When Can You Use Someone Else's Trademark? Nominative Fair Use Explained
One of the most common misconceptions in trademark law is that trademark owners have an absolute right to prevent anyone else from using their trademarks. They do not. In many situations, businesses, journalists, reviewers, content creators, and competitors may refer to a trademark owner's products or services in order to communicate accurately with consumers.
After all, how can someone discuss a Tesla vehicle without saying "Tesla"? How can a reseller advertise used Rolex watches without mentioning Rolex? Trademark law recognizes this practical reality through a doctrine known as nominative fair use.
The nominative fair use doctrine allows a person or business to use another party's trademark for the purpose of identifying, describing, or referring to the trademark owner's product or service, provided the use does not create a likelihood of consumer confusion regarding sponsorship, affiliation, or endorsement.
Understanding when nominative fair use applies can be critical for businesses operating websites, online marketplaces, social media accounts, domain names, advertising campaigns, and other forms of commercial communication.
What Is Nominative Fair Use?
Nominative fair use applies when a third party uses another person's trademark solely to identify the trademark owner's goods or services. Unlike traditional trademark infringement cases, the defendant is not attempting to use the trademark as its own brand. Instead, the trademark is being used to refer to the trademark owner's product.
The leading case on the subject is New Kids on the Block v. New America Publishing, Inc., a 1992 decision issued by the Ninth Circuit Court of Appeals. In that case, newspapers conducted reader polls asking which member of the music group New Kids on the Block was the most popular. To conduct the polls, the newspapers necessarily used the band's name. The court recognized that it would be virtually impossible to identify the group without using its trademarked name. As a result, the court articulated what has become known as the nominative fair use test.
(If you’d like to learn more about how to prepare to sell your trademark, read this article)
The Three-Part Nominative Fair Use Test
Under New Kids on the Block, a defendant's use of another party's trademark may qualify as nominative fair use where:
1. The Product or Service Cannot Be Readily Identified Without Using the Trademark
The trademark must be necessary to identify the product or service being discussed. For example:
A reviewer discussing an iPhone generally must use the term "iPhone."
A broker specializing in Ferrari vehicles may need to identify Ferrari automobiles by name.
A real estate agent selling properties within a named development may need to identify the development by its trademarked name.
If there is no practical substitute for identifying the product or service, this factor generally favors fair use.
2. Only So Much of the Trademark Is Used as Reasonably Necessary
The user should employ only the amount of the trademark reasonably necessary to identify the product or service. Typically, this means:
using the trademarked name,
avoiding unnecessary use of logos,
avoiding trade dress,
avoiding stylized branding,
and avoiding other indicators that could suggest affiliation.
The less extensive the use, the stronger the fair use argument.
3. The User Must Not Suggest Sponsorship, Endorsement, or Affiliation
This is often the most important factor. Even if a business needs to use a trademark to identify a product, the use may still become infringing if it suggests that the trademark owner sponsors, endorses, authorizes, or is affiliated with the user. Courts focus heavily on whether a reasonable consumer would likely be confused regarding the relationship between the parties.
(If you’d like to learn more about what damages you can claim for trademark infringement, read this article.)
Nominative Fair Use and Domain Names
One of the most important applications of the doctrine involves websites and domain names. Businesses frequently use trademarks within domain names to describe the products or services they offer.
One of the leading case in this area is Toyota Motor Sales, U.S.A., Inc. v. Tabari. In Tabari, automobile brokers used domain names such as:
buy-a-lexus.com
buyorleaselexus.com
Toyota argued that these domain names infringed its LEXUS trademark and sought to prohibit their use. The Ninth Circuit disagreed. The court concluded that the brokers were using the term "Lexus" to identify the type of vehicles in which they specialized and that consumers were unlikely to believe the websites were operated by Toyota itself. Importantly, the court distinguished descriptive domain names from domain names that might falsely imply ownership or sponsorship. For example:
lexus.com would strongly suggest affiliation with Toyota.
buy-a-lexus.com communicates something different.
The court emphasized that trademark law should not prohibit truthful communication simply because it references a trademarked product.
Do You Need a Disclaimer?
One common question is whether nominative fair use requires a disclaimer. The answer is generally no. Courts have repeatedly recognized that a disclaimer is not an absolute prerequisite to nominative fair use. That said, disclaimers can still be helpful.
A properly drafted disclaimer may reduce the risk of confusion and strengthen a fair use argument, particularly where there is any possibility that consumers could misunderstand the relationship between the parties. In Tabari, the defendants' decision to remove certain branding elements and clearly disclose that they were not authorized Lexus dealers further reduced any potential confusion.
A Real Estate Example
Consider a broker who specializes in selling homes within a residential community known as "The Mark." Potential buyers searching online are likely looking specifically for properties located within that development. In that situation, using the name of the development may be necessary to accurately describe the services being offered. A website such as: homesforsalethemark.com arguably communicates that the broker sells homes located within The Mark development. By contrast, a website such as themark.com may create a much stronger impression that the website is operated by, affiliated with, or authorized by the development itself. Assuming the broker uses only the name of the development, avoids logos and proprietary branding, and clearly discloses the absence of any affiliation, the broker may have a strong nominative fair use argument.
Of course, every situation must be analyzed on its own facts.
Common Misconceptions About Trademark Fair Use
Many business owners mistakenly believe:
"If I use a disclaimer, I'm automatically protected." - Not necessarily. A disclaimer helps, but it does not eliminate liability if the overall presentation creates confusion.
"If I mention a trademark, I've committed infringement." - Also incorrect. Trademark law generally permits truthful references to another party's products and services.
"I can use any trademark in any domain name." - Not always. The analysis remains highly fact-specific and depends on whether consumers are likely to be confused.
"Trademark owners can prevent all third-party use." - Trademark law protects against confusion, not mere references. In many situations, nominative fair use protects the right to accurately identify another party's products or services.
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*This article is provided for informational purposes only, and does not constitute legal advice, counsel or representation.
