Trademark infringement
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The examples and perspective in this article deal primarily with the United States and do not represent a worldwide view of the subject. (December 2010) (Learn how and when to remove this template message)
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Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. An owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark. In the United States, the Trademark Counterfeiting Act of 1984 criminalized the intentional trade in counterfeit goods and services.[1]:485–486
If the respective marks and products or services are entirely dissimilar, trademark infringement may still be established if the registered mark is well known pursuant to the Paris Convention. In the United States, a cause of action for use of a mark for such dissimilar services is called trademark dilution.
In some jurisdictions a party other than the owner (e.g., a licensee) may be able to pursue trademark infringement proceedings against an infringer if the owner fails to do so.
Contents
Factors[edit]
Courts consider various factors in order to determine whether a trademark was infringed.[2]
- Whether the plaintiff has a valid trademark. A trademark can be valid because it is officially registered, or because it has a claim under common law.
- Whether the trademark is being used by the defendant.
- Whether the defendant's use of the mark is "in commerce."
- Whether that use is connected to the sale, offer, distribution, or advertising of a product.
- Whether the defendant's use of the trademark is likely to confuse consumers.
This last factor, consumer confusion, is the main topic of debate in most cases.
Consumer Confusion[edit]
Where the respective marks or products or services are not identical, similarity will generally be assessed by reference to whether there is a likelihood of confusion that consumers will believe the products or services originated from the trademark owner.
Likelihood of confusion is not necessarily measured by actual consumer confusion if two products do not directly compete against each other but are in proximate markets. Then, to determine consumer confusion, a court may apply one of various factor tests. The primary test comes from Ninth Circuit Court of Appeals and is found in AMF, Inc v. Sleekcraft Boats, 599 F.2d 341 (C.A.9) 1979.[3] The Court there announced eight specific elements to measure likelihood of confusion:
- Strength of the mark
- Proximity of the goods
- Similarity of the marks
- Evidence of actual confusion
- Marketing channels used
- Type of goods and the degree of care likely to be exercised by the purchaser
- Defendant's intent in selecting the mark
- Likelihood of expansion of the product lines[3][4][5][6]
Other Courts have fashioned their own tests for likelihood of confusion—like those announced in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973),[7] known collectively as the DuPont factors.
Defenses[edit]
The party accused of infringement may be able to defeat infringement proceedings if it can establish a valid exception (e.g., comparative advertising) or defence (e.g., laches) to infringement, or attack and cancel the underlying registration (e.g., for non-use) upon which the proceedings are based. Other defenses include genericness, functionality, abandonment, or fair use.
Globally[edit]
The ACTA trade agreement, signed in May 2011 by the United States, Japan, Switzerland, and the EU, requires that its parties add criminal penalties, including incarceration and fines, for copyright and trademark infringement, and obligated the parties to actively police for infringement.[8][9][10]
In many countries (but not in countries like the United States, which recognizes common law trademark rights), a trademark which is not registered cannot be "infringed" as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner may be able to commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable.
About Trademark Infringement
What is trademark infringement?
Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
What will happen if someone sues me for trademark infringement
A trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. However, in most cases, trademark owners choose to sue for infringement in federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case "removed" to federal court.
If the trademark owner is able to prove infringement, available remedies may include the following:
- a court order (injunction) that the defendant stop using the accused mark;
- an order requiring the destruction or forfeiture of infringing articles;
- monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and
- an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.
Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff's claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail.
How do I know whether I'm infringing?
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties' marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.
In addition to claiming likelihood of confusion, a trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by "blurring" the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.
An experienced trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner's claims.
What Is Infringement?
Intellectual property infringement refers to the unauthorized use, reproduction, or sale of materials that are registered for protection under intellectual property laws. These protected materials generally include items, materials, or works that have been registered under copyright, trademark, or patent laws. Infringement laws are important because they help protect creators of original work from unauthorized use or access to their creations.
Though definitions may vary depending on the subject matter, infringement generally requires proof that:
- The victim owned the rights to a valid copyright, trademark, or patent
- The infringer had access to the protected work
- The infringer exploited their access to or used the protected work without authorization
- There are no applicable exceptions to the unauthorized use of the material
What Are Some Common Infringement Penalties?
