New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992)

“Using a trademark to describe the trademarked product itself — and not to mislead — is permissible nominative fair use.”

Short Description

This case clarified the concept of nominative fair use under U.S. trademark law. The court held that one can use another’s trademark to identify the trademark owner’s goods or services as long as it does not imply sponsorship or endorsement. It laid down the foundational test for nominative use, shaping modern fair use doctrine in trademark disputes.

Facts

The pop group New Kids on the Block sued two newspapers, USA Today and The Star, for running telephone polls asking readers to vote for their favorite band member — using the group’s name in advertisements. The band claimed trademark infringement, arguing that the newspapers profited from the use of their name without authorization. The newspapers contended their use was purely descriptive to identify the band in a news-related context.

Findings / Reasoning

The Ninth Circuit found that the newspapers’ use was not a trademark violation. The court explained that when it’s necessary to use a trademark to refer to the trademarked entity itself — and when the use is truthful and limited — it constitutes nominative fair use. The court formulated a three-part test: (1) the product or service must not be easily identifiable without use of the mark; (2) only so much of the mark as necessary is used; and (3) the user does nothing to suggest sponsorship or endorsement by the mark owner.

Suggestions / Observations

This case is a milestone in trademark law because it balanced free expression and brand protection. It helps media, journalists, reviewers, and even competitors to refer to brands lawfully without fear of infringement — as long as the use remains factual and non-deceptive.

Judgment & Date

The Ninth Circuit ruled in favor of News America Publishing, Inc. on July 7, 1992, recognizing nominative fair use as a legitimate defense in trademark law.