Understanding Trademark Fair Use

A Practical Legal Guide for Businesses Using Trademarks in Marketing and Content

Running a business in New York means making quick decisions, staying competitive, and often walking a fine line when it comes to branding. If you’ve ever asked yourself whether you can legally reference another brand in your ads, on your website, or even in client conversations, you’re not alone. That’s where trademark fair use comes in.

Trademark fair use lets you use someone else’s trademark under certain, very specific conditions. But getting it wrong can lead to lawsuits, especially in a state like New York where intellectual property enforcement is taken seriously. Understanding what qualifies as fair use can help protect your business, your message, and your peace of mind.

At Horn Wright, LLP, we understand how local judges interpret these laws. Our attorneys offer guidance when you need it most. If your use of a brand name or trademark is in question, we’re ready to help you stay on solid legal ground.

Why Trademark Fair Use Matters in New York

Trademark fair use is a daily reality for businesses in New York that advertise, compare products, or create content. With the sheer volume of brands competing in the same space, using a trademarked name can feel unavoidable. And sometimes, it is.

Take a walk through SoHo or scroll through a Queens-based e-commerce shop, and you’ll see examples everywhere: a retailer describing a shoe as "Nike-like," or a hair salon that lists Dyson products under tools used. These aren’t always violations. But they need to be handled carefully.

New York’s courts see a high volume of intellectual property disputes. The state is home to key federal jurisdictions, including the Southern and Eastern Districts, which both handle a significant number of trademark cases. So, whether you’re running a business in Buffalo or launching a podcast in Brooklyn, understanding fair use gives you a necessary layer of protection.

What Is Trademark Fair Use?

Trademark fair use refers to limited ways in which a person or business can use someone else’s registered trademark without permission. It sounds simple, but it’s bound by strict legal conditions.

There are two types:

• Classic fair use applies when you use a trademark descriptively, not as a brand name.
• Nominative fair use happens when you reference a trademarked name to identify the product or service clearly.

Neither type gives you a free pass. Your intent, the context, and how consumers perceive the use all matter. For example, a food blog in Albany that describes a blender as “Vitamix quality” might qualify for fair use, but not if the site implies an endorsement or connection to Vitamix.

New York courts scrutinize how it looks and feels to your audience.

Classic Fair Use: Descriptive Use Without Confusion

Classic fair use allows someone to use another brand’s trademarked term in its original, descriptive sense. The key? You’re not using it as a trademark. You're describing a product, feature, or quality.

Let’s say a Brooklyn clothing boutique promotes a line of waterproof jackets and describes them as "velvety soft." If the word "Velvety" happens to be a registered trademark for another clothing brand, this could still fall under classic fair use if it’s used to describe texture, not brand identity.

What courts in New York look for:

• Are you using the word descriptively?
• Are you using it fairly and in good faith?
• Are you trying to benefit from the trademark holder’s reputation?

They also consider the setting. In crowded retail environments like Manhattan or online spaces like Etsy, where customers scan listings quickly, even subtle wording can create confusion. That's why precision matters.

Nominative Fair Use: Referring Without Implying Endorsement

Nominative fair use allows you to refer to a brand, but only when it’s necessary and not misleading. The three-part test usually applied by courts, including those in New York, asks:

1. Is the product or service easily identifiable without using the trademark?
2. Did you use only what was needed to identify it?
3. Did your use falsely suggest endorsement or affiliation?

Let’s say a tech repair shop in Rochester lists Apple and Samsung among the brands they service. That may qualify as nominative fair use, especially if the reference is brief and factual.

But let’s take it a step further. If the shop starts using the Apple logo in its signage or says “authorized” without being officially certified, that crosses a legal line. Local businesses in Long Island and Staten Island often trip up here when trying to highlight their offerings. Words are one thing. Visual branding is another.

Use only what’s essential. And never suggest a relationship that doesn’t exist.

How New York Courts Interpret Fair Use

New York’s legal landscape is tough but consistent. The federal courts here, especially the Southern District, play a major role in shaping how trademark law evolves nationally.

Judges in these courts often weigh:

• Whether the use confuses consumers
• If it adds value or merely exploits reputation
• How the use appears in context

In a 2020 case involving a Lower Manhattan business using a luxury brand name in online marketing, the court ruled against the business. Even though they used the name descriptively, the overall layout suggested a sponsorship that didn’t exist. It came down to presentation, not just wording.

That’s especially important in a digital-first state like New York, where presentation is everything. Instagram posts, Google Ads, and storefront signs all fall under scrutiny. It’s not just what you say, it’s how you say it.

Real-World Fair Use Scenarios in New York

You don’t need a law degree to see how this plays out in real life. Here are some simplified examples:

• A Harlem bakery references "Oreo" in describing a cookie topping. This could qualify if it’s clear, accurate, and doesn’t imply a tie to Nabisco.
• A podcast in Yonkers compares local gym chains to "Equinox" in an opinion piece. If used factually and not in a misleading way, it may fall under nominative use.
• A Syracuse tech blog reviews smartphones and mentions "iPhone" or "Pixel" for clarity. As long as it sticks to product identification, it’s likely covered.

What matters in all these? Tone. Accuracy. Intent. New York audiences are savvy, but courts assume some confusion is always possible. If there’s a risk of misleading someone, you’re better off rewording.

When Fair Use Fails: Risk of Trademark Infringement

Fair use has limits. Once you cross those, you expose yourself to trademark infringement claims. And in New York, that gets expensive fast.

Risks include:

• Cease-and-desist demands from trademark owners
• Costly court appearances or settlements
• Loss of customer trust
• Brand confusion that affects your reputation

Even unintentional misuse can lead to action. For example, a café in Albany that names a drink "Frappuccino" without a license might think it's harmless. But with Starbucks watching trademark usage closely, they could face real legal trouble.

In a state filled with ambitious startups and growing franchises, these mistakes are easy to make. And even easier to avoid with the right guidance.

You can find additional background on federal trademark enforcement through the U.S. Patent and Trademark Office.

How New York Businesses Can Safely Use Trademarks

You don’t have to avoid brand references entirely. You just have to do it right. Here are a few ways to stay safe under New York trademark law:

• Describe products using plain language, not brand stylizations
• Reference trademarks only when it’s necessary for clarity
• Avoid logos, taglines, or signature fonts
• Keep brand comparisons factual, not suggestive
• Double-check for possible endorsements or misleading visuals
• When unsure, get a legal review before publishing

Whether you’re in a Bronx creative agency or running a boutique in Utica, these steps help protect your work and your wallet.

When to Consult a Trademark Lawyer in New York

The moment something feels unclear, it’s time to get professional guidance. Legal advice is a smart way to avoid them.

You should talk to a trademark attorney if:

• You receive a legal threat or notice
• You plan to reference a competitor’s brand
• You’re building an ad campaign with brand comparisons
• Your team posts content mentioning other companies

In New York, where markets are saturated and branding is everything, the stakes are higher. Having an experienced trademark lawyer review your plans gives you clarity and confidence. It keeps your focus on growth, not courtroom drama.

Trademark Fair Use in New York Starts with Smart Choices

Trademark fair use is legal, but not casual. If you’re working in New York’s competitive market, whether on Madison Avenue or in a Hudson Valley startup, you need to know when a brand reference helps and when it harms. Understanding the boundaries protects your business, your reputation, and your future.

At Horn Wright, LLP, we guide New York businesses through the fine print of trademark use. If you have questions or concerns about how fair use applies to your work, our attorneys are ready to step in and help you make informed, legally sound decisions.