Descriptive and Nominative Fair Use: When You Can Legally Use Someone Else's Trademark
By Casey Scott McKay ·
American trademark law recognizes two distinct doctrines that both go by the name "fair use," and confusing them is one of the most expensive mistakes a defendant can make. Classic or descriptive fair use is the statutory defense in 15 U.S.C. § 1115(b)(4), which protects a defendant who uses a term otherwise than as a mark, descriptively, fairly, and in good faith to describe its own goods — and after KP Permanent Make-Up (2004) the defendant does not have to prove that consumers are unconfused. Nominative fair use is the judge-made doctrine born in New Kids on the Block, which protects use of the plaintiff's mark to refer to the plaintiff's own product, and it splits three ways across the circuits: the Ninth Circuit's replacement test, the Third Circuit's burden-shifting approach in Century 21, and the Second Circuit's additive approach in ISC². This article traces both doctrines from Prestonettes and Champion Spark Plug through Tabari, maps the circuit variations, and works through the fact patterns where they actually get litigated: comparative advertising and its Section 43(a)(1)(B) false-advertising trap, resale and refurbishment, repair and compatibility claims, keyword ads and domain names, and the statutory dilution exclusions in Section 1125(c)(3). It tells defense and brand-side counsel where each doctrine reliably wins, where it reliably fails, and which questions remain genuinely open.
IP and Technology > Trademarks | Article | Published 21 November 2023 - Updated 18 May 2026 | Casey Scott McKay - marksy.us
Summary. Two very different doctrines share the name "trademark fair use," and telling them apart is the first job in any defense. Classic (descriptive) fair use is statutory — 15 U.S.C. § 1115(b)(4) — and protects a defendant who uses a word in its ordinary descriptive sense rather than as a brand; after KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), that defendant does not have to prove consumers are unconfused, because some confusion is the price of letting anyone own a descriptive word. Nominative fair use is judge-made, beginning with New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), and protects a defendant who uses the plaintiff's mark to refer to the plaintiff's own product — the repair shop, the reseller, the comparative advertiser, the critic. The circuits handle nominative use three different ways, and which court you are in can decide who bears the burden of proof. This article develops both doctrines historically and doctrinally, maps the split, and works through the recurring fact patterns — comparative advertising, resale and refurbishment, compatibility claims, keyword advertising, domain names, and dilution's statutory exclusions — with attention to where the law is settled, where it is not, and what a defendant should actually be doing about it.
Keywords: descriptive fair use · nominative fair use · classic fair use · 15 u.s.c. 1115(b)(4) · kp permanent make-up · new kids on the block test · toyota v. tabari · century 21 lendingtree · comparative advertising · referential use · resale and repair · compatibility claims · keyword advertising · trademark defenses · likelihood of confusion · good faith · dilution fair use exclusion · section 43(a) false advertising
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