Trademark Law and Infringement

Owners use trademarks to protect their reputation, their brand, and their business. A trademark distinguishes their products and/or services from that of others.

(Technically speaking, a trademark is used for products and a service mark protects a service, using the pending marks of TM and SM, respectively. The �® is used for both, once the registration process is completed. Both are covered under the same rules, so here I only will refer to the word trademark, encompassing both marks.)

A trademark may protect a word, phrase, symbol or design, or a combination thereof. Common uses are individual products, a line of products, a company name, a tagline, logo, graphic design, or slogan.

It’s a common error to believe that a trademark never can be used by anyone other than the holder. Only certain types of trademark “use” are prohibited, but you must avoid infringement when using someone else’s mark.

Commercial Use of a Trademark

An obvious violation of trademark law is to use someone else’s mark to sell your own product or service – whether using it directly on the packaging or in your advertisements. For example, using a celebrity’s likeness in an advertisement for your product without their permission violates trademark law. Reusing packaging (a container, for instance) that has a trademark and refilling it with your product is infringement, regardless if your customers know it isn’t the branded product.

There are times, however, when the use of someone’s trademark is required to illustrate a point even in a commercial piece, as in an article, book or manual. In such a case, you must explicitly indicate the trademark as follows:

• Use the TM, SM or Ã?® marks at the end of the trademarked item, such as KleenexÃ?®. If you are not sure if something is trademarked, go to the company’s web site and look for a link on trademark usage or email the company for guidelines. Never assume; it can get you into trouble.
• The rule of thumb is to use the mark the first time you mention or show the trademark; then, drop the mark for the remainder of the writing.
• If you haven’t identified the trademark holder within the text, then place a note at the bottom of the text or other appropriate placement that states, “XYZ is a registered trademark of ABC Company”.

Following these rules does not give you permission for use from the trademark holder. It does show that you are attempting to protect the value of the trademark from being diluted and helps if legal action is taken against you.

Removing a trademark from a product is not infringement, if:

• The product is sold without any trademark or brand (you have not added your own branding or label), or
• Another label is being added for language or warning purposes and is required by law.

As a teenager, I worked in a discount department store in the ladies wear department. Once during the Christmas season, we ran out of sweaters that were on sale. The store normally purchased sweater overruns from a high-end clothing manufacturer, who put a generic label on the sweater for cheaper sales outlets. The store manager walked around the corner to an upscale department store and arranged to purchase at cost a bulk of their brand labeled sweaters. I spent an evening with several other employees carefully removing sweater labels and adding price tags for our sale. Though the sweaters were the same ones we normally sold under a generic label, to sell them with the original labels in a discount store could dilute the value of the brand. Removing the labels protected the trademark.

Non-Commercial Use of a Trademark

Many people think that, if you do not profit from a trademark, you can legally use it. This is not always true, and you could be facing a lawsuit. In such cases, a trademark is used as a generic term or as a parody. The deciding test is if the use dilutes the value of the trademark.

Generic Term. Do you ask someone to please hand you a tissue, or do you ask for a Kleenex? Do you say you need to copy some papers, or do you plan to Xerox�® them? Using a trademark to describe any and all similar products dilutes the value of a trademark for the holder and can even cause them to lose it. A trademark used in such a manner no longer distinguishes the holder or its product/service. If, for instance, Kleenex is used to describe all tissue enough times in print, then the trademark is no longer unique to Kimberly-Clark, the trademark holder. The Kleenex mark would come to mean any and all manufacturers of tissue. If a trademark becomes diluted enough, a lawsuit on the matter could see the mark declared invalid by a court, making it worthless.

Such trademark holders as Kleenex and Xerox (trademark owned by Xerox Corporation) actively protect their marks with legal threats to cease their use, as well as vigorously pursuing lawsuits. Even if you use a trademark as a generic term with harmless intent, you could be facing a costly court case.

During my many years in marketing, I saw several letters from Xerox to the companies for which I worked. Each letter basically laid out the law concerning their trademark and asked all marketing and communications people to ensure company employees did not misuse the word Xerox. Though it wasn’t stated, you pretty much knew the company was letting you know “they were watching” – and rightfully so. A diluted or invalid trademark could presumably cost a company millions in revenue.

Parodies. Another possible non-commercial infringement is a trademark parody. This is the act of poking fun at someone much bigger than you by spoofing the original trademark in some manner. If not done skillfully, it can cause you a lot of legal troubles with the trademark holder.

For a parody to be remotely legal, it must:

• Be very cleverly done,
• Not be distasteful, as to tarnish or ruin the holder’s reputation,
• Not dilute or blur the holder’s product or trademark,
• Call to mind the original trademark and then emphasize the distinction between the two to avoid confusion, and
• Not violate a celebrity’s right to their identity.

A florist used Anheuser Busch’s trademarked slogan, This Bud’s for YouÃ?®, as the name of their business. A court ruled that a slogan being used as a company name within two distinctly different industries had no likelihood of trademark confusion. The florist was allowed to keep the name.

Since 1951, Hasbro has owned the trademark Candy LandÃ?®, which is a children’s board game. The domain name of candyland.com was created for a sexually explicit web site. A court ruled that the web site was tarnishing and diluting Hasbro’s trademark and was ordered to remove the candyland name from all its business material, including domain name and web site. Here, tarnishment occurred because the children’s game name was being linked to something unsavory and unwholesome. Linking a trademark to an inferior product also could tarnish a trademark.

Blurring a trademark is to use a similar mark to one that is well known by the general public. Over time, the trademark becomes blurred as to what it represents and loses its uniqueness. For example, a Boston restaurant took the name Tiffany. A court ruled in favor of the New York jeweler, Tiffany�®, even though there was no chance of confusion or competition. Unlike the Anheuser Busch case, it was deemed that the trademark being used for two company names would dilute the mark over time.

Celebrities have under trademark law the right of publicity. This means that their identities are exclusively theirs to commercially exploit. An identity includes names, voice, signature, photographs, likenesses, or anything that someone would associate only with the celebrity. You always hear of celebrities suing someone for using their image to promote a product without their permission, but it does not need be that obvious. Johnny Carson successfully sued a manufacturer of portable toilets for using the advertising tagline, Here’s Johnny … The World’s Foremost Commodian. Even though Carson’s name and likeness was not used, a court ruled that the manufacturer had intentionally exploited the comedian by using a slogan closely identified with him.

Regardless of your reason or how you use someone else’s trademark, check to ensure you do not violate the holder’s rights. Then, use it correctly to protect the trademark holder. More importantly, protect yourself from legal repercussions by not violating trademark law.