Legal penalties for copyright infringement may include:
- Civil damages in the exact amount of the damages and lost profits (anywhere from $200 to $150,000 for each item of work that was infringed upon)
- Injunctions to prevent the infringer from continuing their illegal activities
- Impoundment or confiscation of the infringing works
- A prison sentence
- Mandatory payment of court and attorney fees by the defendant
Penalties for trademark and patent infringement may follow similar guidelines. Again, the particular details for penalties will depend on several factors, including:
- Applicable state and federal laws
- The nature of the infringing activities
- The amount of losses suffered by the plaintiff
Is Infringement a Criminal Charge?
In some cases, infringement can lead to federal criminal charges. These can result in the defendant serving prison time or facing other criminal penalties. Federal and state laws are very strict when it comes to the protection of intellectual property.
Also, in some cases, courts may impose punitive damages on top of the normal damages award. This is often limited to double or treble damages (i.e. twice or three times the amount of the base economic damages award). These can be imposed in cases involving intentional disregard of intellectual property protections and laws.
Do I Need a Lawyer for Help with Infringement Penalties?
Infringement is a very serious offense that can result in very serious civil or criminal penalties. It may be in your best interests to hire an intellectual property lawyer if you are facing any legal claims involving infringement laws. Your attorney can help research the laws to determine what rights you have. Also, if you need to file a lawsuit or attend any court sessions, your lawyer can provide you with legal representation during those time periods.
Trademarks and Trademark Litigation: How to Protect Your Brand
Conducting availability searches for trademarks before branding your products or adopting a business name could result in the selection of a more protectable mark or name, and could avoid future claims of infringement.
If you are or will become a business person, knowledge of trademark basics will be extremely valuable. A trademark serves three functions. First, it is an indication that all goods identified by the mark come from or are sponsored by the same source. Second, the mark is a guarantee of the uniform quality of the goods it identifies. Third, the mark serves as an advertisement, for without trademarks there could be no advertising. Conducting availability searches for trademarks before branding your products or adopting a business name could result in the selection of a more protectable mark or name, and could avoid future claims of infringement. Understanding that trademarks (i) identify and do not describe, (ii) are proper adjectives not nouns, (iii) must remain distinctive, and (iv) must be properly designated as marks, will assist you in protecting your marks well into the future.
ACQUIRING TRADEMARK RIGHTS
In the United States, one acquires rights in a mark only by use, either actual or constructive. Actual use of trademarks results from placing the mark on the goods, on containers for the goods, on labels affixed to the goods or their containers, on displays associated with the goods, or, in certain circumstances, on documents associated with the goods or their sale. Actual use of service marks results from use of a mark in the sale or advertising of the services. Constructive use results from filing a federal trademark application based on a bona fide intent to use the mark.
One may obtain a federal registration of a mark if the mark is used in the ordinary course of trade, and, if a trademark, the goods identified by the mark are sold or transported in commerce regulated by Congress, or, if a service mark, the services identified by the mark are rendered in such commerce or are rendered in more than one state. If the federal application is filed on a bona fide intent to use, a registration issues only after the mark has been used in commerce. Marks may also be registered in each of the 50 states, and if a mark is not used in interstate commerce, the mark may only be registered in a state where it is actually used. Marks that are in use but that are not registered either federally or in a state are referred to as common law marks. One acquires rights in a mark that is not federally registered only in the geographic areas where the mark is actually used or into which such use is expected to naturally expand.
Federal registration of a trademark provides protection under a federal law known as the Lanham Act. Although federal registration of a trademark is not required, federal registration provides benefits to the owner of a mark and is generally recommended. These benefits include notice to the public that one claims rights to a mark; legal presumption that one owns the mark; exclusive right to use the mark nationally for the goods or services listed in the registration; and a foundation for registering the mark in foreign countries and preventing the importation of foreign products that infringe upon the mark. Federal registration also grants the right to use the ® symbol, which denotes federal registration of a trademark or service mark. Failure to use the symbol for marks that are registered potentially limits the recovery of damages and profits under 15 U.S.C. § 1111.
