〈日本知財学会誌〉Vol.5 No.4 ― 2009 : 23 ― 43

Permitted Use of Trademarks in the UnitedStatesJohn McDermott （Professor of Law, Loyola Law School of Los Angeles）＊

The U. S. Trademark Act has a single “fair use” provision allowing “descriptive uses” of registered trademarks.
But US courts have created an expansive range of permitted usages designed to serve the underlying policy of
the U. S. trademark law: to prevent unfair competition while encouraging vibrant fair competition. For this reason,
the use of another’s mark will be permitted ― not only when the use is not likely to cause confusion as to sourceor sponsorship ― but even when it does, when the use is necessary to promote real competition.
■ KEYWORDS

Trademark, Dilution, Fair Use, Confusing Use, Non-infringing use“intellectual property”（although it frequently is）

1．Introduction

so it is not based on the “intellectual property
clause” but on the Commerce Clause of the U.S.

In the United States, legislative authority,

Constitution.4 Its purpose is to regulate interstateincluding the authority to enact laws governingand international commerce by preventing unfair

the use of patents, trademarks and copyrights, iscompetition resulting from confusing, misleading

limited by the Constitution. The so-called

and/or deceptive use of trademarks. Unlike the“intellectual property clause” of the U.S.

U.S. Copyright Act, it does not contain a list of

1

Constitution has been held to require a balancing

permitted “fair uses” of registered trademarks.5of the rights of inventors and writers with those

However, unlike the Copyright Act, the Lanhamof other subsequent inventors and writers and the

Act does not give the trademark holders 6 the2general public. With respect to copyright, it does

“exclusive right” to use their trademarks, but

so by allowing the use of copyrighted works bymerely the right to prevent others from using

others without permission of the copyrightthem in a manner which “is likely to cause

owners. These exceptions ― “fair use” ― to theconfusion, or to cause mistake, or to deceive.”7

copyright owners’ exclusive rights are codifiedThus, but omission, any use which is not confusing,primarily in Section 107 of the 1976 Copyrightmisleading and/or deceptive should not prevented.

3

Act.

Since the policy underlying the U.S. Trademark

United States trademark law ― codified in the

Act is to promote fair competition, even a use

Lanham Act ― cannot technically be classified aswhich may cause some confusion might bepermitted to further competition.

＊

The author must acknowledge the invaluable assistanceprovided by his research assistant, Sophia Sarwar, third year law
student at Loyola Law School, in the preparation of this paper.

ISSN 1349 ― 421X
蘓 2009 IPAJ All rights reserved.

This paper will discuss a range of non-confusing23

〈日本知財学会誌〉Vol.5 No.4 ― 2009

uses and a number of permitted, potentiallyquite similar trademarks for their boats: Slickcraft

confusing uses. It will conclude with a briefby the first user and Sleekcraft by the second

discussion of the non-confusion uses prohibited byuser.12 Notwithstanding the obvious similarity ofthe very expansive ― and in the author’s opinion

the words and the fact they were both used on― unwise and unnecessary anti-dilution provisionsimilar products in similar markets, the Court ofof the Lanham Act.

Appeals affirmed the District Court’s refusal toprohibit the second user from continuing to use its

2．Non-confusing Uses

mark. The primary justification was that thedefendant had been unaware of the plaintiff’s use

The most prevalent type of non-infringing useof the Slickcraft mark when he adopted theby an unauthorized third person is, of course, a

Sleekcraft name and, therefore, he acted in good

non-confusing use since traditional trademark law

faith.

and policy only prevents the use of another’smark ― or something arguable similar to it ―The second case involves the use of two quite

which is “likely to cause confusion, or to cause

different trademarks13 ―“Jellibeans” and “Lollipops”14

mistake, or to deceive.”8 An absence of a likelihood― for skating rinks in Atlanta, Georgia. 15 Inof confusion can result when the alleged infringing

November 1979, Jellibeans, Inc. opened a roller

mark is not sufficiently similar in sight, sound, orrink in Atlanta, called named “Jellibeans.” Its use

meaning to be confused with the protected markof a candy name for its rink was unique amongin the mind of an ordinary consumer. In addition,

Atlanta roller rinks. The rink was a success fromeven a mark that is similar in sight sound or

the outset. Defendant owned and operated ameaning will not be prohibited if it is being used

number of skating rinks in the Atlanta area ― allon a product or service― or in a market ― different

were called “Skating Clubs” and named them after

from those in which the objecting party has been

the communities in which they were located, e. g.,

9using the mark. For example, the use of theSouth Cobb Skating Club. Soon after Jellibeansinternationally known “Hershey bar” for advertising

opened, the defendant decided to open a new

a new line of furniture was found to be a non-skating rink to be called: “Lollipops Disco Roller

infringing use in The Hershey Company v. Art Van

Rink.”

10

Furniture, Inc.

The trial court suspected Skating Clubs’ intent,
Whether marks used on competing products

and found that it selected Lollipops “with theare too similar to be permitted depends on aintent of confusing consumers with Jellibeans,11

the most important of which

Inc.’s successful mark, Jellibeans.” The Court ofis the apparent intent of the second user. The

Appeals upheld that decision16 and found that the

court examines whether the second user choseplaintiff had established “a likelihood of confusion”

the name ― particularly if it is a unique name for

and, therefore, defendant was not permitted to use

the product or service ― to confuse the customers

the allegedly similar trademark.

number of factors,of the first user. Two cases illustrate theimportance of intent.
Two manufacturers of pleasure boats adopted
24Permitted Use of Trademarks in the United States

3．Confusing ― or Potentially
Confusing ― Uses

seasoned corn flour batter mix used for, again, notsurprisingly, frying chicken and other foods.
Zatarain’s products are not alone in the

A. Descriptive uses

Generic marks ― words or phrases which aremarketplace. At least four other companies

the commonly used terms to describe a particularmarket coatings for fried foods that are denominatedproduct or service ― are not protected under the“fish fry” or “chicken fry.” One of them, Oak Grove

Lanham Act, but words and phrases that are to

Smokehouse, Inc., began marketing a “fish fry”

some degree descriptive may be protected if they

and a “chicken fry” in March 1979. The packets

have acquired “secondary meaning.” However, a

are labeled with Oak Grove’s name and emblem,

word or phrase which has acquired “secondary

along with the words “Fish Fry” or “Chicken Fry.”meaning,” e. g., is commonly recognized bypurchasers to refer to a particular source of theZatarain’s sued Oak Grove in 1979 alleging

goods and services, does not lose its descriptive

trademark infringement and unfair competition

character; it still can be used to describe theunder the Lanham Act. The district court

goods or services. If the trademark holder wereclassified the term “Fish-Fri” as a descriptive termallowed exclusive rights in such generic use, theidentifying a function of the product being sold,competition might find it difficult to describe its

but found that it had acquired a secondary

goods and services to the public. The Lanham Act

meaning in the New Orleans geographical area

specifically recognizes a “fair use” defense where

and therefore was entitled to trademark protection.

the mark is used only “to describe the goods or

However, the court concluded that the defendantservices of［a］party, or their geographic origin.”17

was entitled to use the term “fish fry” to describe“The ‘fairuse’ defense, in essence, forbids acharacteristics of its goods. The court similarly

trademark registrant to appropriate a descriptive

held that “Chick-Fri” was a descriptive term but

term for his exclusive use and so prevent others

that it had not acquired a secondary meaning infrom accurately describing a characteristic of

the minds of consumers. It dismissed the suit and18ordered that the trademark registration of “Chick-their goods.”

Fri” should be cancelled. Zatarain’s appealed.
An example of the application of this type of“fair use,” and an illustration of the role of“secondary meaning”

19

On appeal, Zatarain’s argued that the termin determining the extent“Fish-Fri” was a suggestive mark automatically20

protected from infringing. Oak Grove asserted

that a descriptive term

can be protected in the

United States, can be found in Zatarain’s Inc. v.

that “fish fry” was a generic term identifying a

Oak Grove Smokehouse, Inc. 21 Zatarain’s is theclass of foodstuffs used to fry fish; alternatively,

manufacturer and distributor of a wide variety ofthat “fish fry” was merely descriptive of thefood products, including coatings or batter mixes

characteristics of the product.

used to fry foods. Two of these products, “FishFri” and “Chick-Fri,” are covered by registered

The Court of Appeals agreed that “Fish-Fri”

U.S. trademarks. Zatarain’s “Fish-Fri” consists of

was a descriptive term identifying a function of

100 ％ corn flour and, not surprisingly, is used tothe product being sold:fry fish and other seafood. “Chick-Fri” is a25

〈日本知財学会誌〉Vol.5 No.4 ― 2009

Whenever a word or phrase conveys an

to be prepared. Even piscatorial gastronomes

immediate idea of the qualities, characteristics,

would agree, however, that frying is a form ofeffect, purpose, or ingredients of a product or

preparation accepted virtually around theservice, it is classified as descriptive andworld, at restaurants starred and unstarred.

cannot be claimed as an exclusive trademark.

