미국 상표법상 지명적(指名的)공정사용에 관한 소고

The fair use of a trademark is a doctrine of limitation of a trademark right. In United States, the trademark fair use can be divided into two categories. One is the Descriptive fair use and the other is the Nominative fair use. The former is legislated in Lanham Act Article 1115(b)(4) as an affirmative defense. When a name, descriptive term is used descriptive manner, not as trademark-use, with in good faith, the trademark holder cannot claim trademark infringement. The latter, the nominative fair use isn’t legislated in Lanham Act, this is recognized by courts’ decisions. But it legislated in Lanham Act Article 1125(c)(3)(A) as an exclusion of trademark dilution with descriptive fair use and parody. The term ‘nominative fair use’ is initially used in ‘New Kids’ decision by the 9th Circuit Court in 1992. The court suggested three factors called ‘New Kids Test’ to decide nominative fair use. The three factors are (1) the product or service can in question must be one not readily identifiable without use of the trademark (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Not all the federal court permits nominative fair use as an limitation of a trademark right. So some scholars insist legislation of nominative fair use doctrine as an affirmative defense. In Korean Trademark Law, the nominative fair use can be regarded as ‘non- trademark use’, so this trademark use doesn’t infringe trademark holder’s right.