Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 39 of 47
(IISSC), 823 F.3d 153, 168 (2d Cir. 2016) (“Because we believe that the nominative fair use factors will be helpful to a district court’s analysis, we hold that, in nominative use cases, district courts are to consider the Ninth Circuit and Third Circuit’s nominative fair use factors, in addition to the [likelihood of confusion] factors.”).
Having reviewed and considered each of these three approaches, the court believes that the Second Circuit’s approach—requiring consideration of the nominative fair use factors in addition to the likelihood of confusion factors—is the most appropriate.
First, the nominative fair use defense is not an affirmative defense. The Supreme Court has interpreted the Lanham Act to distinguish between descriptive fair use and nominative fair use. Descriptive fair use, which falls within section 1115(b)(4)’s definition of affirmative defenses, involves the use of a name, term, or device otherwise than as a mark. Nominative fair use involves a defendant’s use of a mark to describe the plaintiff’s product, and “cannot fall within § 1115(b)(4)’s language.” See IISSC, 823 F.3d at 165, 167 (“It is called ‘nominative’ use because it ‘names’ the real owner of the mark.”). “A prototypical example of nominative fair use would be where ‘an automobile repair shop specializing in foreign vehicles runs an advertisement using the trademarked names of various makes and models to highlight the kind of cars it repairs.’” ASTM, 896 F.3d at 456 (quoting Rosetta Stone Ltd., 676 F.3d at 154). In that example, the repair shop’s use differs from the use defined by section 1115(b)(4) because it uses the trademarked names to identify the automaker’s goods. The same is true here because Defendant uses Plaintiffs’ marks to describe the Plaintiffs’ own products. See Def.’s 2d MSJ at 32.
Second, the nominative fair use factors should supplement, rather than supplant, the likelihood of confusion analysis. See IISSC, 823 F.3d at 168. This approach offers district
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