The paucity of synonyms for the words “fish”
and “fry” suggests that a merchant whose

The Court turned to a standard English

batter mix is specially spiced for frying fish islanguage dictionary for help as “the dictionary

likely to find “fish fry” a useful term fordefinition of the word is an appropriate anddescribing his product.

relevant indication of the ordinary significanceand meaning of words’ to the public.” It found that

But, descriptive terms may be protectable byWebster’s Third New International Dictionary 858

trademark if the trademark holder, Zatarain’s in（1966）lists the following definitions for the term

this case, can establish that its mark, “Fish-Fri,”“fish fry”: “1. a picnic at which fish are caught,

has acquired a secondary meaning. Factors suchfried, and eaten; . . . . 2. fried fish.” It concluded

as amount and manner of advertising, volume ofthat the basic dictionary definitions of the term

sales, and length and manner of use may serve as

refer to the preparation and consumption of friedcircumstantial evidence relevant to the issue offish, “evidence that the term “Fish-Fri” issecondary meaning.

descriptive of Zatarain’s product in the sense thatthe words naturally direct attention to the
purpose or function of the product.”

The facts showed that since 1950, Zatarain’s andits predecessor had continuously used the term
“Fish-Fri” to identify this particular batter mix

An alternative test used by U.S. courts toand through the expenditure of over $400,000 for

classify descriptive marks is to determine

advertising between 1976 and 1981, Zatarain’s had“whether competitors would be likely to need thepromoted its name and its product to the buying

terms used in the trademark in describing their

public. From 1964 through 1979, Zatarain’s soldproducts.” The Court concluded that “common

almost one million cases of “Fish-Fri.”

sense indicates that in this case merchants otherthan Zatarain’s might find the term “fish fry”

The court of appeals agreed with the district

useful in describing their own particular battercourt that this evidence established a finding thatmixes.” It rejected the argument that Oak Grove

Fish-Fri had acquired “secondary meaning.”22

could have chosen from dozens of other possible
terms in naming their coating mix:

Notwithstanding the determination that Zatarain’s
term “Fish-Fri” is a valid trademark and is valid

As this court has held, the fact that a termby virtue of having acquired a secondary meaning,

is not the only or even the most common

the Court held that “Zatarain’s has no legal claim

name for a product is not determinative, forto an exclusive right in the original, descriptive

there is no legal foundation that a productsense of the term and Oak Grove is still free tocan be described in only one fashion. Thereuse the words ‘fish fry’ in their ordinary, descriptive

are many edible fish in the sea, and as many

sense, so long as such use will not tend to confuse

ways to prepare them as there are varieties

customers as to the source of the goods.”

26

Permitted Use of Trademarks in the United States

Turning to “Chick-Fri,” the court concluded it

competitors, including ComponentOne. They

was at least as descriptive of the act of frying

conducted a search of internet domain names andchicken as “Fish-Fri” is descriptive of frying fishdiscovered that “componentart.com” was available.

and, therefore, had to be classified as a descriptive

Cyberakt registered the “componentart. com”

term. But, here the Court found that Zatarain’s

domain name in December 2002 and then changed

had not used Chick-Fri as long as it had usedtheir name to “ComponentArt.” They claim to

Fish-Fri and had not extensively promoted it inhave chosen the name because it “signified thethe market place, so it had failed to establish thatmarriage of technology and creativity” because

Chick-Fri had acquired secondary meaning. Since“Art” suggests creativity and uniqueness anda descriptive mark which has not acquired“Component” identifies the company’s coresecondary meaning cannot be registered under

product.

U.S. law, the registration was ordered canceled.
Not surprisingly, ComponentOne eventually
From a “fair use” perspective, this decision

sued ComponentArt for trademark infringement.24

seems to mean that a descriptive mark can be

In determining whether a likelihood of confusion

used by competitors for descriptive purposes

existed, the trial court focused on the similarity ofregardless of whether or not the mark is a federally

the parties’ marks ―“［t］he single most important

protected registered trademark.

factor in determining likelihood of confusion.”25
The court noted that when the parties are direct

A related situation occurs when two or morecompetitors, as they were in the case, “the degreecompetitiors use a descriptive word as a componentof similarity required to prove a likelihood ofof their trademarks. ComponentOne, L. L. C. v.

confusion is less than in the case of dissimilar

ComponentArt, Inc.

23

is an excellent example. The

products.”

two companies develop, sell, and provide support
for users of reusable software tools designed to be

Faced with what may have seemed an impossible

integrated into larger software applications. Suchtask, defendant contended that when the common“tools” are commonly referred to as “components.”“component” of the two marks is a generic or

One company ― ComponentOne ― was formed in

descriptive term, the similarity is entitled toJuly 2000 when two companies merged, both ofminimal weight in the court’s analysis. The trial

which were allegedly “top sellers” of components.

court agreed:

The new company chose the name “ComponentOne”
because it suggested “one source for ComponentOne’s“Component” is the common term used to

products.” ComponentOne filed a trademark

describe the reusable software designed to be

application in July 2000; it was registered without

integrated into larger software applications

opposition in January 2003.

that the parties manufacture, sell, and provide
support services for and is therefore generic.

The firm now known as ComponentArt was

ComponentOne concedes as much when it

also formed in 2000, originally under the namestates, “‘component’ . . . is among the terms“Cyberakt Inc.” It began developing components

available to reference the products sold.”shortly thereafter. In the process of looking for a
new name they researched competitors and potential

If a portion of a mark is generic, its presence27

〈日本知財学会誌〉Vol.5 No.4 ― 2009

affects the analysis of whether a competitor’sLasting sued K.P. Permanent Make-Up for using

mark containing the same generic term is likely tothe term. Because the mark had become

create confusion and “the emphasis of enquiry“incontestable,” K.P. could not challenge theshould be upon the confusing similarity of the non-validity of the mark, 29 but could ― and did ―generic portion, with the ultimate issue determined

contend that its use was a statutory “fair use” asby the confusing similarity of the total impression

it was using the term descriptively, not as a26

of both marks.” Thus, the Court will evaluate thetrademark, only to describe its products.30 The

similarity of the entire marks of the parties

district court sided with K.P. and Lasting appealed

minimizing the effect of the common term

to the Ninth Circuit Court of Appeals.

“component.” The court found that the remaining
terms―“one” and “art”― are “obviously substantially

Unlike other federal appellate courts, the Ninth
Circuit requires anyone asserting a fair use

dissimilar” in sight, sound and meaning.

defense to prove there was no likelihood of
After considering all other factors, the District

confusion in its use of the term. Here, the Panel

Court granted ComponentArt’s motion forfound that there was likelihood of confusion andsummary judgment on ComponentOne’s trademark

reversed the district court’s ruling.

infringement, unfair competition and false
The Supreme Court ― in a relatively rare quasi-

designation of origin claims.

unanimous decision31 ― held that a party raising
There was a dispute among the lower federal

the statutory affirmative defense of fair use to a

courts as to whether a person asserting a fair use

claim of trademark infringement does not have adefense to an infringement claim had the burden

burden to negate any likelihood that the practiceof proving that the challenged use did not create acomplained of will confuse consumers about thelikelihood of confusion or whether the trademark

origin of the goods or services affected. The Court

holder had the burden of proving the existence ofinterpreted Section 1115（b）as placing thea likelihood of confusion. This disagreement

burden of showing likelihood of confusion on theseemed to mask an even more important issue ―party charging infringement.

can a fair use defense be maintained even if somelevel of confusion is likely and, if so, what degree

As to whether a finding that a likelihood ofconfusion would occur if the mark was used,of confusion will be tolerated.

