However, the fair use of a trademark may be protected under copyright laws depending on the complexity or creativity of the mark as a design logo.
Such statements may, however, be required by the terms of a license agreement between the parties, and they may be prudent (and courteous) as a way of preventing misunderstandings or allegations of passing off.
[2] In New Kids and in Playboy v. Welles, the courts examined older cases, identifying a unifying principle that they then named "nominative use".
Among the older cases cited by the Court in Playboy v. Welles was Volkswagenwerk Aktiengesellschaft v. Church,[6] in which the Ninth Circuit had ruled that an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company.
In the case of Yue v. MSC Software Corporation,[7] the Northern District of California held that the nominative fair use defense is a burden-shifting defense properly decided at the summary judgment stage and would be premature to raise in a motion to dismiss.