Last week we discussed ways that you can use a competitor’s mark in comparative advertising. This week we will discuss use of a mark in a descriptive manner such that it is not being used as a trademark, thereby greatly reducing, if not eliminating, the possibility of the use being found to be trademark infringement.

Under the doctrine of Descriptive Fair Use, a third party, even a direct competitor, may use your descriptive trademark to describe the their own product or services, even if you have acquired secondary meaning. However, that use can only be in a purely descriptive manner. Descriptive Fair Use requires that the mark being used does actually describe a person, place or attribute of goods or services. The descriptive words must also be used in the normal course of language. In addition, the mark must be used in the text portions of an ad and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used.

For example, if the mark RUN BETTER. RUN FASTER. ® was registered under a claim of acquired distinctiveness, the registration would provide the owner with exclusive rights to this mark, when used as a trademark. However, the owner of the mark may not be able to stop another facility from stating, for example:

XYZ Physical Therapy Center provides therapies and training that can help you run better so you can run faster.

This sentence uses the phrases “run better” and “run faster” in a purely descriptive manner in the normal course of language to describe an attribute of the services being provided. This use does not distinguish or set those descriptive phrases apart from the remainder of the ad.

Descriptive Fair Use looks at the totality of the use, including fonts used, size of the text and any other ways that the trademarked terms are used. For example, the same ad may be likely to be found to be trademark infringement if presented as follows:

XYZ Physical Therapy Center provides rehabilitation and training so you can Run Better and Run Faster.

This use sets the trademarked words apart from the remainder of the ad. Even with the word “and,” the second ad would be likely to be considered infringing trademark use and not descriptive fair use.

This also applies to geographically descriptive marks and registrations that include surnames. Even if there was a federal registration for the mark PLEASANTVILLE HEALTHCARE ®, with a claim of acquired distinctiveness (secondary meaning), it does not stop other healthcare facilities from using the term “healthcare” nor does it stop other facilities from saying that they are located in Pleasantville. It also may not stop use of the full phrase Pleasantville healthcare – for example the following ad should be acceptable:

XYZ Healthcare Center provides quality healthcare to the residents of Pleasantville.

The following should also be acceptable – but may have some additional risk:

XYZ Healthcare Center– providing Pleasantville healthcare at its finest.

This ad is very likely to be found to be infringing:

XYZ Healthcare Center provides quality healthcare in the Boston area. Pleasantville Healthcare at its finest.

And this use will almost certainly be found to be infringing:

Pleasantville Healthcare at its finest with XYZ Healthcare Center.

Our Insight. Your Advantage. The more commonly descriptive and generic the word(s) or phrases that comprise the trademark are or have become the less likely the trademark owner may be able to regulate their descriptive use by others. Therefore, it is important to choose a mark that is inherently protectable and then to be sure to use that mark is used properly to maintain its status as a trademark and not let it become descriptive or generic.