Justice Souter remarked rather cryptically,
The U.S. Supreme Court answered the first“Congress said nothing about likelihood ofquestion rather definitively in KP Permanent Make-

confusion in setting out the elements of the fair

Up, Inc. v. Lasting Impression I, Inc.27 ― at least withuse defense.” He added in Footnote 4, “Not only

respect to the sole statutory fair use defense ―that, but the failure to say anything about aand seems to come close to answering the second

defendant’s burden on this point was almost

question.

certainly not an oversight, not after the House
Subcommittee on Trademarks declined to forward

Lasting Impression registered the term “microa proposal to provide expressly as an element ofcolors” and used it long enough without being

the defense that a descriptive use be ［un］likely‘

28

challenged, for the mark to become “incontestable.”28

to deceive the public.’”32

Permitted Use of Trademarks in the United States

Notwithstanding the disagreement over three ofthe relevance of the extent of any likely

the footnotes, the entire court seemed to agree

consumer confusion in assessing whether awith the following statement in the Opinion:

defendant’s use is objectively fair.

Since the burden of proving likelihood of...

confusion rests with the plaintiff, and the fairuse defendant has no free-standing need toSince we do not rule out the pertinence ofshow confusion unlikely, it follows（contrary

the degree of consumer confusion under theto the Court of Appeal’s view）that somefair use defense, we likewise do not pass upon

possibility of consumer confusion must be

the position of the United States, as amicus,

compatible with fair use, and so it is. The

that the “used fairly” requirement in § 1115

common law’s tolerance of a certain degree of（b）（ 4）demands only that the descriptive

confusion on the part of consumers followed

term describe the goods accurately. Accuracy

from the very fact that in cases like this oneof course has to be a consideration in assessing

an originally descriptive term was selected tofair use, but the proceedings in this case so

be used as a mark, not to mention the

far raise no occasion to evaluate some other

undesirability of allowing anyone to obtain aconcerns that courts might pick as relevant,complete monopoly on use of a descriptive

quite apart from attention to confusion. The

term simply by grabbing it first. The Lanham

Restatement raises possibilities like commercial

Act adopts a similar leniency, there being nojustification and the strength of the plaintiff’s

indication that the statute was meant tomark. Restatement § 28. As to them, it isdeprive commercial speakers of the ordinary

enough to say here that the door is not closed.

utility of descriptive words. “If any confusion
results, that is a risk the plaintiff accepted

B. Comparative Advertisingwhen it decided to identify its product with a

As was true with respect to the use of protectable

mark that uses a well known descriptive

descriptive marks, comparative advertisingphrase.”typically involves direct competition between theparties and the use of an identical mark. But in（Citations omitted.）

comparative advertising, the copied mark is notnecessarily a “weak（descriptive）mark” used in

Perhaps to make his position even clearer,
Justice Souter added:

a descriptive manner by, for example, changing“Fish-Fri 獏” to “fish fry” but often involves the useof a very strong and well-established mark（andWhile we thus recognize that mere risk ofconfusion will not rule out fair use, we think iteven its appearance or “trade dress” in its originalform）,to compare one to the other:would be improvident to go further in thiscase, for deciding anything more would takeIn the United States, truthful comparative

us beyond the Ninth Circuit’s consideration ofadvertising is neither trademark infringement nor

the subject. It suffices to realize that our

unfair competition.33 As noted by the Third Circuit,holding that fair use can occur along with［t］“
he use of a competitor’s trademark for purposessome degree of confusion does not forecloseof comparative advertising is not trademark
29

〈日本知財学会誌〉Vol.5 No.4 ― 2009

Figure 1. Sample Comparative Advertisement

infringement ‘so long as it does not contain

C. Functional Use

misrepresentations or create a reasonable likelihood

1. Artistic Usethat purchasers will be confused as to the source,

A descriptive use is only one situation whenidentity, or sponsorship of the advertiser’s

one makes an unauthorized use of another’s mark34

U.S. courts have acknowledged theas part of a “communicative message” and not as

benefits of comparative advertising as a useful toola source identifier. In such cases, some U.S. courts

35

have found a fundamental conflict between the

Even the U.S. Federal Trade Commission endorses

First Amendment to the U.S. Constitution37 andthe use of comparative advertising:

the rights of trademark holders. In recognition of

product.’”

for consumers in making purchasing decisions.

this potential conflict, the Second Circuit has
Comparative advertising, when truthful andconstrued the Lanham Act narrowly when thenondeceptive, is a source of importantunauthorized use of the trademark is for the

information to consumers and assists them inpurpose of a communicative message, rather thanmaking rational purchase decisions. Comparative

identification of product origin. Thus, where theadvertising encourages product improvement

unauthorized use of a trademark is for expressive

and innovation, and can lead to lower prices

purposes of comedy, parody, allusion, criticism,in the marketplace.

news reporting, and commentary, the law requires
a balancing of the rights of the trademark owner

While some courts tend to presume a near total

against the interests of free speech.

lack of potential for confusion, others recognize
the real risk and either consider it counterbalanced

In Rogers v. Grimaldi, 38 the Second Circuitby the great benefit to consumers or require theadopted a balancing test for trademark infringement

advertiser to include a disclaimer indicating thatin cases implicating artistic expression to

the advertiser is not affiliated in any way with theaccommodate these dual interests: “［ T］he

manufactures of the competing product.
30

36［Lanham］Act should be construed to apply toPermitted Use of Trademarks in the United Statesartistic works only where the public interest in

The Rogers test was subsequently used to

avoiding consumer confusion outweighs the public

uphold a visual artist’s right to incorporate

interest in free expression. . . . It insulates fromtrademarks into realistic paintings of a racetrack

restriction titles with at least minimal artistic

in New York Racing Ass’n v. Perlmutter Publishing.41

relevance that are ambiguous or only implicitly

The court held that “the use of Plaintiff’s marks inmisleading but leaves vulnerable to claims ofreproductions of paintings that depict scenes

deception titles that are explicitly misleading as towhere the mark actually appears in the scene

source or content, or that have no artistic relevancedepicted, serves an artistically relevant purpose

39

at all.”（realism）, while the need to avoid consumer
confusion in this case is de minimis.” The court

In the case mentioned above, Ginger Rogers

noted, however, that it might have ruled against（half of the immortal dance and film team of

the artist if the artist’s paintings depicted a “markGinger Rogers and Fred Astaire）claimed a film’s［that］does not actually exist in the scene

title ―“Ginger and Fred”― would suggest that the

depicted.”42

film was about them or, at a minimum, wasapproved by them. In truth, the movie, directed

2. Aesthetic Functionality

by Frederico Fellini, was not about them, but

Generic words and functional designs are notabout two Italian cabaret dancers who dreamed ofregistrable43 and ― at least in theory ― free for all

becoming as famous as Ginger Rogers and Fred

to use. Indeed, the U.S. Supreme Court has madeAstaire.

it clear that a feature which is or was protectedby a U.S. utility patent cannot serve as protected

There can be little doubt that the movie title

trade dress even if it has acquired secondary“Ginger and Fred” was highly susceptible tomeaning and even if there are alternative shapes

consumer confusion. Many consumers may haveor designs available to competitors.44 However,assumed that the movie was in fact an authorizedsome courts have been willing to extend “functional

story of Ginger Rogers and Fred Astaire. Nothing

fair use” beyond designs that are technically

about the title indicated that it was otherwise.

function to include shapes and designs ― and even

Nevertheless, the court found that the Firstwords and logos ― that are aesthetically functional.

Amendment interests prevailed.

40

The title was

not a coincidence; Fellini admitted that he selected

The Ninth Circuit addressed this issue more

the film’s name intending to evoke the aura ofthan twenty years ago in International Order ofFred and Ginger’s artistic expression and that the

Job’s Daughters v. Lindeburg and Co.45 when it heldreference to them was essential to his filmic

that a jewelry manufacturer who incorporated avision.

fraternal organization’s emblem46 in the design ofrings which it sold in direct competition withSince the use of their names had a great deal ofjewelry manufacturers who had received a license

artistic relevance and there was nothing else

to sell jewelry incorporating the fraternal crest

which suggested any sponsorship by them, thewas not guilty of trademark infringement where

Court held that the use was protected by thethere was no showing that any customer wasFirst Amendment.

misled about origin, sponsorship or endorsementof jewelry. The court explained:31

〈日本知財学会誌〉Vol.5 No.4 ― 2009

In general, trademark law is concerned

we have visited, the sports teams we support,

only with identification of the maker, sponsor,

the beverages we imbibe. Although theseor endorser of the product so as to avoid

inscriptions frequently include names andconfusing consumers. Trademark law does

emblems that are also used as collective

not prevent a person from copying so-calledmarks or trademarks, it would be naive to“functional” features of a product whichconclude that the name or emblem is desired

constitute the actual benefit that the consumer

because consumers believe that the productwishes to purchase, as distinguished from ansomehow originated with or was sponsoredassurance that a particular entity made,by the organization the name or emblem

sponsored, or endorsed a product.47

signifies.