State registration confers benefits in accordance with the state’s laws. One may use the “TM” (trademark) or “SM” (service mark) designations to signify a claim of ownership of a mark, but use of such designations confers no legal rights.
PROPER TRADEMARK USAGE
Misuse of marks can result in loss of trademark rights. Examples of marks that have lost trademark rights due to misuse are: aspirin, escalator, nylon, yoyo, and linoleum. Abiding by the following rules will help protect your marks from such fate. First, always spell your mark with an initial capital letter or in all capital letters. One can also print a mark in italics or in quotation marks. Second, follow the mark with the common name of the product identified by the mark, i.e., Kleenex® tissues. One may also elect to follow a mark with the word “brand” such as BAND-AID® brand adhesive bandages. Third, use the appropriate symbol with your marks, a ® for federally registered marks and a TM or an SM for trademarks and service marks that are not federally registered. Fourth, a trademark should never be used as a noun or verb and thus should never be made into a plural, a possessive or a gerund. For example, proper usage would be “Oreo cookies” rather than “Oreos” and making a “Xerox copy” rather than “Xeroxing.” Fifth, do not confuse a mark with a trade name or business name. Although both marks and trade and business names may include or be comprised of the same word(s), trade and business names are nouns; marks are proper adjectives. Finally, if your business does not have a style manual that sets out the way in which the business’s marks should be used and are not to be used, adopt one.
TRADEMARK LITIGATION
In trademark litigation, the three main claims are trademark infringement, unfair competition and trademark dilution.
FEDERAL AND STATE COURTS
If a third party’s trademark infringement, unfair competition or trademark dilution occurs in or affects commerce, the trademark owner may file suit in federal court to recover the damages caused by such misconduct and to obtain injunctive relief precluding future such misconduct. If the misconduct is purely intrastate, such suits must be filed in state courts.
Alternatively, any owner of a trademark may file suit in state court, where the court may adjudicate trademark rights under federal or state statutory law and the common law.
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
Trademark infringement occurs when use of a mark by another would likely confuse consumers as to the source of the goods or services. To establish infringement, the owner must show that (1) it owns a valid and legally protectable mark (as previously defined), and (2) the alleged infringer’s use of the mark in commerce causes a likelihood of confusion about the source of goods or services. The primary focus of an infringement claim is “likelihood of confusion.” In deciding whether likelihood of confusion exists, courts typically consider the following factors: (1) the similarity of the marks in sound, meaning and appearance; (2) the proximity of the goods; (3) the strength of the owner’s mark; (4) the similarity of marketing and advertising channels used; (5) how careful the typical consumer is likely to be before making a purchase; (6) evidence of actual confusion; and (7) the alleged infringer’s intent in choosing the mark.
Courts routinely state that all factors are equally important. However, if two marks are not similar in sound, meaning and appearance, one need not reach the other factors. Even identical marks, though, may not be considered confusingly similar if they identify completely unrelated goods and services. An example is Delta® for faucets and Delta® for transportation services. Two of the remaining factors are also treated with greater importance: actual confusion and the alleged infringer’s intent. Evidence of actual confusion is not necessary to prove infringement, but if such evidence exists, it is very difficult to overcome. Additionally, if the marks are similar in sound, meaning and appearance, and the alleged infringer intended to confuse consumers, courts will often find the alleged infringer succeeded in creating a likelihood of confusion. Evidence of actual confusion and the alleged infringer’s intent, while often difficult to find, may include testimony by those adopting an infringing mark and testimony by consumers, business records showing instances of confusion, purchases made by mistake, consumer complaints, and misdirected deliveries or phone calls. In the absence of evidence of actual confusion, trademark owners may use tools such as survey evidence to show that consumers are likely to be confused about the source of a good.
TRADEMARK DILUTION
Under federal law, a claim for trademark dilution may only be brought if the mark is “famous.” In evaluating whether a mark is famous, courts consider various factors, including the degree of distinctiveness and the level of recognition in trading areas. Under some state laws, a mark does not need to be famous to bring a dilution claim. Instead, a trademark owner can assert a dilution claim if its mark is distinctive.
