"To Use or Not To Use, That Is the Question"
April 2006
In this article, general guidelines regarding
when you can use (or should not use) another company's or individual's logo
or trademark in your communications or the like are addressed, specifically
focusing on ways to mitigate many unforeseen issues that may evolve from the
unauthorized use of another's logo or trademark.
by Sanford
E. Warren Jr. and David L. Odom
Akin Gump Strauss
Hauer & Feld LLP
It is our view that a company or sole proprietorship should not utilize another
company's or individual's logo or trademark without written permission from
the actual trademark owner. A simple letter to the trademark owner requesting
(and eventually receiving) permission to use its logo or trademark, with a brief
explanation of how and for what purpose it will be used, can mitigate many unforeseen
issues that may evolve from unauthorized use of another's logo or trademark.
Logos: The General Rule
The general rule is do not assume you are permitted to use another company's
or person's logo. Third parties are advised not to use another's logo for any
purpose, except as specifically provided by license, signed agreement, or other
written permission with a specific company or person. This advice is recommended
even when one accurately describes a relationship with the company or person
or even though the company is advocating or supporting that company's technology.
This practice should include all logos including corporate logos and specific
product and program logos.
Oftentimes a company or individual may have logo programs granting third
parties permission to use its logos. For instance, some companies will maintain
logo programs indicating technological compatibility, conformance to specific
requirements, membership in programs and alliances with the company. However,
most often, third parties may not use these logos without a specific agreement
to do so.
In addition, many companies have policies regarding a reseller of its products.
Specifically, such a policy may state that the reseller may never alter or modify
its corporate logo or trademarks that are affixed to or appear on that company's
products that they might resell. Similarly, replacing a company's trademark
or logo with the reseller's logo or mark and/or adding the reseller's logo or
mark to the company's product are most often prohibited by a company's written
policy and are not permitted in the absence of a written agreement.
The Trademark Fair Use Defense Doctrine
"Fair use," as it relates to trademarks in the United States, is based on
similar principles as the doctrine under copyright, such as free speech, but
with different exceptions. Trademark "fair use" defense has a much more limited
defense than its counterpart in copyright law. Specifically, fair use in the
trademark context establishes that a junior user will not be liable for using
a mark in its descriptive sense, as opposed to trading on the senior user's
established trademark meaning. Fair use is consistent with the more limited
protection granted to trademarks, generally specific only to the particular
product market and geographic area of the trademark owner.
The Lanham Act permits a non-owner of a registered trademark to make "fair
use" or "nominative use" of a trademark under certain circumstances without
obtaining permission from the mark's owner. The fair use and nominative use
defenses are to help ensure that trademark owners do not prohibit the use of
their marks when they are used for the purpose of description or identification.
Fair use or nominative use may be recognized in those instances where a reader
of a given work is clearly able to understand that the use of the trademark
does not suggest sponsorship or association with the trademark owner's product
or services and therefore is not being used in a manner to confuse the reader.
Also, as mentioned above, a nonowner may use a trademark nominatively—to refer to the actual trademarked
product or its source. In addition to protecting product criticism and analysis,
U.S. law actually encourages nominative usage by competitors in the form of
comparative advertising.
Both of these exceptions require that the mark not be used by nonowners in
a way that would be likely to confuse consumers about the source of their product,
or the product of the trademark product. Generally, this translates into the
requirement, similar to that in fair use under copyright, that no more of the
trademark is used than is necessary for the legitimate purpose. For instance,
a word mark is preferred to a logo, and a word mark in the same style of type
as surrounding text is preferred to a word mark in distinctive type.
While the "fair use" defense is specified as a defense to the incontestability
of a mark and the exclusive right to use the mark by the registrant, it has
regularly been used as a defense to § 43(a) infringement claims as well. Specifically,
pursuant to § 33(b)(4) of the Lanham Act, a defense to a claim of trademark
infringement exists where:
- (4) the use of the name, term, or device charged to be an infringement
is a use, otherwise than as a mark …
of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services
of such party, or their geographic origin….
