HomeWebcastFair Use in Trademark Law: What You Need to Know to Avoid Infringement and Unfair Competition Claims
Fair Use in Trademark Law CLE/CPE CLE

Fair Use in Trademark Law: What You Need to Know to Avoid Infringement and Unfair Competition Claims

Live Webcast Date: Monday, March 14, 2016 from 12:00 pm to 2:00 pm (ET)

Fair Use in Trademark Law CLE/CPE

Join us for this Knowledge Group Fair Use in Trademark Law CLE/CPE Webinar. Trademarks enable consumers to exclusively identify the source of a product or service. In order to avoid consumer confusion, trademark owners are privileged to stop others from using the same or confusingly similar trademark. The owner of a trademark is the only legitimate user of the trademark. But nowadays, it has become increasingly common to see trademarks being used by third parties without the brand owner's permission. The “fair use” concept of the U.S. trademark law acknowledges instances wherein one’s use of the other’s trademark is permissible under certain conditions. Owners of trademarks should be well-versed with the “fair use” concept to better evaluate when a user’s utilization of their trademark is fair. More significantly, trademark users should be familiar with “fair use” to ensure that they don’t cross the line to infringement and, therefore, avoid a litigious future ahead.

In this two-hour Webcast, a panel of thought leaders and professionals assembled by The Knowledge Group will offer the audience an in-depth discussion of the important issues and updates with regards to Fair Use in Trademark Law. The speakers will also present their expert thoughts and opinion with respect to this significant topic.

Key topics include:

  • Fair Use in Trademark Law – Legal Perspective
  • Establishing Descriptive Fair Use Defense
  • Current Status of the Nominative Fair Use Defense
  • Identifying Non-Infringement Defenses
  • Due Consideration for Infringement Defenses
  • Trademark Rights of Trademark Holder
  • Trademark vs. Right of Publicity
  • Amendments to Fair Use in Trademark
  • Boundaries of Fair Use
  • Assessment of Fair Use

Who Should Attend

  • Trademark Lawyers
  • Trademark Owners
  • Trademark Professionals
  • Brand Managers
  • IP Counsel
  • In-house Counsel
  • Risk and Compliance Officers
  • Multinational Companies
  • Private and Public Companies
  • Other related/interested Professionals and Organizations


Fair Use in Trademark Law CLE/CPE
Peter C. Kirschenbaum
Senior Counsel
Fair Use in Trademark Law CLE/CPE
Mark Matuschak
Fair Use in Trademark Law CLE/CPE
J. Roger Williams, Jr.
Richards Rodriguez & Skeith LLP

Click Here to Read Additional Material

Fair Use in Trademark Law CLE/CPE

Peter C. Kirschenbaum, Senior Counsel

Mark Matuschak, Partner


J. Roger Williams, Jr., Partner
Richards Rodriguez & Skeith LLP



  • You Can Use Another Party’s Trademark, So Long As You Do Not:
    • Infringe The Other Party’s Mark

(Confusion As To The Source Of Goods Or Services)

  • Dilute The Other Party’s Famous Mark

(Blur Or Tarnish Its Distinctive Qualities)


  • Engage In Unfair Competition

(Deceive As To The Affiliation, Connection, Or Association With The Other Party Or Falsely Suggest Sponsorship Or Approval By The Other Party)

    • Descriptive Fair Use
    • Nominative Fair Use
  • Descriptive Fair Use
  • Using A Trademarked Term, But Not To Refer To The Goods Or Services

That The Mark Identifies

  • Examples
  • Using “Apple” To Describe Fruit, Rather Than To Identify Computers
  • Using “Chase” As A Verb, Rather Than To Identify A Bank

Source: Lanham Act § 33

  • Nominative Fair Use
  • Using Another Party’s Mark To Identify The Other Party’s Good Or Service,
  • But In A Non-Confusing Manner
    • Three Requirements
  • The Other Party’s Good Or Service Is Not Readily Identifiable Without Using Their Mark
  • Use Of The Other Party’s Mark Is Limited To What Is Needed To Identify The Other Party’s Good Or Service
  • The Other Party’s Mark Is Not Used In A Way That Suggests Sponsorship Or Endorsement By The Other Party

Source: New Kids On The Block v. News America Pub., Inc., 971 F.2d 302 (9th Cir 1992)

  • Related concepts
  • Trademark “fair use” vs copyright “fair use”
  • Right to Publicity
  • Rights to use name that is similar to another’s mark
  • Recurring Fact Patterns - overview
    • Copy and Traditional Advertising “Use”
    • Other “Use” – SEO/Keyword Advertising
    • Other “Use” – domain names
    • Other “Use” – using a trademarked phrase for its plain English meaning
    • Other “Use” - unauthorized/unaffiliated distributor resells goods on the internet
  • Recurring Fact Pattern – Copy and Traditional Advertising Uses
    • Human-readable
    • Traditional uses
    • Comparative Advertising
    • Online-ads – Google Ads
    • Online ads – Sponsored Ads
    • Use of another’s trademark in website search box
  • Recurring Fact Pattern – SEO/Keyword Advertising
    • Not human readable
    • SEO
    • Metatags
    • Keyword advertising/Google Adwords
    • Is it “Use”?
    • Review of case law, with an emphasis on splits in circuits, addressing:
  • Does use of third party marks in non-human readable form qualify as trademark use under the Lanham Act?
  • If such use is trademark use, can it create a likelihood of confusion?
  • Recurring Fact Pattern – domain names & use of another’s trademark in a URL
  • Recurring Fact Pattern – Use of trademarked phrase:  advertising or just using English?
  • Recurring Fact Pattern – Resellers/Unauthorized Distributors/Grey Market
  • Open Questions under US Law
  • Fair Use in other countries
  • Practice Perspective – What is Relationship between Mark Holder and Fair User
    • Zero-sum competitors
    • After-market/reseller/service
    • App developers/Licensees
    • Distributors vs. Dealers
    • Franchisees

