Fair Use of Descriptive Marks

Posted by on Aug 6, 2013

Today we take a look at the fair use defense to allegations of trademark infringement.  Beware!  The fair use defense in trademarks is quite different from its more notorious cousin, the fair use defense in copyright actions.  In a previous post we looked at Zatarain’s v. Oak Grove Smokehouse to learn the applicable standards for when secondary meaning allows for a merely descriptive trademark to be enforced.  Today we return to the case featuring delicious battered and fried chicken and fish to learn more about fair use and its role in the final disposition of the case by the Fifth Circuit Court of Appeals.

Background of the Case

As previously discussed, at issue in the case were two related products – dried batter mixes marketed under the names “Chick-Fri” and “Fish-Fri.”  Both terms fell into the descriptive category of trademarks.  The appellate court did not overturn the district court’s findings: that Fish-Fri had secondary meaning, but that Chick-Fri did not.  The basic reasoning was that advertising had given Fish-Fri adequate association with the manufacturer in the minds of the consuming public, but that Chick-Fri was poorly advertised and so did not have a corresponding significance to the general public.  Thus, as a threshold matter, the defendant could not be liable for infringing the Chick-Fri mark, because only descriptive marks with secondary meaning are enforceable.

The discussion then shifted to whether the Fish-Fri mark was infringed and whether or not the defendant had any defenses available.

Fair Use

As the Zatarain’s court states, in some circumstances others may be able to use a descriptive term even if that term has acquired secondary meaning.  This specific set of circumstances is known as (trademark) fair use.  To qualify for fair use, a defendant must have “used [the allegedly infringing term] fairly and in good faith only to describe to users the goods or services of [a] party, or their geographic origin,” Lanham Act Section 33(b)(4).  The big-picture policy behind fair use is simple: the Lanham Act does not want someone to be able to appropriate, for their exclusive use, portions of the English language – especially to prevent a competitor from adequately describing the competitor’s own products.  Thus the use of the term in its descriptive sense is not trademark infringement – so long as customer confusion does not result.

Fish-Fri

The court then looked at Oak Grove’s use of the words “Fish-Fry,” and determined that fair use had been satisfied.  There was a great deal of evidence that there was no intent to use Fish-Fry as a trademarked term, that Oak Grove believe the term was a generic name for a fish coating mix and that the defendant had taken care to avoid having a similar trade dress (packaging) – thereby avoiding customer confusion.  Oak Grove was thus entitled to use the words Fish-Fry in their descriptive sense to describe their product.

Overall fair use is another safe harbor for those innocently using descriptive terms.  Although a merely descriptive term may rise to the level of receiving trademark protection via secondary meaning being established, the fair use defense is an important public policy tool designed to preserve the right of the public to full and fair use of the English language.  Please also see generally Merges, Menell, and Lemley – Intellectual Property in the New Technological Age, 4th ed.