15 U.S.C. § 1115(b)(4)(emphasis added).
In general terms, the statutory "fair use" defense prevents a trademark owner
from monopolizing or appropriating a descriptive word or phrase. In a leading
case on this defense, the court noted that the defense is available only in
actions involving descriptive terms and only when the term is used in its descriptive
sense rather than its trademark sense. Zatarains, Inc.
v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir. 1983) (citing Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178,
1185 (5th Cir. 1980). [A]nyone is free to use the term in its primary, descriptive
sense so long as such use does not lead to customer confusion as to the source
of the goods or services. Zatarains, 698 F.2d
at 791.
In Zatarains, the plaintiff, inter alia, had
a federal trademark registration for the mark FISH-FRI for a corn flour product
used to batter fish for frying purposes. The district court found that while
the mark was descriptive, it had acquired the necessary secondary meaning. However,
under the circumstances, the defendant's use was deemed a fair use of the term
under the statute. The Fifth Circuit affirmed by highlighting the defendant's
good faith, in that it had not used the term in a trademark sense, and had never
attempted to register the words as a trademark. Of particular importance to
the court was that defendant had consciously packaged their goods in such a
way that any potential confusion was minimized. The dissimilar trade dress of
these products prompted the district court to observe that confusion at the
point of purchase—the grocery shelves—would be virtually impossible. Zatarains, 698 F.2d at 796.
Another example of the application of trademark's fair use doctrine can be
found in Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's
USA, 125 F.3d 28 (2d Cir. 1997). In this case, the plaintiff registered
the trademark "Sealed with a Kiss" for a brand of long-lasting lipstick. The
plaintiff sued after the defendant began an advertising campaign for its own
brand of lipstick that encouraged users to place a lipstick "kiss" on a postcard
and mail it to someone. The defendant's campaign used the phrase "Seal it with
a Kiss!!" The court held that the phrase "sealed with a kiss" was in common
use and that the defendant was not liable because it merely used that common
phrase in its descriptive (rather than its trademark) sense.
Conclusion
Oftentimes the distinction between "fair use" and infringement may be unclear
and not easily defined. Also, acknowledging the source of the trademarked logo
does not substitute for obtaining permission. While corporate logos are very
useful to help confirm that certain information, such as an article, is about
the company which owns the logo, the close association between most companies
and their logos makes use of their logos a sensitive topic for some companies,
so some care is desirable.
The following guidelines can help to ensure trademark compliance, but should
not be relied on solely for such purposes:
-
All corporate logos should be presumed to be trademarks.
-
Avoid using a logo in any way that creates an impression that the purpose
of its inclusion is to promote your company.
-
Corporate logos should not generally be used in contexts which are, taken
as a whole, strongly negative toward another company.
-
If use falls under written permission or through "fair use," reasonable
diligence should be taken to ensure that the logo is accurate and has a
high-quality appearance.
-
Specific U.S. law prohibits the reproduction of designated logos of U.S.
government agencies without written permission. Certain works, particularly
logos of government agencies, while not copyrightable, are still protected
by other laws similar in effect to trademark laws, protecting indicators
of source or quality. For example, the Central Intelligence Agency logo
cannot be used without permission, in order to prevent the appearance of
endorsement. 50 U.S.C section 403m(a).
Finally, it is not necessary to seek formal permission from a corporation
in advance of using their logo, so long as the usage clearly falls under the doctrine of "fair use," does not create any
impression that the logo is associated with or endorses another's company or
an article it appears in, and does not create any reasonable grounds for complaint
by the trademark owner. The U.S. Patent and Trademark Office can neither determine
if a certain use may be considered "fair" nor advise on possible trademark violations.
If there is any doubt, it is advisable to consult an attorney regarding the
question of whether to "use or not to use."
David L. Odom is an associate with Akin Gump Strauss Hauer & Feld, LLP in Dallas, where he
specializes in intellectual property law specifically relating to the preparation
and prosecution of patent, trademark, and copyright applications; the counseling
of clients with respect to patent, trademark, copyright, and trade secret rights
and other related transactional matters including the management of intellectual
property portfolios; and litigation matters covering traditional intellectual
property areas including patents, copyrights, and trademarks. David received
his BS degree from Chapman University in 1987 and his JD degree from Franklin
Pierce Law Center in 2002. Before entering law school, he served over 15 years
as a commissioned officer in the U.S. Air Force as a mission aircrew member
on both the B1-B supersonic bomber and on the KC-135 mid-air refueling aircraft.
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