The decision represented an expansion of a

One of the members of the U.S. Court ofprior holding where the Ninth Circuit held that

Appeals for the Ninth Circuit, while serving as a

the design and appearance of table ware ― china

trial judge, took this analysis a step further ―and silver ― were functional” and could not serve

possibly a big step further.

as a protectable trademark since the name “Job’s
Daughters” and the Job’s Daughters insignia are

In one of his most controversial decisions, theused to identify the organization, and members ofalways controversial Judge Alex Kozinski held

Job’s Daughters wear the jewelry to identify

that competitors could, without authorization, usethemselves as members. The court seemed tothe trademarks of automobile manufacturers ―acknowledge a name or an insignia or logo could

names as well as logos ― on their competing

have dual purposes: one as a protectable trademark

products. The case, Plasticolor Molded Products v.

and another as a functional feature:

Ford Motor Co. 48 involved a small California
manufacturer of replacement floor mats. The

In［the first］context, the insignia arecompany apparently believed that it could selltrademarks of Job’s Daughters. But in the

more floor mats if they included the names of thecontext of this case, the name and emblem

cars or trucks the mats would be used in（Ford,

are functional aesthetic components of theMustang, etc.）on the visible portion of the matsjewelry, in that they are being merchandised― as the original mats generally do.

on the basis of their intrinsic value, not as adesignation of origin or sponsorship.

The court recognized that the word and logos
used without permission by the defendant were

It is not uncommon for a name or emblem

protectable trademarks:

that serves in one context as a collective
mark or trademark also to be merchandised

Ford has long used various arbitrary andfor its own intrinsic utility to consumers. We

distinctive marks to identify its products,

commonly identify ourselves by displaying

including FORD, AEROSTAR, BRONCO,

emblems expressing allegiances. Our jewelry,

CAPRI, COUGAR, COURIER, ESCORT, EXP,

clothing, and cars are emblazoned with

FIESTA, LYNX, MERCURY, MUSTANG,

inscriptions showing the organizations we

PINTO, RANGER, TEMPO, THUNDERBIRD,

belong to, the schools we attend, the landmarks

and TOPAZ, as well as certain pictorial designs,

32Permitted Use of Trademarks in the United Statesamong them the Mustang “running horse”

existing body of law to apply in ruling on the

and Thunderbird symbols.49 Through Ford’s

motions for summary judgment.” The dual naturelong and extensive use of these trademarks,of the marks could, in his view, be resolved in athey have acquired a secondary meaning

number of ways:

signifying Ford and its products, and haveacquired substantial good will that increases

1. Find that the source-identifying aspects ofFord’s recognition and the attractiveness ofthe feature trump the functional aspects,

its products to consumers.

and simply apply the standard law of
trademark infringement.

Ford has attempted to protect its trademarks
through federal trademark registration. It
owns federal registrations for the FORD

2. Find the opposite, and hold that the featureis unprotected from copying

trademark for a variety of automotive products,
including a 1929 registration for floor mats.
Ford has also registered its BRONCO, CAPRI,

3. Attempt to find an appropriate middle
ground.

COUGAR, COURIER, FIESTA, MERCURY,PINTO, RANGER, and THUNDERBIRD

Not surprisingly, he chose the third option.

trademarks; these registrations have becomeincontestable and are conclusive evidence of

To do so, he had to “reconcile two principles

Ford’s exclusive rights to the marks. Ford hasthat often pull in opposite directions. The Lanham

also registered its Mustang and Thunderbird

Act requires that we protect trademark registrants

designs.

from confusion as to source or sponsorship, to thegreatest extent consistent with the functionality

But Judge Kozinski concluded these marks had

doctrine. The functionality doctrine requires that
we permit the copying of functional features todual functions:the greatest extent consistent with the Lanham
The Ford trademarks on Plasticolor’s floorAct.”mats serve two purposes. On one hand, apurchaser could reasonably interpret the

He did not see a real problem at “point of sale,”marks as source-identifiers, as indicating thatwhich he viewed as the main purpose of trademark

Ford has either manufactured or authorizedusage:

production of the mats. On the other hand, apurchaser could reasonably consider the

There need be no conflict between the twomarks to be functional elements, designed toprinciples at the point of sale. The functional

help the mats contribute to a harmonious

use of a trademark does not preclude a clear

ensemble of accessories and decorate theindication at the point of sale（in the form of50

interior of a car.

a label, packaging, or other identification
easily removed or concealed by the consumer）

It was this dual function that troubled Judgethat the product is not manufactured or

Kozinski: “If the marks were solely source-identifiers

sponsored by the registrant. Floor mator solely functional elements, there would be anpurchasers can fully enjoy the functional use
33

〈日本知財学会誌〉Vol.5 No.4 ― 2009of a FORD floor mat even though the matbears a removable notice disclaiming any
affiliation with the Ford Motor Company.

3. Parody

The Second Circuit later extended application ofRogers to parody cases in Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publishing Group. 52 Cliffs Notes

His conclusion was that “the mixed use of a

involved a parody of the popular Cliffs Notes study

trademark constitutes infringement where theguides entitled “Spy Notes,” created by Spy

likelihood of confusion exists as to source ormagazine in conjunction with a publishing company.

sponsorship at the point of sale, or where the

The idea behind Spy Notes was to create a double

alleged infringer has not taken reasonable steps toparody. First, Spy Notes would poke fun at certain

eliminate the likelihood of confusion after the sale.”novels and then satirize Cliffs Notes by creating“study guides” for the parodies. Defendant admitted

While concluding that the case could not bethat it copied prominent features of plaintiff’s

decided as a matter of law［i.e. without the jury

trademarked cover design, and contended that theas generally required in such law suits］, he seemedcopying was done for purposes of humor.53

to suggest that the disclaimer used by the
defendant might be considered sufficient: “Plasticolor

The Second Circuit concluded that “the Rogers

has affixed disclaimers to the underside of thebalancing approach is generally applicable tomats, so that the disclaimers are not visible while

Lanham Act claims against works of artistic

the mats are in ordinary use. Anyone inspecting

expression, a category that includes parody” andthe mats’ underside, however, would easily befound the Spy Notes parody raised only a slightable to see the disclaimer.”（Emphasis added.）risk of consumer confusion that was outweighedby the public interest in free expression.

His “bottom line” seems to be that the desirabilityof public use of the trademark as an adornment to

The U.S. Court of Appeals for the Ninth Circuit

the product and not necessarily as an indicator offirst adopted the Rogers analysis in Mattel, Inc. v.

source or sponsorship of the product ― whether

MCA Records, Inc.54 where the maker of the wellan automobile car mat or a replica baseball team

known “Barbie” dolls sued MCA for trademark

jerseys ― justifies its unauthorized use provided

infringement in the title of a song the recordthat the manufacture takes reasonable steps tocompany had released called, “Barbie Girl.” Theprevent “source confusion” at point of sale.

song was a parody “about Barbie and the values . . .
she［supposedly］represents.” Applying Rogers,

The Ninth Circuit Court of Appeals eventually

the court held that the First Amendment

repudiated that view in Au-Tomotive Gold, Inc. v.

protected the record company. The first prong

Volkswagen of Am., Inc., 51 which involved thewas straightforward. Because the song was about

unauthorized use the VW trademark on key

Barbie, “the use of Barbie in the song title clearlychains and license plate covers. The three judge

is relevant to the underlying work.” As to thepanel concluded that such a “use distorts bothsecond point, the court observed that the only

basic principles of trademark law and the doctrine

indication that Mattel might be associated withof functionality in particular.”the song was the use of Barbie in the title. But,
the Court reasoned, “If this were enough to satisfy
this prong of the Rogers test, it would render34

Permitted Use of Trademarks in the United States

Rogers a nullity.” This seems intuitive as thethat purchasers of the video might mistakenly

court recently pointed out: “This makes goodbelieve is sponsored by the Plaintiff. The Court

sense. After all, a trademark?infringement claim

concluded that other than offering “a form of low-presupposes a use of the mark. If that necessary

brow entertainment,” the two parties “have nothingelement in every trademark case vitiated a First

in common.” It concluded that “a reasonable

Amendment defense, the First Amendment would

consumer would not think a company that owns

provide no defense at all.”one strip club in East Los Angeles, which is notwell known to the public at large, also produces a