From been





IBM: https://www.ibm.com/legal/us/en/copytrade.shtml

  • Practice Perspective – cease and desist tips
  • Practice Perspective – advertising injury insurance

Fair Use in Trademark Law CLE/CPE

Fair Use in Trademark Law CLE/CPE

Peter C. KirschenbaumSenior CounselLeClairRyan

Peter joined LeClairRyan in 2014 as Senior Counsel and as a member of the firm’s Intellectual Property & Technology Team. He is an accomplished corporate attorney with depth of experience in trademark law and related brand management issues and a proven ability to provide effective legal counsel to large and complex organizations.

Before joining LeClairRyan, Peter served for many years as lead in-house trademark counsel for JPMorgan Chase and its predecessor Chase Manhattan. In that role his responsibilities included:

  • Advising on the use of trademarks owned by other parties
  • Educating internal clients and other attorneys about trademark law and its application to the firm’s business
  • Overseeing the integration of five major trademark portfolios into the current JPMorgan Chase portfolio
  • Maintaining and enforcing rights in the firm’s corporate marks and product names
  • Coordinating research on proposed marks
  • Drafting and negotiating trademark licenses and trademark provisions in corporate transactions
Fair Use in Trademark Law CLE/CPE

Mark MatuschakPartnerWilmerHale

Mark Matuschak is a partner in the firm's Litigation/Controversy Department, and a member of the Intellectual Property Litigation and Appellate and Supreme Court Litigation Practice Groups. He joined the firm in 1985.

Mr. Matuschak was a featured member of the WilmerHale IP litigation team when WilmerHale was chosen as IP Litigation Department of the Year by the American Lawyer, and has been named a “New England Super Lawyer” by Boston Magazine every year since 2004. Mr. Matuschak was selected by his peers as one of the 2014 and 2015 Best Lawyers in America in the area of intellectual property litigation, and in 2013 and 2014 he was named a leading practitioner in patent law by IAM Patent 1000: The World's Leading Patent Practitioners.

Fair Use in Trademark Law CLE/CPE

J. Roger Williams, Jr.PartnerRichards Rodriguez & Skeith LLP

Roger’s practice focuses on intellectual property (IP) and business litigation. Roger’s IP and technology practice includes preparation and prosecution of United States and international patent and trademark applications, advice and counseling, procurement and government contracting, licensing and acquisition, portfolio management, opinions, post-grant review proceedings at the Patent and Trademark Office, administrative hearings before the International Trade Commission (ITC), and litigation in state and federal courts regarding all aspects of patents, trademarks, copyrights and trade secrets. 

Fair Use in Trademark Law CLE/CPE

Course Level:

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast


Course Code:

NASBA Field of Study:
   Business Law

NY Category of CLE Credit:

Total Credits:
    2.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

LeClairRyan has rapidly grown into a preferred, full-service provider of high-end counsel to businesses of all sizes—from emerging start-ups to multinational corporations. In every matter matters we handle we strive to become our clients’ business partner and trusted advisor. Through this role, we help our clients achieve their business objectives while managing and minimizing their legal risks, difficulties and expenses.

With offices in California, Colorado, Connecticut, Delaware, Georgia, Maryland, Massachusetts, Michigan, Nevada, New Jersey, New York, Pennsylvania, Texas, Virginia, and Washington, D.C., LeClairRyan offers clients the talent of approximately 380 attorneys in a full spectrum of practices. In addition, we can provide representation in all 50 states as we continue to expand to meet the local, regional and national needs of our clients.

Website: https://www.leclairryan.com/

WilmerHale provides legal representation across a comprehensive range of practice areas that are critical to the success of its clients. The law firm’s leading Intellectual Property, Litigation/Controversy, Regulatory and Government Affairs, Securities, and Transactional Departments participate in some of the highest-profile legal and policy matters. With a staunch commitment to public service, the firm is renowned as a leader in pro bono representation. WilmerHale is 1,000 lawyers strong with 14 offices in the United States, Europe and Asia. For more information, please visit www.wilmerhale.com.

Website: https://www.wilmerhale.com/

Deeply rooted in Texas and Austin, Richards Rodriguez & Skeith LLP is a full-service law firm for business law, estate planning, administrative law, intellectual property, and civil litigation including environmental law, product liability, commercial litigation, annexation, condemnation, voting rights, constitutional law, financial services, employment law, sexual harassment, and insurance bad-faith. The firm handles litigation matters in state and federal court throughout the state of Texas. The firm also provides representation before the Texas Natural Resource Conservation Commission and other state regulatory agencies.

Website: https://www.rrsfirm.com/

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