Expert Commentary

"To Use or Not To Use, That Is the Question"

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.


Intellectual Property
April 2006

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, 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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