Trademark Nominative Fair Use: Navigating the Affirmative Defense, Comparison With Statutory Fair Use, Court Treatment
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide guidance for IP counsel on nominative fair use. The panel will compare it with statutory fair use and examine it as an affirmative defense. The panel will also discuss the relationship to confusion and its impact on comparative advertising strategies and provide best practices for nominative fair use.
Outline
- Statutory fair use
- Does confusion matter in deciding if a use is statutory fair use?
- What is "use other than as a trademark"?
- Implications on brand clearance and enforcement
- Nominative fair use
- Is this an affirmative defense or just a category of cases that requires a different test for evaluating likely confusion?
- Should the strength of a mark matter in a nominative fair use case?
- When is use of a trademark reasonably necessary to describe a product or service?
- How are the circuit courts treating nominative fair use?
- Statutory and nominative fair use
- Best practices for both
- Litigation strategies
Benefits
The panel will review these and other key issues:
- What factors should counsel consider when analyzing nominative fair use?
- Is nominative fair use an affirmative defense or just another way of analyzing confusion?
- How have the courts addressed the issue of nominative fair use and its application?
- What is the impact on a brand owner when AI generates content for a third party that includes a trademark or slogan?
- Are third-party uses on social media nominative or classic fair use, or something else entirely?
Faculty
Ian C. Ballon
Shareholder, Co-Chair Global Intellectual Property & Technology Practice Group
Greenberg Traurig
Mr. Ballon is an intellectual property and internet litigator. He represents clients in copyright, DMCA, trademark,... | Read More
Mr. Ballon is an intellectual property and internet litigator. He represents clients in copyright, DMCA, trademark, trade secret, right of publicity, privacy, security, software, database and internet- and mobile-related disputes and in the defense of data privacy, cybersecurity breach, adtech and behavioral advertising, TCPA and other internet-related class action suits. Mr. Ballon is the author of the five-volume legal treatise, E-Commerce and Internet Law: Treatise With Forms 2d Edition (West 2008 & 2022 Cum. Supp.)
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Joshua M. Dalton
Partner, Leader Global Trademark and Copyright Practice
Morgan Lewis & Bockius
As a pretrial, trial, and appellate lawyer in IP litigation, Mr. Dalton takes a bold, creative approach to resolving... | Read More
As a pretrial, trial, and appellate lawyer in IP litigation, Mr. Dalton takes a bold, creative approach to resolving even the most complex trademark, trade dress, false advertising, copyright, patent, and trade secret/non-competition disputes for clients across a wide variety of business sectors. He has appeared in courts throughout the U.S. as well as before the Trademark Office and Trademark Trial and Appeal Board and the International Trade Commission and has been recognized as a leading lawyer in IP litigation. Mr. Dalton enjoys practicing as well as speaking at various events, and regularly shares his insights on a variety of IP and related topics, including trademark protection, consumer surveys, copyright infringement, false advertising, product design protection, domain name disputes, artificial intelligence, copyright recapture, patent false marking, and Do Not Call legislation. He is also a National Institute of Trial Advocacy-certified trial skills trainer and has served as faculty in a number of trial advocacy workshops.
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Heidi Howard Tandy
Partner
Berger Singerman
Ms. Tandy has handled matters involving the internet, social media, privacy, intellectual property and tech law issues,... | Read More
Ms. Tandy has handled matters involving the internet, social media, privacy, intellectual property and tech law issues, for large and small corporate clients and individuals, from retail stores to groundbreaking online content creators, as well as hotels, restaurants, jewelry designers, educators, podcasters, website and app developers, novelists, theatrical producers and an Emmy-award winning makeup artist. She’s worked with content creators, technology builders, individual business owners, and large corporations to successfully protect websites, apps, copyrights and trademarks. Since the 1990s, Ms. Tandy’s work has included the creation of terms of service and privacy policies and best practices, as well as creating website accessibility policies and general internet policies and procedures. She has filed hundreds of trademark applications, litigated before the Trademark Trial and Appeal Board and in federal and Florida courts, created and negotiated license agreements and assignments, and protected the rights of clients around the world.
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