Last week we discussed ways that you can use a competitor’s mark in comparative advertising. This week we are discussing ways you can use a competitor’s mark in a descriptive manner under the doctrine of Descriptive Fair Use. In this type of use, the mark is not being used as a trademark, which greatly reduces or eliminates the possibility of the use being found to be trademark infringement.
Under the doctrine of Descriptive Fair Use, a party, even a direct competitor, may use another party’s descriptive trademark to describe their own product or services. Descriptive Fair Use requires:
- That the mark being used actually describes a person, place or attribute of goods or services; and
- The mark must also be used in the normal course of language.
In addition, the mark must be used in the text portions of an ad and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used.
For example, the mark BREATHE BETTER LIVE BETTER® was recently registered under a claim of acquired distinctiveness. This registration provides the owner with exclusive rights to this mark, when used as a trademark. However the owner of the mark may not be able to stop another facility from stating, for example:
XYZ Asthma Therapy Center provides therapies that can help you control your asthma and so you can breathe better and live better.
This sentence uses the phrases “breathe better” and “live better” in a purely descriptive manner in the normal course of language to describe an attribute of the services being provided. This use does not distinguish or set those descriptive phrases apart from the remainder of the ad.
Descriptive Fair Use looks at the totality of the use, including fonts used, size of the text and any other ways that the trademarked terms are used. For example, the same ad may be likely to be found to be trademark infringement if presented as follows:
XYZ Asthma Therapy Center provides therapies that can help you control your asthma so you can Breathe Better and Live Better.
This use sets the trademarked words apart from the remainder of the ad. Even with the word “and” the second ad would be likely to be considered infringing trademark use and not descriptive fair use.
This also applies to geographically descriptive marks and registrations that include surnames. There is a Federal registration for the mark BOSTON HEALTHCARE®.  This registration clearly does not stop other healthcare facilities from using the term “healthcare” nor does it stop other facilities from saying that they are located in Boston. It also may not stop use of the full phrase Boston healthcare – for example the following ad should be acceptable:
XYZ Healthcare Center provides quality healthcare in the Boston area.
The following should also be acceptable – but may have some additional risk:
XYZ Healthcare Center – providing Boston healthcare at its finest.
This ad is very likely to be found to be infringing:
XYZ Healthcare Center provides quality healthcare in the Boston area. Boston healthcare at its finest.
And this use will almost certainly be found to be infringing:
Boston Healthcare at its finest with XYZ Healthcare Center.
Our Insight. Your Advantage. You can use a competitor’s mark in a descriptive manner under the doctrine of Descriptive Fair Use if the mark is not being used as a trademark. However, this also means that your competitors can use your marks in the same way. Keep in mind that your trademarks will receive less protection under the doctrine of Descriptive Fair Use if they use generic words and phrases. The more commonly descriptive and generic the word(s) or phrases that comprise the trademark are or have become, the less likely the trademark owner may be able to regulate their descriptive use by others. As a result, it is important to choose a mark that is inherently protectable and then to be sure to use that mark is used properly to maintain its status as a trademark and not let it become descriptive or generic.
Check back next week to learn about nominative fair use.
Here are the other installments in this series: