We have had somewhat of an unplanned blue jeans theme here at DuetsBlog, with Karen blogging about the upside down triangle logo associated with Guess designer jeans from the 1980s, here, and Tiffany blogging about Levi Strauss and Abercrombie & Fitch butting heads, here. My turn now to talk about a blue jean brand, along with airbrushing, non-traditional trademarks, and nominative fair use.

Some time ago I came across an advertiser’s reward-type promotion, inviting customers to refer a friend and “pocket the cash” — basically, a free cash reward for the successful referral. What interested me about the promotion was the prominent depiction of a Levi’s back pocket complete with the Levi Strauss Double Arcuate Design on the denim pocket. After realizing this was no co-branding exercise and that a pair of Levi’s jeans was not part of the reward, only cash, and this depiction was merely the advertiser’s play on words or an attempt to reinforce the words in the promotion, it led me to wonder whether the advertiser even realized that it had used one of Levi Strauss’ non-traditional trademarks, most likely without permission.

Here are a few examples of federally-registered non-traditional trademarks owned by Levi Strauss:

Mark ImageMark ImageMark Image

The one I encountered in the reward promotion was the center image minus the tab, so it’s possible the well-known tab element was airbrushed to remove it as a trademark issue. The broader-scope registered mark on the right, however, indicates that simply removing the tab may not be sufficient to avoid all possible trademark issues.

This happens a lot. Non-traditional trademarks often confuse advertisers because these unconventional marks are so wrapped up and intertwined with the product itself that they are often misunderstood and overlooked by advertisers. Another problem with non-traditional marks for advertisers is that they are not always susceptible to airbrushing, as I blogged before about the difficulties in attempting to remove non-traditional trademarks by airbrushing or digital manipulation. In the reward promotion example, airbrushing the Double Arcuate Design, and leaving a generic blue denim pocket would have conveyed the desired word reinforcement or play on words, and avoided any trademark issues altogether.

Some advertisers, on the other hand, think that nominative fair use will protect them in using just about anything they want to use in an ad. The nominative fair use defense is actually not as broad in scope as some might think, so now might be a good time to recite the necessary elements of a successful nominative fair use defense:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

One of the most common types of successful nominative fair use defenses would be of an independent auto repair shop that specializes in fixing certain brands of autos, and says so in advertising, but only uses the brand names without their logos, because using the logos is more than necessary to truthfully communicate the fact and it may, in fact, suggest an authorized dealership relationship.

What do you think, picking Levi’s pocket or fair use?