In KP Permanent, the Supreme Court recently confirmed that plaintiffs in trademark infringement cases under the Lanham Act have the burden of proving likelihood of confusion. As such, this article argues that lower courts do not have the authority to switch that burden of proof for such claims, even though they involve nominative uses (in which defendant is using the actual mark of plaintiff as plaintiff’s source identifier and not as a description of the defendant's products or services). This article also argues that because Congress created affirmative fair use defenses for descriptive uses of marks and for trademark dilution, but did not authorize such defense for nominative uses, courts do not have the authority to create a separate fair use test where defendants have the burden of proof on “fairness.” Finally, the article shows that there is no need for a separate nominative fair use test and that some of the unique issues that arise with nominative uses may justify switching to defendants the burden of production, but not the burden of proof, on likelihood of confusion.
Douglas L. Rogers, Ending The Circuit Split Over Use Of A Competing Mark In Advertising—The Blackstone Code, 5 J. Marshall Rev. Intell. Prop. L. 157 (2006)