Nominative Fair Use of Third-Party Trademarks
US trademark law generally permits the use of a third-party trademark provided that there is no likelihood of confusion (ie, no trademark infringement) and any claims made in connection with the use are not false, misleading or otherwise inaccurate (ie, no false advertising) (see McCarthy on Trademarks and Unfair Competition §§11:43, 27:35 (4th ed 2016)).
The necessary use of a third-party trademark to describe Seattle Data Recovery's goods or services is ‘nominative fair use’. Our content contains non-infringing use where there is no likelihood of confusion.
- Seattle Data Recovery's products or services cannot be readily identified without the use of the marks.
- Only so much of the mark or marks are used as is reasonably necessary to identify the product or service.
- Seattle Data Recovery has not done or said anything that otherwise suggests sponsorship or endorsement by the trademark owner.
According to New Kids on the Block v News Am Pub, Inc (971 F2d 302, 306 (9th Cir 1992)). Seattle Data Recovery's use is nominative fair use.
Referring to a third-party mark
Seattle Data Recovery may use the “normal terms which, to the public at large, signify the [mark owner’s goods]” to accurately describe the company’s goods or services (see Volkswagenwerk AG v Church, 411 F2d 350, 351 (9th Cir 1969).
In Volkwagenwerk, the Ninth Circuit held that it was not an infringement for the defendant automobile mechanic specializing in the repair of Volkswagen autos to advertise his business as “Independent Volkswagen Porsche Service” (id at 350-51). Seattle Data Recovery uses terms like ‘Data Recovery for BRAND NAME hard drives’, which operates as a disclaimer. The website https://seattle-recovery.com includes marks owned by multiple seperate computer manufacturers which makes confusion between Seattle Data Recovery and any single computer manufacturer.
