Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 38 of 47
without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and [3] the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 306–07 (9th Cir. 1992).
In ASTM I, this court rejected Defendant’s nominative fair use claim, finding that because it had “already determined that consumer confusion as to the source of the trademarked standards is likely, the nominative fair use defense is inapplicable and the court need not assess each of the [ ] factors.” ASTM, 2017 WL 473822, at *23. The Circuit rejected this analysis. Though it noted that it has “yet to opine on the precise factors courts should consider when assessing likelihood of confusion,” and that “[c]ourts of appeals have disagreed about how exactly to evaluate nominate fair use claims,” it clarified that “the likelihood of confusion analysis remains incomplete without at least some discussion of these factors.” ASTM, 896 F.3d at 456–57.
Just how the court should assess the nominative fair use analysis remains unsettled law. See id. at 457 (discussing Circuit split on proper approach and noting that “we need not resolve today, which approach our court should adopt”). For instance, should the court treat nominative fair use as an affirmative defense? See Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 220 (3d Cir. 2005) (treating nominative fair use “as an affirmative defense to be proven by defendant after likelihood of confusion has been demonstrated by the plaintiff.”). Should it consider the three nominative fair use factors as substitutes for the ordinary multi-factor likelihood of confusion test? See New Kids on the Block, 971 F.2d at 308 (defining nominative fair use defense without reference to the likelihood of confusion factors). Or should it consider the three nominative fair use factors in addition to the ordinary likelihood of confusion factors? See Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC
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