use. The panel will discuss statutory fair use and explain the issue of what it means for fair use to be an affirmative defense and then examine nominative fair use, exploring it as an affirmative defense, its relationship to confusion, its impact on comparative advertising strategies, and court treatment of nominative fair use. The panel will also provide best practices for nominative fair use.



  1. Statutory fair use
    1. Does confusion matter in deciding if a use is statutory fair use?
    2. What is "use other than as a trademark"?
    3. Implications on brand clearance and enforcement
  2. Nominative fair use
    1. Is this an affirmative defense or just a category of cases that requires a different test for evaluating likely confusion?
    2. Should the strength of a mark matter in a nominative fair use case?
    3. When is use of a trademark reasonably necessary to describe a product or service?
    4. How are the circuit courts treating nominative fair use?
  3. Statutory and nominative fair use
    1. Best practices for both
    2. Litigation strategies


The panel will review these and other key issues:

  • What factors should counsel consider when analyzing nominative fair use?
  • Is nominative fair use an affirmative defense or just another way of analyzing confusion?
  • How have the courts addressed the issue of nominative fair use and its application?
  • What is the impact on a brand owner when AI generates content for a third party that includes a trademark or slogan?
  • Are third-party uses on social media nominative or classic fair use, or something else entirely?


Ballon, Ian
Ian C. Ballon

Shareholder, Co-Chair Global Intellectual Property & Technology Practice Group
Greenberg Traurig

Mr. Ballon represents Internet, technology, entertainment companies and social networks in internet-related...  |  Read More

Dalton, Joshua
Joshua M. Dalton

Partner, Leader Global Trademark and Copyright Practice
Morgan Lewis & Bockius

As a pretrial, trial, and appellate lawyer in IP litigation, Mr. Dalton takes a bold, creative approach to resolving...  |  Read More

Tandy, Heidi
Heidi Howard Tandy

Berger Singerman

Ms. Tandy has handled matters involving the internet, social media, privacy, intellectual property and tech law issues,...  |  Read More

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