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Trademark Fair-Use Analysis Hits Snag

By Steven M. Weinberg

Few issues in trademark and advertising law can compete in importance with this: whether a competitor can use another's trademark in advertising its products or services. With the battle for consumer attention growing increasingly aggressive as the number of products and services proliferate, and the means for advertising and promoting them expanding at an even more alarming rate, the importance of brands and their recognition by consumers ' and the surrounding legal issues ' have never been more significant.

At the center of the controversy is what is referred to as the trademark doctrine of 'fair use.' This phrase, borrowed from copyright law, refers to the defense that the use of certain words or phrases in a nonexploitative manner is protected against a charge of trademark infringement. The rationale for the defense is that certain words and phrases are, in their primary sense, 'descriptive' of some aspect of the product or service at issue, and therefore must remain available for competitive use, the thought being that such words may be necessary for competitors to accurately describe their own products and services. Thus, if one competitor is able to build trademark rights in a descriptive term (and this can be done, as discussed below), another, using the term in a non-trademark, merely descriptive manner, may have a complete defense to a charge of infringement.

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