Dr.iPod

A regular Sunday evening usually surrounds sushi, glass doors and people watching. It was a particularly boring evening, so I began drifting off into thought. All of a sudden, my senses were yanked to rapt attention by the blaring and brightly colored automobile that whizzed part. Dr.iPod! Aha! Instantly, the question posed to me was - can they do that?

The two greatest words in the IP arena are -FAIR USE!

Under the US Trademark Law, there are two forms of permitted trademark fair use - Classic and Nominative fair Use. These are the two "get me out of jail free" cards from the trademark infringers lot.

Classic Fair use is usually permitted when the trademark is descriptive enough to not allow easy alternatives. For example: a trademark called "Bright bulbs". If a defendant wanted to describe his bulbs as bright bulbs, the plaintiff would have a difficult time arguing against the defendant's fair use defense.

Nominative fair use, on the other hand, is permitted when the use of a trademark is necessitated by its simple uniqueness. Eg: Chanel No. 5. In New Kids on The Block v News American Publishing, the test laid down for determining whether or not the use is nominative is:

a. The product or services must not be readily identifiable without the use of the trademark
b. The use of the mark must be as much as is reasonably necessary to identify the product or service
c. The user must not do anything that suggests sponsorship or endorsement by the trademark holder

Professor McCarthy has stated that, "nominative fair use" is "a term to denote one situation in which a mark is used in a manner that does not cause confusion and is therefore non-infringing." So, at the end of the day nominative fair use essentially begs the question - is there going to be confusion?

Apple Inc., as stated in an article on msnbc, is known not to "accept exchanges on iPods under warranty if their screens have been cracked or if it’s clear they’ve been dropped". So what would Dr. iPod do? Call himself exactly that, the use is restricted to identification of the product and certainly, no one can be confused into wondering "is Apple sponsoring this service?".

Ah well, it is in strange ways that one is reminded of the basic principles and doctrines of law. Sometimes a welcome reminiscing of old school days.