A person or business may, with no permission or license, make use of a trademark of a different owner to identify the product of the other owner. This is called nominative use or nominative fair use of the trade mark, so called because it is using the trademark as a name for the product or service with which it is associated. Comparative advertising is an example of nominative use ("Brad A performs 20% better than Brand X"). So is compatibility advertising. ("Fred's Blades are compatible with Wizz razors").
Nominative use is not an infringement of a trademark. Trademark owners may object to nominative use, and claim that it is not allowed. But they have no legal right to do so, if there is no risk of confusion. Their policies are not binding on those who have no contract with the holder.
In this answer the "non-owner" is the person or entity wanting to make nominative use of a mark, and the "owner" is the owner of that mark.
Limitations on Nominative Use
The non-owner may not use more of the mark than is needed to identify the other product or service. This generally means that logos and slogans may not be used. Distinctive typefaces and color schemes are also not usually permitted. Only the name itself may be used under a nominative use claim.
The mark may not be used in such a way as to imply that the non-owner's product is approved or endorsed by the trademark owner, nor that it is made by or comes from the same source as the product associated with the mark.
The mark may not be used in such a way that a reasonable person is likely tom confuse the non-owner's product with the owner's product.
The mark must not be used to make or imply false claims
Sources and quotes
In The International Trademark Association's page "Fair Use of Trademarks" an example of nominative use to shoo compatibility is given:
Use of the GILLETTE trademark by a third party, to indicate that its blades are compatible with Gillette’s handles, will not infringe Gillette’s rights, even though the blades are an essential part of the Gillette product (razors) and not a mere accessory. In order to be non-infringing, however, the use must be necessary to indicate the intended purpose of the product and must be made in accordance with honest commercial practices.
In the Digital Media Law Project's page "Using the Trademarks of Others " says on this topic:
Nominative Fair Use: The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. Courts impose three requirements on defendants who want to take advantage of the nominative fair use defense: (1) the trademark owner, product, or service in question must not be readily identifiable without use of the trademark; (2) the defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. This defense works against trademark infringement lawsuits. The federal dilution statute, found at 15 U.S.C. § 1125(c)(3)(A), also makes nominative fair use a complete defense to trademark dilution claims.
World Trademark Review's article "United States: How to use a third-party mark without infringing it" gives an extended example of nominative use in a compatibility situation, asking how the makers of the (fictional) product "ePhone" can show that it is compatible;e with Pear brand smartphones.
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)).
Necessary use of a third-party trademark to describe your goods or services is known as ‘nominative fair use’ – this is a non-infringing use where there is no likelihood of confusion. If the trademark owner can demonstrate that there is a likelihood of confusion, then the use cannot be nominative fair use.
How does one stay on the side of nominative fair use, without straying into likelihood of confusion territory? US case law sets out the following three-part nominative fair use test:
- The product or service cannot be readily identified without use of the mark.
- Only so much of the mark or marks is used as is reasonably necessary to identify the product or service.
- The user has not done or said anything that otherwise suggests sponsorship or endorsement by the trademark owner.
For an example of the test in action, see New Kids on the Block v News Am Pub, Inc (971 F2d 302, 306 (9th Cir 1992)).
The question is whether use of a third-party trademark is necessary to readily identify your goods or services. A company 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); see also New Kids, 971 F2d at 305: “one might refer to… ‘the professional basketball team from Chicago,’ but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls”).
Thus, in the ePhone scenario, it is advisable to counsel your team against using the Pear logo and any other elements of Pear’s trade dress (including fonts, colours or packaging layout). This is not to say that use of a logo can never be non-infringing nominative fair use. For example, if your company’s accessory is compatible with the smartphones of the three largest smartphone companies, it may be nominative fair use to display the Pear logo alongside the logos of the two other companies on the packaging. This may be simpler or more likely to be understood than saying “compatible with Pear, Samson and BlueBerry smartphones”. However, careful steps should be taken to avoid any suggestion of sponsorship or endorsement by any one of the companies ...