Trademark Nominative Fair Use: Guidance for IP Counsel
Navigating the Affirmative Defense, Comparison With Statutory Fair Use, Understanding Court Treatment
Recording of a 90-minute premium CLE webinar with Q&A
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 explore the relationship to confusion and its impact on comparative advertising strategies and provide best practices for nominative fair use.
- Compare nominative fair use vs. statutory/classic fair use
- Statutory fair use
- Does confusion matter in deciding if a use is statutory fair use?
- What is “use other than as a trademark”?
- Implications on brand clearance and enforcement?
- Nominative fair use
- Is this an affirmative defense or just a category of cases that require a different test for evaluating likely confusion?
- Should the strength of a mark matter in a nominative fair use case?
- When is use of a trademark reasonably necessary to describe a product or service?
- The differences between the Third Circuit approach in Century 21 v. Lending Tree and the Ninth Circuit.
- What do the other circuit courts say about the doctrine?
- Best practices for both statutory and nominative fair use
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?
Kilpatrick Townsend & Stockton
Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex... | Read More
Mr. Feingold's practice focuses on trademark, copyright, advertising and Internet matters. He has handled complex trademark litigation matters and sophisticated transactional projects. He advises clients with large global portfolios on how to effectively and efficiently manage and utilize these assets to further their business objectives privacy issues and other Internet-specific problems.Close