I’ve been talking a lot about fair use lately – fair use in copyrights, fair use in business…it’s time to move on to fair use in trademarks. When discussing fair use of someone’s trademark, it’s important to remember the purpose of trademark law. The reason trademarks are protected is two-fold: first, consumers want to know who they’re buying from. Second, sellers want to build a reputation around their brand, so that consumers want to buy from them.
With that in mind, there are a few uses of trademarks that are presumptively fair use:
- Referencing or describing the company or product. There is no trademark infringement when you use a company’s trademark while talking about the company. It’s fine to say that you met Mickey Mouse® while in Disneyland®, or that you ordered Chicken McNuggets® at McDonald’s® (especially if you’re saying how wonderful the experience was). Just make sure that you use the mark properly; companies can lose their trademark if people come to associate the mark with the type of product and not with the company. Aspirin, thermos, escalator, and cellophane are all examples of marks that have lost trademark protection from getting overused. Kleenex® and Xerox® have been fighting hard to avoid the same fate, and they will contact you if you talk about someone grabbing a Kleenex instead of grabbing a Kleenex® brand tissue paper, or if you xerox something instead of making a copy on a Xerox® photocopier.
- Comparing one product to another. It is both normal and commonplace for businesses to compare their product to a competitor’s product, and this is allowed under trademark law. Just make sure to keep the comparison factual, or at least truthful. It’s fine to say that your yogurt is creamier or sweeter than a competitor’s, if that’s actually true; it is not fine to say that your competitor uses questionable ingredients or abuses their cows.
- Using a descriptive word or phrase that has been trademarked. This one is a little tricky, and it only applies to certain trademarks. If a company has trademarked a descriptive phrase (like, say, Sweet-Tarts®), and another company markets their juice as “sweet-tart” in flavor, this would qualify as fair use, because the juice company is describing their product, and the (accurate) description just happens to be a trademark for another product.
Again, the point of trademark law is to avoid confusion about the source of a product or service. Even if you are doing one of the above activities, you need to make sure that it is clear that you are not the trademark owner, and that you have no professional relationship with them (i.e. you are not being paid to endorse their product). That’s not difficult when you’re comparing products, but it can be problematic if you are referencing or describing the trademark owner’s company or product in a business context. In those cases, you may want to consider a disclaimer so that there’s no confusion about your relationship with the trademark owner.
If you have questions or want to make sure that your use would not land you in trouble with a trademark owner, please feel free to email me at kaway@kawaylaw.com.