In a more recent decision, E.S.S. Entertainment
2000, Inc. v. Rock Star Videos, Inc., 55 the Court

technologically sophisticated video game like（defendant’s）San Andreas.”

reaffirmed and expanded its application of Rogers.
Plaintiffs, owners of a Los Angeles strip club

While the East and West Coasts ― the Second

called “Play Pen Gentlemen’s Club” objected toand Ninth U.S. Courts of Appeal ― seem to be in

the depiction of club having the name “Pig Pen” inagreement, the Midwest seems unconvinced. In a

one of defendant’s video games. The Plaintiff

case with arguably even greater artistic relevanceconceded that the video game was “artistic” butbetween the title and the subject than Rogers v.

contended both that the incorporation of the Pig

Grimaldi, American Dairy Queen Corporation v. New

Pen into the Game had no artistic relevance andLine Productions, Inc.,56 the District Court declinedthat it was explicitly misleading. It emphasized

to apply the “First Amendment Balancing Test.”

that the video was not created as a parody of awell known cultural icon.

Defendant New Line had produced and was
preparing to release a new feature film which it

While admitting the distinction, the Court noted

intended to call “Dairy Queens.” The film wasthat the Rogers test as applied in MCA Records

described as a “mock documentary” satirizing

held that only that the use of trademarks with “nobeauty contests in rural Minnesota, an area

artistic relevance to the underlying work whatsoever”

unquestionably know as “dairy country.” The movie

are unprotected by the First Amendment. “In

portrayed these contests as filled with backbiting

other words, the level of relevance merely must

and jealousy, and suggested the participants tend

be above zero.” The Court reasoned that theto suffer from eating disorders. At least a portion

Plaintiffs had intended to develop a cartoon-styleof the film was acknowledged to contain off-color

parody of East Los Angeles ― the part of LA

humor and content which could offend some ―where the PlayPen is actually located. The Courtand entertain other ― viewers. No part of the film’s

thought that a reasonable way ― possibly the only

content related, depicted, or referred in any manner

way to do that ― was to “recreate a critical mass

to plaintiff’s popular restaurants nor did it refer toof the businesses and buildings that constitute it.”any kind of frozen dairy treats.

In that context, the Court held that to include a
strip club that is similar in look and feel to thePlaintiff objected to defendant’s use of a title

Play Pen does indeed have at least “some artistic

which was virtually identical to its well-establishedrelevance.”“Dairy Queen” trademark. It was particularly
concerned that the title “Dairy Queens” would

The Court also rejected Plaintiff’s contention

cause the public to associate its trademarked
35

〈日本知財学会誌〉Vol.5 No.4 ― 2009name with the unwholesome content of the film.

［the defendant］nor the public of the benefit of

ADQ feared this association would create negative

his ideas.” There, the defendant had been selling

impressions and confuse its customers, thereby“Mutant of Omaha” paraphernalia bearing a logo

demeaning and disparaging its mark. The Court

very similar to the plaintiff’s mark. The Court

concluded that “the grant of a preliminary injunction

noted that the injunction would not prevent

is warranted” under both theories ― infringement

defendant from presenting “an editorial parody inand dilution. It then addressed defendant’s claim

a book, magazine, or film.” Because defendant hadthat the First Amendment trumps both claims,

alternative avenues available for expressing his

ultimately barring ADQ’s requested relief.

public policy views, the narrowly drawn injunction
was consistent with the First Amendment.

Unlike the Second and Ninth Circuits, theDistrict Court seemed to consider the harm to thereputation of the trademark holder more important

The Eighth Circuit revisited the question in
Balducci and basically reaffirmed its position:

than the impact of the injunction on the artistic［I］n any case where an expressive work

rights of the film producer.

is alleged to infringe a trademark, it isImportantly, ADQ does not challenge, norappropriate to weigh the public interest in

does it ask the Court to consider, a single

free expression against the public interest inword of the film’s script; it does not seek toavoiding consumer confusion. . . . This approach

modify a line. Rather, ADQ’s only concern istakes into account the ultimate test inwith the title “Dairy Queens.” There is notrademark law, namely, the likelihood ofeffort of any kind to modify or muzzle New

confusion as to the source of the goods inLine’s views or expressions concerning thequestion.”59

midwest beauty contests, “dairy country,” orthe film’s asserted objectionable sexual, racial,or religious content. ADQ simply wants to

In both Mutual of Omaha and Balducci, the Eighth
Circuit affirmed the issuance of an injunction.

keep the public from developing the sensethat it is a sponsor or endorser of New Line’s

New Line claimed its proposed title wasfilm, or has voluntarily lent its name to it. The

expressive, and the author could not convey her

Court considers the limited nature of theideas behind the film without using the namerequested relief to be significant.

“Dairy Queens.” In support, New Line offered theauthor’s affidavit declaring she was unsatisfied

The Minnesota District Court is located withinwith any other title. It appeared she had rejected

the Eighth U.S. Court of Appeals and is bound byideas such as “Dairy Princesses,” “Milk Maids,” orits precedent, and precedent there was: Mutual of

any other formulation, except that single title”

Omaha Ins. Co. v. Novak,
Balducci Publications.

57and AnheuserBusch v.

Dairy Queens.”

58

The Court found Rogers inapposite and noted
In Mutual of Omaha, Judge Bowman focused onthat defendant’s denial that it intended to refer

whether an injunction “leaves open［alternative］

plaintiff’s company or restaurants in its use of theavenues of expression,” thus “depriv［ing］neither

proposed title “actually weakens its argument that36Permitted Use of Trademarks in the United States

there are no alternative means to express its
artistic impressions or ideas.”

1. The product or service in question must be
one not readily identifiable without use of
the trademark;The Court considers the distinction to be
crucial. In Rogers, the name did express, and

2. Only so much of the mark or marks may

was designed to evoke, a part of the artistic

be used as is reasonably necessary toconcept inhering in the famous names it used.

identify the product or service;

In the present case, no such artistic concept
inheres in the proposed title. As such, the3. The user must do nothing that would, inargument that there is no other way to express

conjunction with the mark, suggest

the idea of the film’s title carries much lesssponsorship or endorsement by theweight, as the idea expressed is not a reference

trademark holder.61

to plaintiff’s mark. Absent such relevance, theCourt concludes that alternative avenues for

It is important to recognize that the nominativeuse defense is available even if the defendant’s

expressing the idea exist.

ultimate goal is to describe his own product.62
The court held that the proposed injunction“will only effect a minute restriction on expression,

A good example of the application of nominative

but will do much to avoid confusion and dilution.

fair use is in Volkswagenwerk Aktiengesellschaft v.

Defendant’s First Amendment interests are fully

Church, 63 where the Ninth Circuit held that

protected.”

Volkswagen could not prevent an automobile
repair shop from using its mark to advertise the

The U.S. Supreme Court has yet to resolve thisfact that it specialized in the repair of Volkswagen

important conflict between the lower federal

automobiles. The court noted that in “advertising

courts.

