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A Look Back at <i>New Kids on the Block</i> : Ninth Circuit Expands the Nominative Fair Use Doctrine
Trademark fair use under the common law and '33(b)(4) of the Lanham Act has long permitted a defendant to use terms descriptively to refer to the defendant's own product or service; in contrast, the doctrine of nominative fair use permits a defendant to use a plaintiff's mark to describe the plaintiff's product or service. Unlike the common law and statutory fair use defense, the nominative fair use doctrine is a judicially created defense of relatively recent vintage. Prior to the development of the nominative fair use defense, courts occasionally declined to enjoin the copying of nondescriptive marks used to refer to the plaintiff's products or services, however, a true doctrinal basis for that result was not expressly articulated until New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
In that decision, USA Today and The Star independently conducted polls of their readers in connection with a news story about the popular boy-band NEW KIDS ON THE BLOCK. The survey, which referred to the NEW KIDS ON THE BLOCK, asked readers to call a 900 number to vote and express their opinions about which “New Kid” was the most popular or the sexiest. The group, which ran their own 900 numbers for fans, sued the papers for, among other things, trademark infringement based on their unauthorized commercial use of the group's trademark NEW KIDS ON THE BLOCK. Judge Alex Kozinski, writing for the court, explained that the papers' use of the mark could best be understood as involving nontrademark use of a mark:
“we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark – where the only word reasonably available to describe a particular thing is pressed into service – lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark [law], it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.” Id. at 307-08.
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