Can Someone Use Your Trademark Without Permission?

Can Someone Use Your Trademark Without Permission Under the Fair Use Doctrine

Can Someone Use Your Trademark Without Permission Under the Fair Use Doctrine


If you have invested in building and marketing your brand, you do not want others to be able to use and profit from your work.  Trademark law provides important protections to brands. Generally, third parties cannot use a trademark without the permission of the owner (such as a trademark license).  However, not every unauthorized use constitutes trademark infringement.  In some cases, there may be a defense that prevents the person from being held liable. One of the most common defenses is fair use.

The Fair Use Doctrine allows a party to use another party’s trademark in four general instances – (1) descriptive fair use, (2) nominative fair use, (3) parody and (4) news and commentary.

· Descriptive fair use.  This applies where a third party uses a mark as a descriptive term, rather than for its association with a brand, goods, or services.  For example, it may be permissible for a third party to use ordinary words that describe where its business is located, what raw materials are used in its products, or what functions or characteristics their product has even though such terms are similar to another party’s trademark.

Notably, the trademark owner must first provide evidence that there is a likelihood of confusion from the other party’s descriptive use of the trademark.  Generally, courts look at whether a consumer would assume the product or service offered by the alleged infringer is associated with the trademark owner because of the similarities in the products or services and competition with each other in the market.  If sufficient proof is provided by the trademark owner, the burden of proof shifts to the other party that such use falls under descriptive fair use.

· Nominative fair use.  When a third party uses a mark to refer to the actual product identified by a mark but not claiming ownership of the product, it may constitute nominative fair use.  This is common in comparative advertising.  A company’s advertisement mentions another company’s trademarked brand when comparing its own brand to the trademarked brand.  That may be a permissible fair use.

To establish nominative fair use, three requirements must be met: (1) the product or service in question must not be “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; (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder

· Parody.  Fair use may also apply to use of a mark in artistic or editorial parodies, provided such use is not closely tied to commercial use and its existence clearly will not lead to confusion.  An example would be making fun of a product in the context of an entertainment program.  To constitute trademark parody, there must be two simultaneous but contradictory messages.  The use must copy enough of the trademark for people to recognize it, but differentiate it sufficiently using some articulable element of satire, ridicule, joking, or amusement.

Importantly, parody is often used as a defense in trademark dilution claims.  However, “parodying a famous mark is protected by the fair use defense only if the parody is not ‘a designation of source for the person’s own goods or services’” (Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007)).  Essentially, if the third party is trying to sell its own goods using a parody of the trademarked brand, courts must take into account all relevant factors in determining whether dilution exists.

· News and commentary.  Similar to parody, trademark law permits a third party to use a mark in the context of criticism, news reporting, and commentary.  The reasoning is that trademark owners should not be able to exert their rights for the purpose of prohibiting reporting and criticism of their products and services.  This exception is a statutory defense to a trademark dilution claim but does not explicitly apply to trademark infringement.  However, in most cases, use of a mark in news and commentary would constitute nominative fair use that is not likely to result in consumer confusion.

There is no clear rule on what qualifies as news and commentary.  For example, in some infringement cases, courts have looked at whether a website or publication hosted advertising or linked to commercial websites.  If it did, that may indicate that the mark was “used in connection with a good or service” which is a requirement for trademark infringement.  As a result, the defendant may have a more difficult time establishing its defense.

Fair use is an important trademark infringement defense, but courts will look closely at all the facts.  Parties on both sides should consult experienced counsel to ensure they present a strong case in court.

Photo by Alexander Shatov on Unsplash

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This Blog is made available by Romano Law PLLC for general informational and educational purposes only, not to provide specific legal advice. By using this Blog you understand that there is no attorney client relationship between you and Romano Law PLLC or any individual contributor. You should consult a licensed professional attorney for individual advice regarding your own situation.

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