［the repair of Volkswagens, it］would be difficult,if not impossible, for［Church］to avoid altogether
the use of the word ‘Volkswagen’ or its abbreviation

4. Nominative Fair Use

In developing the doctrine of nominative fair use,

‘VW,’ which are the normal terms which, to theJudge Alex Kozinski of the U.S. Court of Appeals

public at large, signify appellant’s cars.” The court

for the Ninth Circuit carefully distinguished itemphasized that Church did not suggest tofrom the classic fair use: “If the defendants’ use ofcustomers that he was part of the Volkswagen

the plaintiff’s trademark refers to something otherorganization or that his repair shop was sponsoredthan the plaintiff’s product, the traditional fair use

or authorized by VW; he merely used the words

inquiry will continue. But, where the defendant uses

“Volkswagen” and “VW” to convey informationa trademark to describe the plaintiff’s product,

about the types of cars he repaired and concluded

rather than its own, we hold that a commercial userthat his use of the Volkswagen trademark was not

60

is entitled to a nominative fair use defense.”He

an infringing use.

further identified the three requirements for theapplication of what he refers to as nominative fairuse:

The First Circuit confronted a similar problem
when the holder of the trademark “Boston
Marathon” tried to stop a television station from37

〈日本知財学会誌〉Vol.5 No.4 ― 2009

likelihood of confusion exists.66

using the name:

4．Non-confusing “dilution”［T］he words “Boston Marathon” . . . domore than call attention to Channel 5’s program;they also describe the event that Channel 5

The U.S. Trademark Act was amended in 1996

will broadcast. Common sense suggests

with the addition of the Federal Trademark（consistent with the record here）that a viewer

Dilution Act of 1995. In sum, it creates a federal

who sees those words flash upon the screen

cause of action for the unauthorized use of awill believe simply that Channel 5 will show,“famous mark” which dilutes the value of the mark,or is showing, or has shown, the marathon,even in the absence of competition or confusion.

not that Channel 5 has some special approval

The Act exempted all “noncommercial use” as afrom the［trademark holder］to do so. In

basis for dilution liability. The exemption wastechnical trademark jargon, the use of words

believed to cover a range of uses including negativefor descriptive purposes is called a “fair use,”commentary on websites, use of trademarks inand the law usually permits it even if thepolitical campaigns, as well as parody and artistic

64

expression.67 In response to a U.S. Supreme Court

words themselves also constitute a trademark.

decision significantly reducing the use of the Act,68
Judge Kozinski’s nominative fair use approach

Congress enacted the Trademark Dilution Revision65

has not been warmly received by other courts,

Act of 2006（ TDRA” ）.69 The TDRA includes all

although the Third Circuit, which servesof the statutory exemptions in the FTDA and

Pennsylvania, New Jersey, and neighboring states,

adds new classifications of statutory fair use,

seems to like the idea but has developed its own

including parody, which courts previously held to― slightly different ― criteria:

be protected under the FTDA’s noncommercial
use exemption.70（1）Is the use of the plaintiff’s marknecessary to describe both plaintiff’s productFor example, in American Family Life Ins. Co. v.

or service and defendant’s product orHagan,71 the court examined the Congressional

service?

reasoning behind the FTDA in a claim involving
the well-known AFLAC duck. The Court found（2）Is only so much of the plaintiff’s markthat FTDA’s noncommercial use category was anused as is necessary to describe plaintiff’s

inexact, shorthand reference for “speech protected

products or services?

by the First Amendment.” The legislative history
indicated that the proposed law “will not prohibit（ 3） Does the defendant’s conduct oror threaten noncommercial expression, such as

language reflect the true and accurate

parody, satire, editorial and other forms of

relationship between plaintiff and defendant’s

expression that are not a part of a commercial

products or services?

transaction.” Both the Senate and the House notedthat the exemption was designed to “recognize

The court indicated that if each of thesethat the use of marks in certain forms of artistic

questions can be answered in the affirmative, theand expressive speech is protected by the Firstuse will be considered a fair one, regardless of whether

Amendment.”38Permitted Use of Trademarks in the United States

In Bosley Med. Inst., Inc. v. Kremer,72 the Court
held that a dissatisfied hair transplant patient’s
use of the trademark holder’s website domainname was a noncommercial use because the website
only contained information and sold neither soldFigure 2. Hershey’s Trade Dressgoods nor services although its intent was todiscourage consumers from purchasing Bosley’s

when Art Van indicated that it would display an

products. The Ninth Circuit held defendant’s use

image of a brown sofa emerging from a redof the Bosley mark was a noncommercial use andand/or burgundy wrapper reminiscent of a

did not violate the Lanham Act.

Hershey’s bar on its trucks. 76 When Art Van
would not agree not to use the “couch bar,”

But this is not a universally held view among

Hershey filed a lawsuit alleging trademark

U.S. courts. In People for the Ethical Treatment of

infringement, false association, sponsorship andAnimals v. Doughney, 73 （“PETA”）the Fourth

approval, trademark dilution by blurring, unfair

Circuit held that the defendant’s parody site

competition and common law conversion andviolated the Lanham Act because it “prevented

sought a Temporary Restraining Order andusers from obtaining or using PETA’s goods orPreliminary Injunction requiring the removal of theservices.” Most other federal courts have also

Couch Bar from Art Van’s website and preventing

rejected the PETA Court’s theory as over-

Art Van from ever using the Coach Bar on its

expansive,74

although the District Court in thedelivery trucks.77“Dairy Queen” case discussed above refused torecognize an artistic use exception.

In the District Court’s opinion there was

However, the greatest impact of the FTDA on

No question that Defendant’s “couch bar”

“permitted use” is to prevent the use of a famous

bears a resemblance to a Hershey’s chocolate

mark on non-competing goods and services evenbar, particularly to Plaintiff’s “Special Dark”

where the possibility of confusion is remote atbar. One feature in particular is identical inbest. A recent case involving the unauthorized use

both designs: each wrapper is composed ofof a well known candy bar explains how this has

two distinct elements, a silver foil containing

occurred.

the actual product, and a slightly narrower

The Hershey bar is unquestionably a well“sleeve” inscribed with the company name.

recognized, i.e., famous, product design, entitled to

Because the sleeve is not as wide as theprotection as a trademark under the Lanham Act,

product itself, the foil visibly protrudes alongas it undoubtedly has acquired “secondary

the edges of the candy bar.

meaning.”

75

The court then turned to “considerations of how
Art Van Furniture Co. is Michigan’s largest

and to whom the respective goods or services offurniture retailer, operating 30 stores（all in-

the parties are sold.”― As the Sixth Circuit had

state）, a website where customers may buy

explained,

products online, and a fleet of about two dozen
trucks for customer deliveries. Hershey objected

Dissimilarities between the predominant39

〈日本知財学会誌〉Vol.5 No.4 ― 2009

customers of a plaintiff’s and defendant’s

Defendant attempted ― unsuccessfully ― togoods or services lessens the possibility of

invoke one of the “fair use” defenses included in

confusion, mistake, or deception. Likewise if

the Federal Dilution Act. It contended that its

the services of one party are sold through“couch bar” was merely a “clever parody” of andifferent marketing media in a different

actual candy bar, and that the amusing nature ofmarketing context than those of anotherthe design diffuses any risk that confusedseller, the likelihood that either group of

consumers would mistake its source or sponsorship.

buyers will be confused by similar service

Defendant emphasized that this image appears onmarks is much lower than if both parties sell

its website next to nine other “whimsical”

their services through the same channels of

pictures, further reinforcing its satirical character.

trade.

78

But the court pointed out that parody has a
Defendant pointed out that its furnitureproducts and related services were exclusively

very distinct and quite narrow meaning in U.S.
trademark law:available through its 30 Michigan stores and its
website and it does not sell candy! Similarly,

For trademark purposes, ［“ a］‘parody’ is

Plaintiff’s chocolate and confectionary goods aredefined as a simple form of entertainment

widely distributed in a wide variety of grocery,

conveyed by juxtaposing the irreverent

drug, and convenience stores and it did not sell

representation of the trademark with thefurniture.

idealized image created by the mark’s owner.”“A parody must convey two simultaneous-and

These and other factors persuaded the court

contradictory-messages: that it is the original,that it was “unlikely that Defendant’s truck design

but also that it is not the original and iswill cause consumers to believe that Art Van isinstead a parody.” This second message must

somehow affiliated or associated with Hershey, or

not only differentiate the alleged parody fromthat customers will patronize Defendant’s storesthe original but must also communicate someor purchase its products due to confusion over thearticulable element of satire, ridicule, joking,source of Defendant’s goods” and that the Plaintiff

or amusement.80

was unlikely to succeed on the merits of its
trademark and trade dress infringement claims.

In sum, while defendant’s use of plaintiff’s
famous candy bar may have been clever or even

But it reached the opposite result when evaluating
Plaintiff’s dilution claim.

funny and would not have confused anyone about
any connection between Hershey’s candy businessand Art Van’s furniture business, its use was not

Dilution law, unlike traditional trademark

a permitted use under U.S. law and the court

infringement law . . . is not based on a likelihood

ordered defendant to stop using the “couch bar.”of confusion standard, but only exists toprotect the quasi-property rights a holder has

Thus, it would seem that any U.S. trademark

in maintaining the integrity and distinctivenessholder of a “famous mark” can present the use byof his mark.

79

others of its mark even when there is no
possibility of confusion as to source, affiliation or40

Permitted Use of Trademarks in the United States

sponsorship by invoking the application of theeven when it does, when the use is necessary toFederal Dilution Act.81

promote real competition.