Upon meeting the prerequisites for a dilution claim, the owner of a mark can challenge any use of that mark that “dilutes” the mark’s distinctive quality. Dilution may occur through blurring, the weakening of a mark through identification with dissimilar products (e.g., “Kodak” for bicycles weakens the Kodak® mark for the film manufacturer). Dilution may also occur through tarnishment – the casting of an unflattering light on the mark, typically through an affiliation with inferior or unbecoming products.
REMEDIES
Successful plaintiffs may obtain injunctions against further trademark infringement, unfair competition or trademark dilution. In infringement, unfair competition and intentional dilution cases, plaintiffs may also be awarded monetary relief including damages, profits and litigation costs. Non-intentional dilution actions, however, are typically limited to injunctive relief.
DEFENSES TO CLAIMS OF TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND TRADEMARK DILUTION
The most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment. Descriptive fair use is the use of a descriptive term to fairly describe a product or service. Nominative fair use is the use of a mark to refer to the actual product identified by a mark, such as newspaper references to entertainment groups and sports teams. Laches is unreasonable delay by the trademark owner in commencing suit. Because equitable relief (injunctions) is the primary relief sought in infringement, unfair competition and dilution actions, courts require trademark owners “to do equity to receive equity.” Improper conduct by the trademark owner can, therefore, be an affirmative defense to suits for infringement, unfair competition and dilution. Intentional deceit by the applicant for a trademark registration constitutes fraud in obtaining a registration and such a finding likely will preclude the trademark owner from obtaining relief. In certain situations, the First Amendment will be balanced against the rights of a trademark owner. This defense provides a lesser degree of protection to commercial speech than noncommercial speech. In applying the First Amendment, courts adopt balancing tests – the most utilized of which holds that a mark used in an expressive work is infringing if it has no artistic relevance to the challenged work, and, if there is artistic relevance, the use of the mark explicitly misleads as to the source of the challenged work.
CONSULT AN ATTORNEY
Competent legal counsel can greatly assist in searching for existing trademarks, registering a trademark, or helping a party assert or defend itself against a claim for trademark infringement, unfair competition or trademark dilution. Experienced counsel can help you navigate the realm of trademark law and ensure you make the best decisions for your business.
Trademark Infringement: Everything You Need to Know
Trademark Law ResourcesStartup Law ResourcesIntellectual PropertyTypes of TrademarksHow To Register A TrademarkTrademark InfringementTrademark Search
Trademark infringement is the unauthorized and illegal use of a trademark or service mark that leads to confusion between the original and another mark.6 min read
What Is Trademark Infringement?
Trademark infringement is the unauthorized and illegal use of a trademark or service mark when such use could lead to confusion between the original trademark and a mark that is used later. A trademark is a word, phrase, symbol, slogan, color, packaging, or any other "mark" that identifies specific goods or services. The Lanham Act covers trademark law.
In order for the use of a mark to be counted as trademark infringement, a few things must be true:
The mark must be valid and eligible for legal protection.
The person who claims that infringement has happened must own the mark.
The unauthorized use of the mark must be connected with the sale or advertising of services or goods. It must be used in commerce.
Trademark infringement can happen in connection with both registered and unregistered trademarks.
The Confusion Factor
To amount to infringement, the unauthorized use of the trademark must be likely to cause confusion. Although the exact procedure may vary from state to state, some things that courts consider when they are deciding if use of a trademark could lead to confusion include:
How similar the marks are. They do not have to be identical.
How similar the goods and services are of the two parties who used the mark. Note that if the goods being considered are patented, the patent classes may have nothing to do with whether the goods in the trademark case are related.
The strength of the plaintiff's mark. How widely recognized is the original mark? How strongly is it tied to the trademark holder's goods or services?
Evidence that the defendant's use of the mark caused confusion.
The defendant's intentions.
The physical locations of the two businesses.
How careful shoppers might be when considering the two businesses.
Whether the market for the trademarked goods is likely to expand.
