Safe Use of Trademarks

by Thomas King

A trademark is a word, phrase, symbol or design that identifies the source of a particular good. Trademark protection grants the owner of the trademark exclusive right to use the trademark in connection with the identified goods. In general, use of a trademark without permission of the trademark owner results in trademark infringement. However, there are several instances when you can safely use a trademark without committing trademark infringement.

Obtain Permission

Perhaps the safest way to use a trademark safely is to obtain permission from the owner. Be sure to get the permission in writing if at all possible. This will prove valuable should you later be sued for trademark infringement. Additionally, be sure not to overstep the scope of your permission. If you receive permission to use a trademark as part of a school project, don't use the trademark to sell merchandise at a school fair. To find the owner of a trademark, start with the U.S. Trademark and Patent Office's Trademark Electronic Search System.

The Trademark Has Been Abandoned

You can safely use a trademark that has been abandoned. This means the trademark has not been used for three years. Note, however, that some courts have held that the owner of a trademark need only show an intent not to abandon the trademark to show that the trademark was not abandoned.

Noncommercial Use

You can safely use a trademark if it is not used in connection with a good or service, but this can be tricky. For example, a website that uses the trademarked name "Petco" may not be committing trademark infringement if the website contains pictures of pets and does not contain any advertisements nor offer anything for sale. However, if the same website contains advertisements, then it is likely using the trademark Petco in connection with a good or service and thus the website's owner is committing trademark infringement.

Fair Use Doctrine

Trademarks can be used safely if necessary to describe your name, your business name or your own goods or services. For example, if a man named Sam Adams is running for mayor, he can safely put the words "Sam Adams" on his campaign fliers, despite the fact that the name is trademarked by a beer company. Similarly, you can use the words "ocean spray" to describe your perfume, even though "Ocean Spray" is trademarked by a juice company. Keep in mind, however, that you cannot use a trademark if it is likely to cause "consumer confusion." For example, if Sam Adams is elected Mayor and soon after decides to open his own brewery, he will be unable to market his beer under the name "Sam Adams" because consumers are likely to be confused or mistaken about the source of the product.

Nominative Fair Use Doctrine

The nominative fair use doctrine allows you to use a trademark safely for the purposes of reporting, commentary, criticism or parody. In order to use the nominative fair use doctrine, three requirements must be met. First, the trademark owner, product or service must not be readily identifiable without use of the trademark. Second, you must only use as much of the mark as is necessary to identify the trademark owner, product, or service. Third, you must not do anything that would suggest sponsorship or endorsement by the trademark owner. A common example of the nominative fair use doctrine are product reviews that identify a product by name, such as the ones routinely conducted by Consumer Reports.

Trademark is Invalid

Keep in mind that in the event that you are sued for trademark infringement, one defense will be to prove that the trademark is invalid. This can be done by showing that the trademark was obtained fraudulently by the owner. For example, if the owner overstated the scope of the goods and services to be covered by a trademark in the registration application. In other words, if the owners stated in the registration application that the trademark would be used to cover hand soap and shampoo products, when in fact, the owner only used the trademark on hand soap products. Another way to show that a trademark is invalid is to show that the trademark has become generic. For example, the word "aspirin" was once a trademark for acetyl salicylic acid. However, the word became a generic term for medicine that relieves minor aches and pains and thus lost its trademark status.