5．Conclusion
Unlike the U.S. Copyright Act which has
numerous fair use provisions ― some quite
extensive and complex ― the U.S. Trademark Act
has a single “fair use” provision governing
traditional trademark usage:
That the use of the name, term, or device
charged to be an infringement is a use,otherwise than as a mark, of the party’s
individual name in his own business, or of theindividual name of anyone in privity withsuch party, or of a term or device which is
descriptive of and used fairly and in goodfaith only to describe the goods or services ofsuch party, or their geographic origin.82
Perhaps for that reason, U.S. courts have createda wide range of permitted usages designed toserve the underlying policy of the U.S. trademark
law to prevent unfair competition while encouraging
vibrant fair competition.
The law of unfair competition has traditionallybeen a battleground for competing policies.
The interest of the public in not being
deceived has been called the basic policy.
Moreover, a plaintiff’s interest in not having
the fruit of his labor misappropriated should
not be disregarded. But there is also the policyof encouraging competition from which the
public benefits83
For this reason, the use of another’s mark ― orsomething arguably similar ― will be permitted
not only when the use is not likely to cause
confusion as to source or sponsorship but sometimes

Note
1 “The Congress shall have power ... To promote the Progress of
Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective
Writings and Discoveries.” U.S. Const. art. I, §8, cl. 8.
2 “The limited scope of the copyright holder ’s statutory
monopoly, like the limited copyright duration required by theConstitution, reflects a balance of competing claims upon the
public interest: Creative work is to be encouraged andrewarded, but private motivation must ultimately serve thecause of promoting broad public availability of literature,music, and the other arts.” Twentieth Century Music Corp. v.
Aiken, 422 U.S. 151, 156（1975）.
3 The 1976 Act also includes other “fair use” exceptions too
numerous to mention. See §§108-122. The U.S. Patent Act
does not contain any general “fair use” exceptions to thep a t e n t o w n e r ’s e x c l u s i v e r i g h t s , b u t m a i n t a i n s t h econstitutionally proscribed balance by limiting the term ofprotection to, in most cases, about 17 years.
4 An early attempt to base U.S. trademark law on theintellectual property clause was held unconstitutional. TradeMark Cases, 100 U.S. 82（U.S. 1879）.
5 The only specific “fair use” exception permits descriptive usesof registered trademarks by competitors.
6 The author prefers the team “trademark holder” to the morecommonly used “trademark owner,” as in his opinion they do
not “own” the words, names or symbols they use as theirtrademarks.
7 15 U. S. C. 1114［Lanham Act §32］.
8 15 U. S. C. §1114（1）.
9 Similar or even identical marks can even be registered bydifferent users who are using them on different products
and/or in different markets. For example, “royal” is a registered
mark of a company selling pest repellant devices［Registration No. 3276810］; another company selling sewing
machines［Registration No. 2804806］; another company
selling metal fences［Registration No. 3566494］; anothercompany selling cotton swabs［Registration No. 7723006］;
and many more. There are over 2,000 registered marks andpending applications using the word “royal” alone or in
combination with other words.
10 2008 WL 4724756（E.D. Michigan 2008）. However, thecourt prohibited the use on the basis of U.S. anti-dilution law.
See discussion Part IV, Non-confusing dilution.
11 To determine whether confusion between related goods islikely, the Ninth Circuit has identified the following factors［ digits of confusion ］as being relevant.
1. strength of the mark;2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be
exercised by the purchaser;
7. defendant’s intent in selecting the mark; and8. likelihood of expansion of the product lines.
Other US courts use a similar set of factors.
12 AMF, Inc. v. Sleekcraft Boats, 599 F. 2d 341（9th Cir. 1979）.
13 Technically, they are service marks.
14 Perhaps surprisingly, the trial court found that the two marks
were similar:
The court found Lollipops visually similar to Jellibeans
because Skating Clubs spelled it with an “i” rather than a “y” an equally acceptable spelling - and used the plural form. In
41

〈日本知財学会誌〉Vol.5 No.4 ― 2009
finding an aural similarity the court noted that each name has
three syllables, with an “l” sound dividing the first and secondsyllables, and an “e” sound dividing the second and third
syllables, and that each name ends in a plural “s.” The court
found this aural similarity most important because both rinks
advertised primarily either by word of mouth or radio. Finally,
the court found that the names create a similar general
impression because each is a similar sounding candy nameused to signify a roller rink. Based on these considerations,the district court found that Lollipops and Jellibeans possess
similar designs.
15 Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F. 2d
833（11th Cir. Ga. 1983）.
16 The Court of Appeals acknowledged that it was possible that
defendant’s intent was to invite comparison between his
skating rink and Jellibeans, or to convey the same imagery
and symbolic message in his service mark.
17 15 U. S. C. §1115（b）（4）.
18 Soweco, Inc. v. Shell Oil Co ., 617 F. 2d 1178, 1185（5thCir.1980）.
19 Secondary meaning recognizes that words with an ordinary
and primary meaning of their own, “may by long use with aparticular product, come to be known by the public as
specifically designating that product.” The burden of proof
rests with the party seeking to establish legal protection forthe mark - the plaintiff in an infringement suit. In assessing aclaim of secondary meaning, the major inquiry is theconsumer’s attitude towards the mark. The mark must denoteto the consumer “a single thing coming from a single source,”
to support a finding of secondary meaning. Survey evidence
is the most direct and persuasive way of establishingsecondary meaning.
20 A descriptive term “identifies a characteristic or quality of anarticle or service, such as its color, odor, function,
dimensions, or ingredients.
21 698 F. 2d 786（5th Cir. 1983）.
22 “Secondary Meaning” may be an unfortunate term to use as it
infers a less important meaning. A better understanding
would be that the mark has acquired a new and parallel
meaning ― as a “source identifier” of the product ― aprotectable “trademark.
23 2008 WL 4790661（W.D. Pa 2008）.
24 A separate claim for trademark dilution was dismissed by thetrial court which concluded the mark was a “niche mark,” noteligible for protection as a “famous mark” under the Federal
Anti-Dilution Act.
25 A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237
F.3d 198, 215（3d Cir. Pa. 2000）; Kos Pharms., Inc. v. Andrx
Corp., 369 F.3d 700, 712 ― 13（3d Cir. N.J. 2004）; See also
Checkpoint Sys. v. Check Point Software Techs., Inc, 269 F.
3d 270, 281（3d Cir. N.J. 2001）.
26 4 McCarthy on Trademarks at §23 : 49; See also Am.
Cyanamid Corp. v. Connaught Labs., Inc., 800 F.2d 306, 308（2d Cir.1986）（ Although ... a［generic］component will notnecessarily render the entire mark invalid, its presence does
affect the analysis of whether a competitor’s mark containing
the same component is likely to create confusion. ）.
27 543 U.S. 111（U.S. 2004）.
28 “The right of the registrant to use such registered mark incommerce for the goods or services on or in connection withwhich such registered mark has been in continuous use forfive consecutive years subsequent to the date of suchregistration and is still in use in commerce, shall beincontestable” 15 USC §1065
29 Park ‘n Fly v. Dollar Park & Fly, 469 U.S. 189, 198（U.S.
1985）（ a conclusion that incontestable status can provide
the basis for enforcement of the registrant’s exclusive rightto use a trade or service mark promotes the goals of the42statute ）.
A mark “shall be incontestable: Provided, That ―（1）there has been no final decision adverse to registrant’s
claim of ownership of such mark for such goods or services,or to registrant’s right to register the same or to keep thesame on the register; and（2）there is no proceeding involving said rights pending in
the Patent and Trademark Office or in a court and not finallydisposed of; and（3）an affidavit is filed with the Director within one year after
the expiration of any such five-year period setting forth those
goods or services stated in the registration on or inconnection with which such mark has been in continuous use
for such five consecutive years and is still in use incommerce, and the other matters specified in paragraphs（1）and（2）of this section; and（4）no incontestable right shall be acquired in a mark whichis the generic name for the goods or services or a portion
thereof, for which it is registered. 15 USC §1065.
30 T h i s a r g u m e n t s e e m s t o u n d e r c u t t h e c o n t e n t i o n
unsuccessfully made in Park ‘n Fly that the incontestability
status could only be used defensively, not offensively, as
Lasting was using it since a defendant changes withinfringement can still argue that its use of the mark ― not thetrademark holder’s use of it ― was descriptive and thus noninfringing.
31 The other eight Justices concurred in Justice Souter’s
opinion for the Court with the following reservations: JusticeScalia objected to two footnotes in the opinion（numbers 4
and 5）and Justice Breyer objected to another footnote（number 6）.
32 As mentioned above, Justice Scalia did not “join” in thisstatement.
33 4 McCarthy on Trademarks and Unfair Competition § 25 : 52
（4th ed.）. A comparative advertisement that is false or
misleading can be barred under 15 U.S.C. 1125（a）（1）（B）［§43（a）（1）（ B）of the Lanham Act.］If the advertisement
overstates the performance of SafetyPro or understates theperformance of DuralabelPro300 ... or if the DuralabelPro300
does not actually cost hundreds of dollars more than the
SafetyPro, Duralabel has a cause of action under the LanhamAct.
34 G.D. Searle & Co. v. Hudson Pharmaceutical Corp., 715 F.2d
837, 841（3d Cir. 1983）（quoting SSP Agricultural, Etc. v.
Orchard-Rite Ltd., 592 F. 2d 1096, 1103（9th Cir. 1979））.
35 See, e.g., August Storck K.G. v. Nabisco, Inc., 59 F. 3d 616（1995）.（ A use of a rival’s mark that does not engenderconfusion about origin or quality is therefore permissible. The
use is not just permissible in the sense that one firm isentitled to do everything within legal bounds to undermine arival; it is beneficial to consumers. They learn at a glance
what kind of product is for sale and how it differs from aknown benchmark. ）36 A typical disclaimer states: “This product is not manufactured
or distributed by XYZ Co., the owner of the registeredtrademark XYZ 獏.” They usually are in very small print andappear on the back of the package. It’s doubtful that mostconsumers ever read them and there is little evidence thatthey actually reduce confusion; they may even increase
confusion as to origin of the product.
37 “Congress shall make no law ... abridging the freedom ofspeech” U.S. Const. Amend. 1.
38 875 F. 2d 994（2d Cir. N.Y. 1989）.
39 Id . at 999 ― 1000（footnote omitted）（ emphasis added）.
Given the almost unquestioning commitment that mostAmericans have to their First Amendment right of free
expression, it may be difficult to find a case（other than one
involving misbranded pharmaceutical products）where thePermitted Use of Trademarks in the United States

