This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I’d remove the link and bring it out under a short leash for some legal training and discussion:

Google Works

Trademark fair use, you ask?

My answer: No. You wonder, why?

I previously blogged about the trademark nominative fair use defense:

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.

Unauthorized use of the Google script and distinctive color combination cannot satisfy elements (2) and (3) of the nominative fair use defense. Too much has been taken (more than the word itself) and what has been taken (logo and style unique to Google) suggests a sponsorship or endorsement, notwithstanding the barely visible and microscopic disclaimer on the bottom of the website the ad would take you to, were you to “Click Here Now,” as the ad requests.

What about naming the product “Google Fortune kit”?

Section 33(b)(4) of the Lanham Act, a/k/a the statutory classic or descriptive fair use trademark defense, does not apply unless the use is “otherwise than as a mark,” and the term used is “descriptive of” the accused’s goods or services, and it is “used fairly and in good faith only to describe the goods or services” (emphasis added) of the one making the unauthorized use.

Naming the product “Google Fortune” fails the classic or descriptive fair use defense because, at a minimum, putting aside questions of good faith for now, the name “Google Fortune” is “used as a mark,” and it doesn’t “only” describe the offered kit, it also names it and indicates source.

Now, having had the benefit of analyzing the spam e-mail ad with respect to unauthorized use of the Google name, logo, and color combination, how would you analyze the above use of FORTUNE from both trademark fair use defense perspectives?

  • Great post, Steve. Takes some doing to make the nominative fair use defense an interesting read.
    I’ll take a run at the use of FORTUNE and say that it could be defended as fair use. While not terribly creative or memorable word play on the marketer’s part, it doesn’t appear that Nevis’ use of the word takes much more than the word itself. I don’t have Fortune magazine’s typeface or color committed to memory, but I’m going to guess this ad’s use of the word is different enough. Also, I’m assuming you could argue that the word “fortune” is, generally speaking, a lot more “fair usable” than a word such as “google.”
    Whadda ya say? Did I get it right? Do I qualify for the free legal internship with your firm?

  • A nice little case study that neatly illustrates a valuable point, does it quickly, and minimizes use of jargon. Very enjoyable.

  • Agreed. This is not fair use. First, the GOOGLE trademark is being used as an identifier (i.e., as a trademark) by a company other than Google, Inc. Second, the advertisment fails to add a disclaimer that the product is not endorsed or sponsored by Google, Inc. Third, the company is uses the ™ designation as if to suggest that the product GOOGLE FORTUNE is a trademark owned by them, or even worse, endorsed or sponsored by Google. Overall, this is likely a case of infringement and/or dilution either of which should be avoided at all cost.

  • Thanks for the comments and kind words!
    Vince, I would probably tend to agree that making out a case of trademark fair use of the FORTUNE mark is easier to do than for the GOOGLE mark and logo, for a number of reasons. Although the use in the spam e-mail does show FORTUNE in all caps, as Time has appeared to use the mark for a very long time, the exact type style does not appear to be duplicated, see:
    With such a slight stylization to the word, it is a very different analysis from the highly stylized and distinctive and colored GOOGLE logo.
    I’ll get back to you on the internship, but my first thought is, you’re over-qualified!

  • Miodrag Markovic

    A classic case of infringement, even if you do not treat “GOOGLE” as a well-known mark, which it obviously is. Regarding “FORTUNE”, in most European jurisdictions, where English is not official language, and bearing in mind Latin reoot and meaning of the word, it would be treated either as decriptive term or deceptive term, depending on the approach.

  • Cindy Brandt

    This is a scam, Google does not endorse it, even though they say they are employed by them (I called them-1-877-361-8622). In their kit they send you they even have a postcard that states they will turn you into if you dispute their transactions with you. Give me a break, who cares?