Fair Use is also covered under Defenses and is best understood when read in the context of the other defenses. It is treated as a separate topic to make it easier to find for those that may want to compare and contrast the doctrine under trademark with its analog under copyright. They are not the same, although at times both commentators and courts talk in terms that would make you believe otherwise, the devil is always in the details and therefore let that serve as an introduction to the editorial rant that follows.

What exactly is "fair use" under trademark doctrine? Before attempting to answer this question it may be worthwhile to take a moment to reflect. The law has often been called a "system of communication" (e.g. like TCP/IP but not as efficient). In order to understand what is being said you must understand the protocol, the links and the feedback loop. It may sound like English, but often it is not. At least not the kind English supported by dictionaries. It is a kind of English only supported by the case law. To understand what something means you must understand the cases, that is the price of admission. There is a movement (of sorts) to cut through this morass (to the degree possible) and provide the masses a view behind the curtain. Some call it "interdisciplinary work" others call it "open source law." It is basically an attempt to explain, more or less in plain terms, what the protocol means so that "ordinary" people understand. That is the objective behind the "tutorials." It is an attempt at a kind of "news you can use." They may fall short of the mark, but that is the intent. Therein lies both the benefit and the danger. That is why "tutorials" (from any source) can never be interpreted as legal advice (see our Terms of Use). The legal protocol requires precision and it is exactly that which is often lost in translation.

Fair use, as a defense in the trademark sense, is limited to a narrow meaning best exemplified in the case of Zatarain's v. Oak Grove Smokehouse (5th Cir. 1983). Here the argument was over the trademark "Fish-Fri" owned by Zatarain. The court explains the use of the defense as follows:

Although Zatarain's term "Fish-Fri" has acquired secondary meaning in the New Orleans geographical area, Zatarain's does not now prevail automatically on its trademark infringement claim, for it cannot prevent the fair use of the term by Oak Grove and Visko's. The "fair use" defense applies only to descriptive terms and requires that the term be "used fairly and in good faith only to describe to users the goods or services of such party, or their geographic region." (quoting U.S.C. section 1115(b)(4)). The district court determined that Oak Grove and Visko's were entitled to fair use of the term "fish fry" to describe a characteristic of their goods; we affirm that conclusion.

Zatarain's term "Fish-Fri" is a descriptive term that has acquired secondary meaning in the New Orleans area. Although the trademark is valid by virtue of having acquired secondary meaning, only that prenumbra or fringe of secondary meaning is given legal protection. Zatarain's has no legal claim to an exclusive right in the original, descriptive sense of the term; therefore, Oak Grove and Visko's are still free to use the words "fish fry" in their ordinary, descriptive sense, so long as such use will not tend to confuse customers as to the source of the goods.

But the excerpt above begs the question how much use by competitors might indeed lead to confusion? That is left for another link in the chain to determine. Notice however, that the court in Mattel  (see Defenses|Parody) used the phrase "nominative fair use." Were they referring to what 5th Circuit was talking about in Zatarain? No, despite the fact that "fair use" was part of the holding. The cases mean what the cases mean, nothing more. In order not to lose track of "Waldo" you must keep in mind a quote by Supreme Court justice Oliver Wendell Holmes: “the law is not something to be derived from a set of axioms via the power of deductive reasoning, but rather the law is ultimately whatever a court says that it is.”