The first two above-listed factors carry the most weight in court cases. The last three are only considered in some circumstances.
There are no hard and fast rules that determine what usage of a mark amounts to infringement; these cases often rely heavily on the opinions of those involved.
Why Is Trademark Infringement Important?
According to some experts, the average cost of a trademark lawsuit can be between $120,000 and $750,000. Sometimes, these cases can last for years. Therefore, understanding what trademark infringement is can save you both time and money.
Consider the 2016 case of Estate of Marilyn Monroe v. Fashion Central as an example that illustrates the importance of trademark infringement. The Estate of Marilyn Monroe owns numerous trademarks related to the famous actress and fashion icon, and four of those trademarks have been labeled as incontestable. This means that almost all challenges to a trademark will fail.
Fashion Central began to package some of its goods using the image of Monroe without a license. However, they never used Monroe's name. The estate sent a cease and desist letter to Fashion Central, but this letter was ignored.
This legal entanglement could cost both Fashion Central and the Estate of Marilyn Monroe much money and time.
How to Avoid Trademark Infringement
To avoid infringing on someone else's trademark, you should become familiar with the ins and outs of what amounts to infringement.
Intent is one of the key things you should consider. A lawsuit that began in 2010 between GoDaddy and the Academy Awards illustrates this point. The Academy Awards filed the lawsuit because GoDaddy had allowed customers to buy names like "2011Oscars.com." The claim was that GoDaddy profited from the Academy Awards.
The court ruled in favor of GoDaddy because there had been no "bad faith intent to profit" from the sales of the internet domain names. GoDaddy's intentions played an important role in the case.
Studying past cases can give you further insight into what may be considered trademark infringement. Some other cases you might look at include:
3M v. 3N
D2 Holdings v. House of Cards
Louis Vuitton v. Louis Vuiton Dak
Adidas v. Forever21
Segway v. Swagway and Razor
American Eagle v. Pantaloons
Lucky 13 v. Taylor Swift
Starbucks v. Freddocino
If you ever become concerned that your use of a mark might considered infringement, talk to an attorney. A lawyer with experience in intellectual property can help you search for the trademark and find out who else might be using something similar. This won't guarantee that you'll never be sued for infringement, but it will lessen the likelihood.
Sometimes, despite your best intentions, you could be faced with accusations of trademark infringement. Consider carefully whether you want to pursue the issue. Sometimes it's easier to rebrand your business with a new mark.
Keeping Your Trademark Secure
In infringement cases, the law tends to favor trademarks registered with the United States Patent and Trademark Office (USPTO). To learn how to register your trademark, take a look at this guide from UpCounsel.
Also, if you become aware that someone else is using your trademark, act quickly. If you delay, this can hurt your ability to enforce your trademark, especially if your trademark is unregistered.
Begin defending your trademark by sending a cease and desist letter. If the party who receives the letter doesn't obey, you may have to talk to an attorney about filing a lawsuit.
Be Sure to Consider Dilution
Think about whether your using a certain mark could lead to dilution. Dilution happens when the public begins to associate a famous mark with more than one good or service, even if those goods and services aren't closely related to each other.
There are two types of dilution:
Blurring is when the use of a mark by someone other than its owner makes the mark less unique.
Tarnishment is when the use of a famous mark could ruin the positive reputation of the mark's owner.
You can't be accused of dilution if your use of a mark is non-commercial or if you are using it in a fair use manner.
Frequently Asked Questions
How much does one have to change an existing logo to avoid trademark infringement?
There is no direct way to answer this question because infringement cases are so subjective. You must consider several things, including whether you operate in a similar line of business as the holder of the original trademark. Remember, if your use of a certain mark is likely to cause confusion, you should not use it
Copyrights are another thing for you to think about. Copyright covers expressions rather than marks that identify goods and services. Expressions are the way an artistic idea is expressed. Copyright law doesn't cover typography, so if your logo only has words, you won't be in danger of infringing on a copyright.
How do we analyze the similarity (or dissimilarity) of marks?
A court considers the appearance of the marks, their meaning, their pronunciation, and how the public receives the marks.
