Trademark Fair Use: Braun® Versus the Bunny

INTRODUCTION I. TRADEMARKS--LOGOS AND PRODUCT DESIGN A. Descriptive Fair Use II. NOMINATIVE FAIR USE III. APPLICATION OF NOMINATIVE FAIR USE BEYOND PLAIN-TEXT WORD MARKS CONCLUSION INTRODUCTION The Author was rather tickled (no pun intended), by a story out of the United Kingdom concerning the confluence of two seemingly unrelated products--a vibrating toothbrush and plastic sex-toy shaped like a bunny. (1) The plastic bunny was designed specifically to work with a vibrating toothbrush, turning it into a vibrating bunny-shaped sex-toy. Some might regard this as a clever convergence of technologies. (2) Yet, a manufacturer of vibrating toothbrushes opposed the use of its products in association with the advertisements for the bunny. (3) The toothbrush manufacturer claimed that such use could be misleading to the public and potentially injurious. (4) The manufacturer of the bunny, on the other hand, claimed that it was simply telling the truth about its products. (5) The vibrating bunny sex-toy is certainly not the first product to ride the coat-tails of another product, or even to depend on another product for its very utility. Many businesses offer products or services that complement the products or services of another business. For example, Apple's iPod line of digital music players spawned speakers, headphones, and carrying cases, all specifically designed to fit the shape and functionality of the iPod device. (6) And many repair shops specialize in repairing specific brands of goods within a more general class. (7) These businesses need to communicate the complementary relationship between the original, underlying product and their own goods or services, and sometimes there is simply no other practical way to communicate this relationship than to refer to the trademark (8) representing that original product. For example, a car mechanic who specializes in repairing "Volkswagen" vehicles must necessarily refer to the Volkswagen trademark. (9) It would be an exercise in futility for the mechanic to attempt to describe his services without referring to the trademark. (10) Thus, in what has come to be known as "nominative fair use," one business may use the plain-text version of another's trademark when necessary to identify the trademark owner's goods and services and to describe his own. (11) Courts have not extended the nominative fair use defense beyond plain-text versions of the trademark at issue to other trademark forms such as logos or product designs. Manufacturers of "complementary" goods, such as protective covers for iPod mp3 players, and providers of "complementary" services, such as repair services for Volkswagen automobiles, however, often depict the "original" underlying product, rather than the plain-text version of the trademark, as a means to communicate the complementary relationship between that product and their own goods and services. (12) In depicting that original product, a manufacturer of complementary goods may also be depicting the trademark owner's logo and/or protected product design. For example, the advertising and packaging of the many products spawned by the iPod digital music players often feature not only the iPod word mark, but also pictures of actual iPod devices or depictions of the iPod product design. (13) To advertise the vibrating bunny, the manufacturer included a picture of an actual Oral-B toothbrush, with the Oral-B trademark clearly visible on the front of the toothbrush. (14) Manufacturers of original products, on the other hand, tend to oppose the use of their products on packaging and in advertisements relating to complementary products, and often assert trademark infringement under the Lanham Act to stop the practice. (15) Because courts have limited nominative fair use to plain-text versions of trademarks, one's use of the original product on packaging for or in advertising of complementary goods may not fall within the nominative fair use defense and has been found to be impermissible under the Lanham Act. …