Blast from the past: nominative fair use avant la lettre

Polyglycoat Corp. v. Environmental Chemicals, Inc., 509
F.Supp. 36 (S.D.N.Y. 1980)

Found this in an unrelated search and it made me think about
the utility (if any) of the nominative fair use category. Plaintiff sued
defendant for advertising of defendant’s automotive silicone paint finish
remover called POLYCRACKER. Plaintiff’s Polyglycoat, a protective paint finish
sealant for automobiles, was heavily referenced on Polycracker’s label and its
launch ad in Auto Body Repair News, a trade journal:

The words “Polyglycoat TM Remover” appear conspiciously on
the POLYCRACKER label, one page of the ad consists solely of the bold-lettered
statement “WIPE AWAY POLYGLYCOAT TM”, and the body of the ad contains such
statements as “There’s nothing more troublesome for auto body shops than
silicone finishes like Polyglycoat” and “Take off Polyglycoat with the wipe of
a cloth.”
In terms of the Polaroid factors, the court found strong
secondary meaning in the relevant market, the use of an identical mark, product
relatedness sufficient to generate confusion, and an intent to “capitalize on
the popularity of the POLYGLYCOAT mark and product in the field.” There was no
evidence of actual confusion, but “a reasonable likelihood of confusion is
inferred from defendant’s use of plaintiff’s exact trademark to promote its
related product, the absence of a viable alternative explanation by defendant
for its appropriation of the POLYGLYCOAT mark, and other circumstances of the
relevant market.”
Thus, an injunction was warranted to keep Polyglycoat off
the Polycracker label “either as it now appears, or any other way by which the
mark is singled out as the generic, shorthand term standing for the species of
paint finish sealants which POLYCRACKER is said to remove.” Defendant was also
enjoined from singling out the mark in ads, e.g., “WIPE AWAY POLYGLYCOAT,”
“Take off Polyglycoat,” “normal prep solvents … do not remove polyglycoat,”
“The Polyglycoat wipes off easily,” and “say good-bye to Polyglycoat problems.”
However, in the absence of falsity or misleadingness,
defendant couldn’t be prevented from advertising that its product could remove
automotive silicone finishes including POLYGLYCOAT, “the most popular and
perhaps the most durable brand.” Thus, it could continue using the name “in
such conjunctive phrases as ‘silicone finishes like Polyglycoat R.’” In any
such use, the mark couldn’t appear in letters which distinguish it from the
other words in the conjunctive phrase by size, color, typeface or any other
characteristic. And a long disclaimer was required:
POLYGLYCOAT R is a registered trademark of the Polyglycoat
Corporation, Scarsdale, New York, for its protective coating and sealant for
automotive finishes. The term Polyglycoat as used herein means the product
manufactured and sold by that company, and is used without the permission of
Polyglycoat Corporation. POLYCRACKER is neither manufactured nor in any way
sponsored or authorized by Polyglycoat Corporation.
This disclaimer probably did nothing but increase
defendant’s advertising costs, since consumers weren’t particularly likely to
read it.  And aside from the required
disclaimer, this seems like pretty much the result you’d get from nominative
fair use today (since courts would probably interpret the initial ad, at least,
as using “too much” of the mark, as in the Playboy v. Welles case). 
What, if anything, does having nominative fair use as a
defined concept add?  The current Second
Circuit treatment is worse than nothing, since the NFU factors actually negate
the significance of the other key Polaroid factors, like strength and identity
of the marks, and can’t be weighed against them in an understandable way.  “Weighing” implies that enough strength and
similarity (always present in a NFU situation) ought to be able to overwhelm
the NFU factors, but they really don’t. The original concept from the Ninth
Circuit was a way to formalize the obvious fact that there are some cases in
which the multifactor test factors (particularly strength, similarity, and relatedness
of goods) don’t point to the correct result. 
In particular, the multifactor test doesn’t match our understanding of
cases in which the trademark is clearly being used as a comparator or subject
of discussion. I haven’t fully figured out my take on this, but I do think we
need some doctrinal indicator to judges that there are times when the
multifactor test is a bad idea, so that we don’t have to rely on the variable
common sense of individual judges and in particular district court judges’
understandable fear of getting reversed when courts of appeals say that you have
to use the multifactor test no matter what (except with Rogers, in the Second Circuit).

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