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Trademark Fair Use: Update and Overview

Recorded on: Dec. 12, 2016
Running Time: 01:03:00
Taken from the briefing Trademark Fair Use:  Update and Overview recorded December, 2016 in New York.

This Briefing will address "trademark fair use," a frequent and puzzling issue in day-to-day trademark practice. The occasion is an important 2016 opinion from the United States Second Circuit Court of Appeals, Int’l Information v. Security University, 823 F3d 153, 2016 BL 157781, __USPQ2d __ (2d Cir 2016). This case has significantly added to the jurisprudence of trademark “fair use,” in particular, “nominative fair use.” The Court reviewed precedent on the subject principally from the U.S. Supreme Court, and Third and Ninth Circuits. The Second Circuit then structured its own multi-factor test to be applied to nominative fair use cases. As part of the opinion, the Second Circuit distinguished “classic, descriptive trademark fair use” jurisprudence. The court also considered whether nominative fair use is an “affirmative defense” and the kinds of relevant evidence bearing on it.

Nominative fair use sometimes overlaps with descriptive fair use. The Briefing will also present a number of recent and oft-cited older precedents in the field. Issues include the degree of descriptiveness of the mark in question, the intent of the defendant, the fairness of the use, and whether the use is “otherwise than as a trademark.” The last question is especially difficult, being fact-driven and highly unpredictable in judicial decisions. Actual label and advertising usages from the precedent cases will be illustrated in the Briefing as examples of what courts have judged to be fair uses or not.

Lecture Topics  [01:03:00]

Listen to Laura C. Gustafson and Richard L. Kirkpatrick of Pillsbury Winthrop Shaw Pittman LLP for a discussion on the following topics:

  • Overview of nominative and classic trademark fair use
  • Recent Second Circuit trademark case, Int’l Information v. Security University
  • U.S. Supreme Court, Third Circuit and Ninth Circuit trademark precedents
  • Illustrations of adjudicated fair uses
  • Practical pointers to defend and attack claimed fair uses

Presentation Material

  • Principles of Likelihood of Confusion
    Laura C. Gustafson, Richard L. Kirkpatrick
  • Trademark Fair Use & Likelihood of Confusion
    Laura C. Gustafson, Richard L. Kirkpatrick
Speaker(s)
Laura C Gustafson ~ Pillsbury Winthrop Shaw Pittman LLP
Richard L Kirkpatrick ~ Pillsbury Winthrop Shaw Pittman LLP
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