Trademark Fair Use: Descriptive and Nominative Use Defenses

Trademark fair use doctrines carve out legally recognized spaces where third parties may use another party's mark without constituting infringement. Two distinct defenses — descriptive fair use and nominative fair use — operate under different legal tests and apply in different factual circumstances. Understanding the classification boundaries between these doctrines is essential to evaluating infringement risk across trademark law disputes involving comparative advertising, product descriptions, and reference use.

Definition and scope

Trademark fair use is grounded in the principle that trademark rights do not grant a monopoly over language or the ability to identify competitors. The Lanham Act, 15 U.S.C. § 1115(b)(4), codifies the classic (descriptive) fair use defense as a limitation on the incontestability of a registered mark. Nominative fair use, while not separately codified in the Lanham Act, has been developed by federal circuit courts — most prominently by the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) — as a judicially created doctrine.

The two defenses address fundamentally different use scenarios:

• Descriptive (classic) fair use applies when a defendant uses a word or phrase not as a trademark, but to describe the defendant's own goods or services in their primary, descriptive sense.
• Nominative fair use applies when a defendant uses the plaintiff's actual mark to refer to the plaintiff's own goods or services — for example, to identify the markholder's product in a comparison or review.

Both defenses are affirmative defenses, meaning the burden of raising and supporting them shifts to the party accused of infringement. The USPTO's Trademark Manual of Examining Procedure (TMEP) addresses descriptive use considerations in the context of mark registration and examination, though the fair use defenses themselves are litigated rather than examined administratively.

How it works

Descriptive fair use requires satisfying a 3-part test. The defendant must show that:

The Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), confirmed that a defendant asserting classic fair use need not prove an absence of consumer confusion — some degree of confusion is compatible with a successful fair use defense, though it remains a relevant factor in weighing good faith.

Nominative fair use under the Ninth Circuit's framework requires that:

The Third Circuit applies a different analytical structure, treating nominative fair use as part of the likelihood-of-confusion analysis rather than as a separate affirmative defense. This circuit split means the procedural and evidentiary treatment of nominative claims varies by jurisdiction — a point directly relevant to regulatory context for trademark law across federal districts.

Common scenarios

Geographic and descriptive terms. A manufacturer of Wisconsin cheese using the word "Wisconsin" to describe geographic origin invokes classic fair use. The term is being used in its descriptive sense, not as a source identifier.

Comparative advertising. An automotive retailer stating "our service costs 40% less than [Competitor Brand]" uses the competitor's mark to refer to the competitor — a paradigm nominative fair use scenario, provided the use does not imply sponsorship or suggest the markholder endorses the comparison.

Resellers and repair services. An independent repair technician advertising service for "Apple devices" or "BMW vehicles" uses the manufacturer's mark to identify what product is being serviced. Courts applying the nominative fair use doctrine have recognized this as a legitimate reference use when the technician neither claims affiliation nor uses more of the brand's trade dress than necessary. This scenario is directly related to issues covered under trademark infringement.

Product reviews and journalism. A publication reviewing a product by its trademarked name — covering, for example, the performance of a Nike running shoe or a Rolex timepiece — uses the marks nominatively. No alternative vocabulary exists to identify those specific products without using the marks.

Parts and compatibility claims. A parts manufacturer stating its component is "compatible with [Brand X]" may qualify for nominative fair use if the use stops at identification and does not imply certification, endorsement, or licensing by Brand X. The line between permissible compatibility language and false affiliation claims under 15 U.S.C. § 1125(a) is fact-specific.

Decision boundaries

The critical distinction between the two doctrines is whose goods are being described. Classic fair use involves describing the defendant's own goods using a term that the plaintiff has trademarked. Nominative fair use involves referring to the plaintiff's goods by using the plaintiff's mark.

A second boundary concerns good faith. Both doctrines require that use not be in bad faith or intended to create confusion. Evidence of deliberate copying of logo styling, trade dress elements, or prominent placement suggesting endorsement weighs against a fair use finding regardless of which doctrine is invoked.

A third boundary separates permissible reference use from implied endorsement. Nominative use becomes problematic when the third party's materials visually or contextually suggest an official relationship. For example, using a mark in a way that mimics licensed partner branding — through similar color schemes, certification-style logos, or "authorized by" language — defeats the nominative defense even if the underlying product reference is accurate.

The likelihood-of-confusion standard remains relevant to both doctrines. Under KP Permanent Make-Up, confusion alone does not defeat classic fair use, but it informs good faith analysis. Under most circuit formulations of nominative fair use, a finding that the use creates a false impression of sponsorship effectively ends the defense.

Trademark fair use intersects with trademark parody and First Amendment protections in expressive contexts, though parody operates under a distinct analytical framework from either fair use doctrine.