Law Office of Jason H. Rosenblum, PLLC

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Using a trademark without permission? This may be a defense for you. **Attorney Advertising**

I was recently in San Francisco to visit family, friends, and clients, and while there I did a ton of bread research for my home baking.  I purchased and enjoyed a few loaves each day, and without a doubt… San Francisco is on top of their bread game.  
One place with an amazing bread selection had this loaf of WONDER BREAD on their shelves.

This is actual wonder bread, not the poor excuse for bread that is well known as Wonder Bread (side note: I don’t know why you would ever need to add high fructose corn syrup to bread, but they do it along with numerous other ingredients that do not need to be added to real bread which at base consists of THREE ingredients: flour, salt, and water).
Wonder Bread is an extremely well-known brand and I assume they would have issues with this bread shop using their trademark, especially since it tastes amazing. As such, I will not name the bakery… but if you’re ever in the Bay Area, it’s worth hunting down.
“How Can They Use That Name Without Getting in Trouble?!”
You may be looking at this picture thinking, “how can this bread company sell products under the name Wonder Bread without getting in trouble?!” In all honesty, they just might. It’s risky to sell a product using an already trademarked name, but on the flip side, they may have a defense if they were ultimately sued. That defense would fall under “Fair Use” of the trademark.
What Is Fair Use?
Fair use is the ability to use another’s trademark without depreciating the goodwill that comes with that trademark. This is generally the case when it’s said that the use of the trademark would not cause confusion or a sense of connection or affiliation with the real trademark owner. Situations when a “fair use” defense may apply include:

  • Parodies
  • News and commentary
  • Making true comparisons in advertising
  • Product reviews
  • Academic use

In this case, one could argue that the San Francisco company’s “wonder bread” is merely a parody of the real Wonder Bread and that no one really believes they are selling the trademarked brand. This would fall under ‘fair use’ allowing one to use another’s trademark without getting in trouble for it.
Fair Warning for Fair Use Defenses
While ‘parody’ or ‘fair use’ may actually be a defense to justify use of another’s trademark, it’s important to note that going this route does not automatically absolve you of liability. Trademark attorneys can counsel clients on how we believe use in specific situations would play out (e.g. is this merely amusing and not confusing, or does it create confusion), but this would not have any impact on or stop a larger company from suing or causing other expensive measures if they caught wind of use and wanted to flex their muscles.
Some clients are willing to risk this possibility because the marketing opportunities and exposure seem to outweigh the potential fallout. P.T. Barnum is reputed to have said, “There’s no such thing as bad publicity.” But remember, even if you stop using the trademark after receiving a cease and desist or after the company files suit, you may still be liable for damages or you might have to spend a significant amount of money to defend your company and prove fair use. So not only is this strategy risky, it can be expensive too.
Still Unsure?
If you are thinking about mimicking or parodying a mark, talk to us and make sure it’s not going to come back to bite you in the end. To schedule an appointment with one of our trademark attorneys, simply call 888-666-0062.
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.