What defenses are available if you are accused of trademark infringement?
You may claim that your use of the trademark fell under the fair use umbrella. Fair use allows you to make limited use of another's trademark for such purposes as news reporting, teaching, and criticizing.
You might also be able to say your use of the trademark was collateral. Collateral use is when you use a trademarked item as part of a larger invention; when this happens, you can call the trademarked part by its proper name.
What can you expect to receive if your trademark was infringed upon and you win the infringement case?
Whether the court proceedings happen in federal or state court, you might receive money for damages as well as compensation for profits that the infringer made when they were using your trademark. The infringer will be ordered to stop using your trademark. It is also possible you will be compensated for your attorney fees.
Conclusion
Whether you want to protect your trademark or you're concerned your use of a mark might be infringement, you can benefit by studying the details of what trademark infringement is.
If you need further help on trademark infringement, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.
Permission to Use Logo: Everything You Need to Know
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You need permission to use a logo unless used for editorial or information purposes, when it is used in written articles or as a comparative product statement.7 min read
When Do You Need Permission to Use a Logo?
A logo or trademark is any photograph, word, or symbol used to identify a brand, service, or product. You need permission to use a logo unless it is for editorial or information purposes, such as when a logo is used in a written article or being used as part of a comparative product statement.
Other than these two instances, you should never assume you can use a trademarked logo. A person or company should never use a trademark or logo without written permission from its owner. To get permission, write a letter to the trademark owner. Include a description of why you are asking and how the logo will be used. Third parties should never use someone else's logo without a licensed agreement, including program and corporate logos.
In certain cases, a person or company involved in logo programs give third parties standing permission to use their trademarks. Depending on the company, the logo program may state any specific requirements and technological compatibility, company relationships, and program membership information. However, even then, third parties cannot use logos without a specific agreement.
More than that, trademarked companies often have resale policies for their products. A policy may indicate that the retailer or reseller can never change the trademark or corporate logo appearing on company products. Trying to replace a company's logo with your own goes against the company's written policy and is never allowed without a written agreement.
Why Is Getting Permission to Use a Logo Important?
First of all, getting permission to use a trademark or logo is important because doing so provides legal protection. A trademark naturally grants legal protection to its owner against anyone using it unlawfully. However, receiving permission gives you the legal right to go ahead and use it without worrying about any repercussions.
The United States trademark law as stated in the Lanham Act allows a non-owner of a registered trademark to make "fair use" of it without permission. Fair use includes using a logo in editorial content, among other situations.
You also don't need to ask formal permission from a corporation to use its logo if the usage doesn't create any impressions that the logo endorses or associates with another company. This scenario could result in a company complaint.
Unfortunately, there is no hard and fast rule determining what "fair use" actually means. The United States Patent and Trademark Office (USPTO) cannot decide if a certain use falls under the "fair" category or even advise on any trademark violations. When in doubt, it's best to consult an experienced attorney to learn whether you should use a trademark or logo.
However, the Publishing Law Center states that, unlike a copyright, a trademarked logo's ownership can last forever. Logos don't even need to be registered as trademarks to be protected under current law. This means that using someone else's logo without permission, even if it's unregistered, is against the law.
When you decide that you need to use a trademark or logo, here are the steps you should follow:
Determine if gaining permission is necessary
Identify the logo's owner
Identify which rights you need to request
Contact the owner with a description of your intended use and negotiate the required payment, if any
Receive your trademark permission in writing
Reasons to Consider Getting Permission to Use a Logo
Since it's difficult to know what falls under "fair use," here are some straightforward reasons why you would want to request permission to use a trademark or logo:
You want to use a third party's logo or trademark to make and sell crafts. This will require a trademark license.
The logo's size, usage, or placement implies that you are affiliated with the trademark owner, or that you're being endorsed by the company. This is a direct violation of the owner's trademark rights.
Commercial uses such as promotion, advertising, and marketing require written permission except in the cases of editorial or comparative advertising use. This can even include business-sponsored activities such as public presentations.
