in commerce, without ASTM’s consent, a “reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion.” 15 U.S.C. § 1114(1)(a). This inquiry boils down to two questions: (1) does ASTM own “a valid mark entitled to protection” and (2) is PRO’s “use of it … likely to cause confusion.” Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).
PRO never challenges the validity of ASTM’s marks, so this case involves only the second question. Although our court has yet to opine on the precise factors courts should consider when assessing likelihood of confusion, our sister circuits have adopted similar multi-factor tests, all of which “owe their origin to the 1938 Restatement of Torts.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:30 (5th ed. 2018); see id. (noting that “[t]he [v]arious [c]ircuit [m]ulti-[f]actor [t]ests are [n]ot [f]undamentally [d]ifferent”). Factors considered include the strength of the mark, the similarity of the marks, the proximity of the goods, the similarity of the parties’ marketing channels, evidence of actual confusion, the defendant’s intent in adopting the mark, the quality of the defendant’s product, and the sophistication of the buyers. See id. §§ 24:31–24:43 (cataloging the factors used by each circuit and citing, inter alia, AMF. Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979); Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961)).
Just as some uses of a copyrighted work do not violate the Copyright Act, certain uses of a trademark do not run afoul of the Lanham Act. One such use, known as the “nominative” fair use of a mark, occurs when “the defendant uses the plaintiff’s trademark to identify the plaintiff’s own goods and ‘makes it clear to consumers that the plaintiff, not the defendant, is the source of the trademarked product or service.’” Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 154 (4th Cir. 2012) (internal citations omitted) (quoting Century 21 Real Estate Corp. v. Lending-tree, Inc., 425 F.3d 211, 220 (3d Cir. 2005)). A prototypical example of nominative fair use would be where “an automobile repair shop specializing in foreign vehicles runs an advertisement using the trademarked names of various makes and models to highlight the kind of cars it repairs.” Id. (citing New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306–07 (9th Cir. 1992)). Permitting such use accommodates situations where it would be “virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.” New Kids, 971 F.2d at 306. In order for a use to qualify as nominative fair use, courts require that “[1] the product or service in question must be one not readily identifiable without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and [3] the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id. at 308 (footnote omitted).
PRO contests neither the enforceability of ASTM’s trademarks nor the district court’s analysis of the ordinary likelihood of confusion factors. Rather, it argues only that its use of ASTM’s trademarks qualified as a nominative use that should be allowed under the Lanham Act. The district court rejected this claim, finding instead that because it had “already determined that consumer confusion as to the source of the trademarked standards is
