Trademark laws are in place to help prevent confusion among consumers. This means that, in most cases, no one is permitted to use your brand name to market a product or service. Doing so could result in a potential customer being unsure where the product came from, and perhaps even purchasing the wrong item by mistake.
However, you should be aware that there is an important “fair use” defense to trademark infringement that may apply in your case.
Overview of the Fair Use Defense
Simply put, fair use allows someone to use your trademark without the act being considered infringement. Generally speaking, the less distinctive and original the trademark is, the less control the owner has over it.
So, for example, if you decide to call your coffee shop “Coffee Shop”, you would likely not be able to protect this mark. This means that any use by another person or business will probably be considered fair use.
By contrast, if the name of your business contains a made-up word, such as “Blamalamaland Beverages”, this would be considered distinctive. Bear in mind that the more distinctive the name is the more control you have. In other words, it would be very difficult for someone to claim fair use of these kinds of trademarks.
That said, there are two main categories of the fair use defense: descriptive fair use (aka classic fair use) and nominative fair use.
Descriptive Fair Use
Now, it is considered fair use to simply describe your goods or services. This is true even if the name uses portions of someone else’s mark. For example, as you probably imagine, the name 24-Hour Fitness is trademarked.
However, let’s say that you are in the process of starting a gym that will be open 24-hours a day. In this case, it would be permissible to advertise your business as a “fitness center open 24 hours”. This is true even though there is an obvious overlap with a registered trademark.
As mentioned above, the more fanciful or arbitrary the mark, the harder it is to fall back on the descriptive fair use defense. So, if you did decide to name your coffee shop “Coffee Shop”, any other business could use this name under fair use principles.
This is why, from a pure trademark standpoint, the more novel you can be with the name, the better. Under this rationale, it is unlikely that Blamalamaland Beverages could ever be descriptive.
But, it’s important to note that in order for someone to use this defense, it is essential that the terms are actually and literally descriptive. In other words, they cannot be simply suggestive, requiring some imaginative leap.
For example, if you wanted to refer to your bus line as “greyhound” this would be more suggestive than descriptive. In this case, you would not be able to rely on the fair use defense.
Nominative Fair Use
By contrast, nominative fair use involves using someone’s mark to refer to the trademark owner’s goods or services. In this case, you’re not trying to use a competitor’s name or logo to sell products, rather, you are merely referencing it.
A common example involves using a mark for comparative purposes, such as if you stated on your website that your soda is “better than Pepsi.” Here, although Pepsi is a trademark, your use would not constitute infringement.
As a general rule, it is helpful to remember that a trademark doesn’t act as a complete ban on using the name of another business. This actually comes up quite a bit in advertising where two or more products shown or discussed. Further, ownership of the trademark does not need to be acknowledged in any way, unless there is some existing agreement between the parties that states otherwise.