Even though using the logo as part of a comparative statement in an advertisement, such as comparing one fast food restaurant's hamburger to another, falls under "fair use," comparative statements tend to provoke companies into legal action. You may want to have a lawyer review the advertisement before publishing it and make any necessary changes to avoid a worst-case scenario.
When Is Permission Not Required?
Other than using a trademark or logo for editorial purposes or as part of comparative product statements, you don't need to ask permission if the logo's use will educate, inform, or express opinion protected under the Constitution's First Amendment. This includes displaying a logo in a work of fiction, whether it's a graphic novel or film.
As long as the fictional work doesn't confuse the viewer as to who owns the trademark, using logos in fiction falls under fair use because it adds to a story's realism. However, Hollywood has flipped this rule around by selling product placements to trademark owners as a means of advertisement, which has been a lucrative move.
Another gray area in trademark law is what's known as trademark parodies. Generally speaking, you don't need to request permission to imitate a trademark if you're poking fun at it. One example is the parody newspaper The San Francisco Chomical, which parodies The San Francisco Chronicle. Offensive parodies can trigger lawsuits from the trademark or logo owner, so it's important to weigh the consequences before going ahead with your trademark parody.
There are also circumstances where you can use media logos on your website without violating trademark rights and opening yourself up to infringement claims. Just remember that you cannot confuse customers into thinking you own the logo, so it's best to display such trademarks with "as seen in" phrases.
In general, you won't run into trademark parody problems if the parody:
Doesn't confuse consumers; they get the joke and know that it doesn't come from the original trademark owner
Doesn't compete directly with the trademarked product
Does parody the trademark or logo, which means it pokes fun specifically at the trademark
Examples of Ways Someone Can Use a Trademark Without Permission
Competitors and individuals don't need written permission to use a logo if the use falls under the following reasons:
Descriptive use. Adjectives can be trademarked, but you might have a hard time complaining about competitive use. For example, if you trademark the name SPEEDY for your oil change services, but a competing business uses the phrase "speedy service," that's not considered a violation. A trademark does not give you monopoly rights over words.
Comparative use. One of the most high-profile comparative uses was when the Pepsi Challenge pit Pepsi against its competitor Coca-Cola. As long as the trademark display is correct, any competitor can use your trademarked logo to compare benefits or effectiveness.
Collateral use. If you own a lawn mower repair shop, you can legally advertise the fact you repair Brand X lawn mowers, even though you don't make those lawn mowers or own the company's logo. You just can't suggest that you have a relationship with the company or that the company has approved of you.
Nominative use. A person can use someone else's trademark as a reference without infringing. For example, if you need to use the band name the Rolling Stones in a profit-making venture, you're allowed to do so. That's because there are only so many ways you can describe the legendary band. However, there are limitations. You can't overuse the trademark or logo. So, if you tried to sell Rolling Stones t-shirts, you're infringing, but you can organize an unauthorized fan club and sell memberships.
Frequently Asked Questions
Should I use a TM symbol when using a logo for informational purposes?
No, it's not necessary to use the TM symbol, although it is considered good etiquette. You can also distinguish a trademark by italicizing or capitalizing it instead of using the TM symbol.
On the other hand, if you use a trademark in a commercial context, such as in a product manual or advertisement, you should place the TM symbol next to the trademark. Still, you only need to do this if the trademark is federally registered.
Should I include a disclaimer when using a logo?
Even if a trademark or logo falls under fair use, it's often a good idea to attach a disclaimer identifying the logo and stating that you are not associated with or sponsored by the trademark owner.
What happens if I use a logo in my marketing materials without requesting permission?
Trademarks work somewhat differently than copyrights in that merely printing someone else's logo doesn't automatically mean you've infringed upon the owner's rights. Most logos are, in fact, not protected by copyright law. Still, trademark infringement could result in a lawsuit to stop the infringement.
Can I use company logos on my blog?
Yes, you can use logos on your blog, but keep in mind that photos and images online are subject to stricter copyrightlaws. It's much worse to grab any photo off Google Images for your blog than it is to use a company's logo in an article.
To avoid copyright infringement on your blog, search for images in the public domain. You can also snag Creative Commons (CC) licensed images as long as you abide by the type of license specified, which may need you to give creator attribution.
