Trademark fair use: Braun(R) versus the bunny.

AuthorRollins, Vanessa P.

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. (16) This Article examines whether nominative fair use could encompass such use.

First, in Part I, this Article provides background concerning federal protection for trademarks, specifically logos and product designs, and highlights why classic, descriptive fair use has not been available as a defense for cases involving complementary uses of logos and product designs. In Part II, this Article examines the nominative fair use defense, including, in particular, the Ninth and Third Circuits' divergent approaches regarding infringement liability. This Article suggests that any trademark infringement action relating to nominative uses should follow the Supreme Court's descriptive fair use analysis and require proof of likelihood of confusion as a prerequisite. Part III examines courts' applications of nominative fair use, which they have not extended to encompass logos or product designs. In the Conclusion, this Article ultimately concludes that the use of an original product, including any trademarked product design or logo, in conjunction with the sale of a complementary product (or provision of a complementary service) is a fair use that, even given some likelihood of confusion, may insulate a defendant from trademark infringement liability. (17)

  1. TRADEMARKS--LOGOS AND PRODUCT DESIGN

    A trademark includes "any word, name, symbol, or device ... used by a person ... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (18) Virtually anything that possesses the ability to distinguish and identify goods and to indicate source can serve as a trademark. (19) Thus, to the extent that it possesses this ability, even the design of the good itself may become a trademark. (20) When any of the possible embodiments is capable of serving as a trademark, it is said to be "distinctive." No singular basis exists, however, for determining when this exists for each of the different embodiments.

    Words become trademarks, or "word-marks," depending on where they fall along a spectrum of distinctiveness. An arbitrary, fanciful, or suggestive word is inherently distinctive; a descriptive word is capable of acquiring distinctiveness through secondary meaning; and a generic word is never distinctive. (21) To apply the generic-descriptive-suggestive-arbitrary-fanciful "distinctiveness spectrum" effectively, one must be able to distinguish between generic, descriptive, and suggestive/arbitrary/fanciful words. Imprecise lines separate generic words from descriptive, and descriptive words from suggestive, yet the significance between these designations is critical. (22) The determination that a word is descriptive, for example, affects not only the acquisition of trademark rights for the trademark holder, but also the strength of any resulting trademark. (23)

    In a strict application of the traditional distinctiveness spectrum analysis, a fanciful, arbitrary, or suggestive logo or product design would be immediately protectable as inherently distinctive, a descriptive logo or product design would be protectable only upon acquiring distinctiveness, and a generic logo or product design would not be protectable. The traditional spectrum, however, ineffectually differentiates protectable logos and product designs from those that lack the ability to distinguish the goods of one manufacturer from those of another. From a strictly semantic perspective, the terms "descriptive" and "suggestive" denote underlying definitional capabilities that words clearly possess, but logos and product designs may not. (24) Descriptive terms, for example, are words that describe the characteristics of the goods at issue; suggestive terms call to mind the goods but do not describe them. (25) Inasmuch as it is difficult to demarcate word marks, it is even more difficult to demarcate logos and product designs into suggestive and descriptive categories. (26) On the other hand, logos and product designs exist that seem either completely arbitrary or totally generic for the goods they represent. These symbols denote simple, unitary concepts. It is not difficult to imagine a generic symbol for a ball (a circle) versus an arbitrary one (a moose). (27)

    Further, standards for evaluating the distinctiveness of non-word trademarks like product designs have evolved in a manner that treats them all like descriptive word marks by requiring a showing of secondary meaning. (28) It is not the demarcation of a logo or product design as descriptive that is essential to this analysis, but rather the ability of the public to use it fairly in a descriptive manner.

    1. Descriptive Fair Use

    As explained supra, trademark protection is available for descriptive words that have acquired distinctiveness. (29) Due to the underlying expressive function of descriptive words that have acquired trademark status, trademark holders may not exclusively control them. (30) Competitors necessarily require such words to describe the nature and characteristics of their own goods. Thus, in what is known as classic, or "descriptive," fair use, the Lanham Act permits one to employ the words of a descriptive trademark in their descriptive sense to describe one's own goods. (31) Even in the event that there is a likelihood of confusion (32) between one's descriptive use of a word and the trademark holder's trademark use of it, descriptive fair use may insulate one from liability. (33) In fact, the Supreme Court roundly rejected the notion that descriptive fair use and likelihood of confusion were mutually exclusive. (34) In KP Permanent Make-Up, the Court clearly dictated that the trademark holder's burden to prove likelihood of confusion was not subsidiary to the alleged infringer's burden to prove descriptive fair use. The defense of descriptive fair use does not include a concomitant requirement to negate confusion. The Court...

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