Eric W. Walker


Trademark defenses such as descriptive fair use have been codified in the Lanham Act for decades. Despite the practical necessity of nominative fair use, it has yet to be codified into the Lanham Act. While the Supreme Court has offered guidance on descriptive fair use, there is currently no such guidance with respect to nominative fair use. Currently, our best guidance is a confusing three-way Circuit Split on how to approach nominative fair use. Other circuits have largely remained uncertain in how to approach the doctrine or have outright avoided using the doctrine. In analyzing the intricacies of nominative fair use, this note comes to the conclusion that the Third Circuit’s approach best resolves the split by treating the doctrine as an affirmative defense, avoiding judicial confusion and waste, and allowing for the coexistence of consumer confusion and nominative use. In 2017, the Supreme Court denied a petition for certiorari on a Second Circuit case dealing with nominative fair use, leaving the three-way circuit split intact. This leaves amending the Lanham Act as the most direct and sensible approach. The Congress should therefore amend the Lanham Act, formally recognizing the Third Circuit’s approach to nominative fair use to address the Circuit Split and expand the freedoms of trademark defendants by allowing them to use the trademarks of others in a justifiable way.

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