A trademark is a word or symbol that distinguishes one business, product, or service from all other similar businesses, products, and services. Misuse of another’s trademark is a legal violation. However, there are instances when another party can use someone else’s trademark without getting in trouble if it’s considered “fair use.”
What’s fair use?
Fair use is the ability to use another’s trademark without depreciating the goodwill that comes with that trademark. Fair use of a trademark usually falls under two categories:
- Descriptive fair use refers to instances in which the trademark is used for comparing the trademark’s actual associated product or service when the trademark is 1) descriptive and 2) could be used in the normal course of language. A descriptive trademark may be used fairly if it’s generic enough to describe products or services of the same type. For example, a cab company with the trademarked named “Speedy Taxi,” probably has no claim against another cab company for stating in an ad that “our taxis are speedy and safe.” Also, if a product is contained within another you can state: “Product X contains Registered Product Y®.”
- Nominative fair use is the use of all or some of a trademark without endorsing the product or inducing the public to think that there is a relationship between the products or services. One may use another’s trademark to compare or contrast their product or service. For example, generic brands may include a comparison of the generic to the leading national brand -“Brand A has more fluoride than brand B.” However, this doesn’t extend to simply disparaging a trademark in order to make another product or service seem better in comparison. Also included here is simply mentioning a trademark in order to identify it for service or repair: “We repair cracked Samsung Note® screens. The guidelines for Nominal Fair Use are usually met when three requirements are met: ‘ the product or service in question must be one not readily identifiable without use of the trademark;  only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and  the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.’” Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d 153, 158 (2d Cir. 2016)
What about non-commercial fair use?
Just because a use is non-commercial does not mean that it is automatically fair use; you may still infringe. Parody, satire, criticism, and academic use may fall under the umbrella of fair use. If they are transformative uses, in that they examine or criticize the very thing the trademark represents. Transformative uses are intended to specifically conjure in the mind the actual trademark when criticizing, satirizing, or parodying it. Academic uses, such as with scholarly articles and student-derivative works, usually either examine the very trademarked thing or use the trademark without making a profit.
Not all academic use, however, is fair use. For example, a college club may not use a trademarked cola name as part of their fundraiser if they’re not selling the soda. A textbook publisher may still need permission to print and use a trademarked name.
If you’ve been accused of using a trademark without permission, fair use may be a possible defense. An intellectual property lawyer can help you discover if your use may be fair use and if so, how you can defend yourself or remedy the situation. If you’d like to schedule a consultation with our trademark and intellectual property lawyers, simply call 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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