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interest in avoiding consumer confusion “trumps” the right offree expression.
Id. at 1001（ that risk of misunderstanding, not engenderedby any overt claim in the title, is so outweighed by theinterests in artistic expression as to preclude application of
the Lanham Act ）.
959 F. Supp. 578, 583（N. D. N. Y. 1997）.
Id. at 582, n. 9.
15 USC §1052（e）（5）.
Traffix Devices v. Mktg. Displays, 532 U.S. 23（U.S. 2001）.
633 F. 2d 912（9th Cir 1980）.
The emblem consists of a representation of three girls withina double triangle. The girls carry a dove, an urn, and acornucopia. Between the bases of the two triangles are thewords “Iyob Filiae,” the Latin translation of “Daughters of
Job.
Not all courts agreed with this view. See, for example in

Boston Professional Hockey Ass ’ n, Inc v. Dallas Cap &Emblem Mfg., Inc., 510 F. 2d 1004（5th Cir.）, cert. denied,
423 U.S. 868（1975）.
713 F. Supp. 1329, 1333 ― 1340（C.D. Ca 1989）. After thisdecision was published, Ford settled the case with asomewhat unusual condition ― the opinion had to bewithdrawn from publication, which it subsequently was. One
can only assume that Ford, and perhaps other U.S. trademark
holders, were concerned that the decision could be usedagainst them in similar litigation.
The court seemed to view the fact that the symbols were notregistered copyrights quite significant.
He even acknowledged that a reasonable purchaser could
easily interpret the marks both ways simultaneously.
457 F. 3d 1062（9th Cir 2006）. Not surprisingly, Judge
Kozinski was not a member of the three judge panel which
decided this case. Since the decision would seem to overrule
the Jobe’s Daughter decision described above, proper judicial
protocol would have been to decide the case en banc, with all
members of the Ninth Circuit Court of Appeals ― including
Judge Kozinski ― participating.
886 F. 2d 490, 495（2d Cir. N.Y. 1989）.
The Spy Notes cover differed in “some important” respects
from the Cliffs Notes cover. For example, the Spy Notes coverincluded the term “A Satire” five times in bright red letteringand bore the notation “A Spy Book” with the logo of Spymagazine against a bright red background. Functioning as a“disclaimer,” these differences（and others not mentioned）
seemingly would have eliminated any real possibility ofconfusion as to who published the books.
296 F. 3d 89（9th Cir.2002）.
547 F. 3d 1095（9th Cir. Cal. 2008）.
35 F. Supp. 2d 727（D. Minnesota, 1998）.
836 F. 2d 397（8th Cir. 1987）.
28 F. 3d 769（8th Cir. 1994）.
Id. at 776.
New Kids on the Block v. News America Publishing, Inc., 971
F. 2d 302（9th Cir. 1992）.
Placing the burden of proof on the defendant to establish its“fair use” seems to violate the U.S. Supreme Court’s holdingthat the plaintiff must bear the burden of proof, apparently

including proof that the offending use is not a “fair use” whenbringing an infringement action. KP Permanent Makeup, Inc.
v. Lasting Impression I, Inc., 543 U.S. 111, 117 ― 18（2004）.
See, also , Smedresman, “Fixing Nominative Fair Use: An
Analysis of Nominative Use Jurisprudence and A Suggestion
on How to Resolve Conflicts,” 15 U. Balt. Intellectual Prop.
L.J. 103, 125）.
62 Carins v. Franklin Mint Co., 292 F.3d 1139, 1151（9th Cir.
1992）.
63 411 F. 2d 350（9th Cir. 1969）.
64 WCVBTV v. Boston Athletic Ass’n, 926 F. 2d 42, 46（1st Cir.
1991）.
65 T h e o n l y C o u r t o f A p p e a l t o a d o p t J u d g e K o z i n s k i ’s
“nominative fair use” is the Eleventh Circuit Court of Appeals.
66 Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F. 3d
211（3d Cir. 2005）.
67 4 McCarthy on Trademarks and Unfair Competition §24 : 81
（4th ed. 2005）.
68 Moseley v. V Secret Catalogue, 537 U.S. 418（U.S. 2003）.
69
70
71
72
73
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15 U. S. C. §1125（c）.
Id.
266 F. Supp. 2d 682, 695 ― 698（N.D. Ohio 2002）.
403 F. 3d 672, 676-680（9th Cir. 2005）.
263 F. 3d 359（4th Cir. 2001）.
See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F. 2d 26, 33（1st Cir. 1987）; see also Ford Motor Co. v. 2600 Enters.,
177 F. Supp. 2d 661, 664（E.D. Mich. 2001）.
75 Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 216（U.S.
2000）.（ In an action for infringement of unregistered tradedress under §43（a）of the Lanham Act, a product’s design
is distinctive, and therefore protectable, only upon a showingof secondary meaning. ）76 The “couch bar” was the winning entry in a contest that Art
Van held to determine how best to redesign its delivery
trucks. The offending design was one of several appearing on
Art Van’s website.
77 The Hershey Company v. Art Van Furniture, Inc., 2008 WL
4724756（E.D. Michigan 2008）.
78 Homeowners Group, Inc. v. Home Marketing Specialists, Inc.,
931 F. 2d 1100, 1109, 1110（6th Cir. Mich. 1991）.
79 Audi AG v. D ’Amato , 469 F. 3d 534, 546（6th Cir. Mich.
2006）; See, also Avery Dennison Corp. v. Sumpton, 189 F.
3d 868, 875（9th Cir. 1999）（ Dilution is a cause of action
invented and reserved for a select class of marks-thosemarks with such powerful consumer associations that evennon-competing uses can impinge on their value ）.
80 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.
3d 252, 260（4th Cir. 2007）（quoting ?People for the EthicalTreatment of Animals v. Doughney, 263 F. 3d 359, 366（4thCir. 2001））.
81 There is one very important limitation: the plaintiff ’s
trademark must have become “famous” before the alleged“diluting use” began. 15 U. S. C. §1125（c）（1）.
82 15 U. S. C. §1115（b）（4）.
83 Jason K. Levine, Contesting the Incontestable: Reforming
Trademark’s Descriptive Mark Protection Scheme, 41 Gonz.
L. Rev. 29（2005）.

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