New Kids On The Block v. New America Publishing, Inc.

Case(s): New Kids On The Block v. New America Publishing, Inc., 971 F.2d 302, 9th Cir. (1992).

New Kids on the Block sued two newspapers for using their name and image in public opinion polls without their permission, alleging that it implied sponsorship. The music group – which held a registered trademark for their name in connection with entertainment services, music recordings, and related merchandise – argued that by way of its use of the “New Kids on the Block” trademark, New America Publishing, Inc., the publishing company behind a magazine titled “New America,” was causing confusion among consumers and diluting the distinctiveness of the “New Kids On The Block” mark.

On appeal, the Ninth Circuit affirmed a lower court’s finding that a publisher’s use of the NEW KIDS ON THE BLOCK band trademark was a non-infringing, fair use. The publisher had displayed the mark in conjunction with a phone-in poll (callers were charged a fee to participate) asking readers to chime in with opinions about the group. In furtherance of its decision, the court of appeals developed a three-prong test for nominative fair use. Under this test, a defendant may be entitled to a nominative fair use defense, “where the defendant uses a trademark to describe the plaintiff’s product, rather than its own.” Introducing the three-prong test,

The Ninth Circuit explained that if the following three requirements are met, nominative use constitutes a defense to trademark infringement: “Where the defendant uses a trademark to describe the plaintiffs product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”