Nominative Fair Use in Trademark Law: Different Circuit Approaches and Business Takeaways

Nominative fair use is a doctrine in U.S. trademark law that permits a business to use another company’s trademark when it is necessary to identify that company, its products, or its services. Businesses encounter this issue regularly. Examples include explaining product compatibility with a recognized platform, offering repair or resale of branded goods, or using a competitor’s name in comparative advertising. 

This article explains how nominative fair use works, how different courts across the United States apply the doctrine, and what businesses should keep in mind when making references to another brand. 

How Courts Across the U.S. Apply Nominative Fair Use

While the nominative fair use doctrine is recognized nationwide, courts do not all apply it the same way. There is a clear split among the circuits. 

For businesses, this means the outcome of a nominative fair use claim can vary significantly depending on the jurisdiction. A reference that might be acceptable in one circuit could create liability in another, making it important to understand the specific rules that apply where a dispute could arise.

Ninth Circuit 

The Ninth Circuit’s approach focuses on three questions. 

• First, is the trademark owner’s product difficult to identify without using the mark? 

The mark does not have to be the only possible way to identify the product, but using it may be justified if it is a clearer or more practical way to explain what is being offered. 

• Second, has the user taken only what is reasonably necessary to identify the trademark owner’s goods or services? 

The reference should stop at what is needed to make the point and should not include extra uses of the mark. 

• Third, has the reference been presented in a way that avoids suggesting sponsorship or endorsement? 

A clear disclaimer can help show that no such connection exists.

An example is the case New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), where the band sued newspapers that used its name to run reader polls about the group. The New Kids argued that the use of their name in connection with the polls implied endorsement. The court disagreed. First, it explained that there was no practical way to run a poll about the New Kids without naming them, so reference to the trademark was necessary. Second, the newspapers used only what was needed to identify the group, avoiding the logo or other branding. Third, the context made clear that the polls were the newspapers’ own reader surveys, not promotions sponsored by the band.

By contrast, in Yuga Labs, Inc. v. Ripps, 144 F.4th 1137 (9th Cir. 2025), the defendants launched their own NFT collection but used Yuga’s “Bored Ape Yacht Club” and “BAYC” names to brand and market it. First, the marks were not used to identify Yuga’s NFTs but to label the defendants’ own NFTs, which falls outside the scope of nominative fair use. Second, the use was not limited to what was necessary, as the marks were embedded in the collection’s name and symbol and repeated across advertising. Third, the presentation risked implying affiliation, since third-party NFT trackers even identified the two collections as having the same origin. The court found this was not nominative fair use because the marks functioned as brand names for the defendants’ products, not as references to Yuga’s.

For businesses operating in this circuit, the guidance is straightforward: use another’s trademark only when needed to identify that business’s product or service, keep the reference factual and limited, and avoid anything that could suggest approval or sponsorship.

Third Circuit 

The Third Circuit applies a modified version of the Ninth Circuit’s test. The first two questions remain the same: was it necessary to use the trademark to describe either the trademark owner’s product or the business’s own services, and was only as much of the mark used as was reasonably required? The third question is different. Instead of asking whether there was any suggestion of endorsement, the court looks at whether the business accurately described the relationship between the parties.

An example is Keurig, Inc. v. Strum Foods, Inc., 769 F. Supp. 2d 699 (D. Del. 2011). Strum sold coffee pods under its own “Grove Square” brand that were compatible with Keurig brewers. The packaging stated that the pods were “for use by owners of Keurig coffee makers” and included a disclaimer that Strum was not affiliated with Keurig. First, the court found that using the Keurig name was necessary to explain compatibility. Second, Strum limited itself to the plain word mark without copying Keurig’s logo or stylization. Third, the disclaimer on the box accurately explained that there was no connection between the companies. Taken together, these factors supported a finding of nominative fair use.

By contrast, in David’s Bridal, Inc. v. House of Brides, Inc., 2012 WL 4083899 (3d Cir. 2012), the defendant did not meet the test. House of Brides used the “David’s Bridal” name extensively on its own website, including in page titles, advertising text, and meta-tags designed to attract search traffic. First, although mentioning David’s Bridal might have been necessary in limited contexts, the repeated and prominent use went well beyond what was needed. Second, the volume and placement of the mark suggested more than simple reference. Third, there was no clear explanation of the relationship, leaving consumers with the impression that House of Brides was connected to or endorsed by David’s Bridal. The court found that this failed the Third Circuit’s standard for nominative fair use. 

For businesses in this circuit, the key takeaway is that references to a trademark must be limited, factual, and carefully worded. Even a truthful statement can be problematic if it exaggerates or blurs the relationship between the parties.

Takeaways

For businesses, nominative fair use is often unavoidable. Customers expect to know whether a service is compatible with a particular product, whether training is offered on established software, or whether a business can repair a branded device. The law allows these references, but only within careful limits.

Businesses should first confirm that the reference is truly necessary, such as when describing compatibility, comparative performance, or an existing relationship with the trademark owner. The mark should not be repeated unnecessarily, and the reference should be confined to the factual description that customers need.

It is also prudent to clarify the relationship on the face of the use and to include disclaimers stating that the trademark is owned by the mark owner and that the business is not affiliated with or endorsed by the trademark owner. These disclaimers are not always legally required, but they can help demonstrate good faith and reduce the risk of confusion.

Above all, businesses should approach nominative use with restraint and transparency. By showing that the goal is to inform customers rather than to borrow goodwill, businesses can reduce their legal exposure while still providing clear and accurate information in the marketplace. Because the outcome can depend heavily on the jurisdiction and on how the reference is presented, businesses considering this type of use should consult experienced counsel to evaluate the risks and structure the reference appropriately.