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:
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?