When using a logo or trademark on your blog or website, be sure to check brand guides. Most companies offer brand guidelines stating how you can use their intellectual property without infringing. For example, if you use Twitter, you agree to Twitter's terms of use, which include how to properly incorporate the brand. Even if you don't use a particular service, you should still review the brand guidelines to see what you can and cannot do with a logo or trademark.
Can I use government logos without permission?
U.S. law forbids the use of government agency logos without written permission. While certain logos are not copyrightable, they're still protected under similar laws to trademark laws. For instance, you cannot use the Central Intelligence Agency logo without permission to prevent the appearance that the CIA has endorsed your work or views.
Steps to File
Getting permission to use a trademark is a simple process. In general, you should follow this procedure:
Determine if permission is needed and whether the material is protected under law. Ask yourself if your usage would violate the law.
Identify the trademark owner.
Identify the rights needed.
Contact the owner. Receiving permission may mean negotiating a fee, but the fee is often minimal.
Receive your written permission agreement. Never rely on an oral agreement, as this can leave you open to misunderstandings and disputes.
When in doubt, a trademark lawyer can help you cover all your bases. This will make sure you're not infringing on anyone's rights. Whether you're seeking permission to use a logo or you want to register your own logo to receive legal protections, the experienced attorneys at UpCounsel can help.
Criminal penalties for infringement can result in prison time and hefty monetary fines.
The three most common types of infringement are copyright infringement, patent infringement and trademark infringement.
Copyright Infringement
Copyright Infringement occurs when a copyright holder’s creative work is unjustly reproduced and/or distributed.
The eight types of creative work protected under copyright law are literary works, musical works, dramatic works, choreographic works, pictorial/graphical/sculptured works, motion picture works, sound recordings, and architectural works.
Since not all expressions are protected, it’s important to know what is included in copyright law before claiming infringement. The copyright statutes can be found in their entirety in Title 17 of the United States Code.
Copyright owners have the exclusive rights to their work and are the only persons allowed to reproduce the work, make derivative works from the original work, distribute the work, display or perform the work. Terms for copyright can vary depending on when the work was created, and when the given term expires, the work passes into the public domain where it can be used without permission from the copyright holder.
Penalties for copyright infringement include hefty fines, attorney’s fees, and possible jail time. To avoid copyright infringement, obtain work legally by means of fair use and avoid any willful infringement.
If suspected of copyright infringement, it will be necessary to hire a copyright law attorney to defend your case.
Patent Infringement
Patent infringement refers to the unauthorized making or distributing of any protected patented invention within the United States.
Patent infringement can take the form of being direct, indirect, or contributory. Penalties for patent infringement depend on the severity of the involvement.
A direct infringer is someone who makes, uses, or sells a patented invention. Indirect or contributory infringers are those that knowingly sell, supply, or encourage the use of a patented item.
While patent infringement does not result in jail time, infringers can be sued by the patent holder. Resulting penalties include paying for damages to the patent holder if they should win the case, court-ordered prohibition against using or selling the patented invention, attorney’s fees and court costs.
Trademark Infringement
Trademark infringement occurs when an infringer uses a mark that creates a likelihood-of-confusion with a mark that is protected under trademark right.
When suing for trademark infringement, the plaintiff must show that they own rights to the mark and that the defendant has used a confusingly similar mark to create a likelihood-of-confusion and deception with the consuming public. Courts look at factors for likelihood of confusion such as the similarity in the overall impression created by the two marks, the strength of the original mark, and the degree of care by the consumer.
The most common penalty for trademark infringement is injunctive relief, but monetary damages are also sometimes collected. Additionally, the defendant will need to pay possible court costs and attorney fees.
A court will apply the “likelihood of confusion” test in a trademark infringement suit. This is actually an umbrella term for several tests employed by the various federal circuits. However, most courts use a group of similar factors to assess confusion. The court will analyze and weigh each factor to determine if a consumer, in the marketplace context, is likely to be confused by the two marks.
For this reason, the trademark infringement test is highly fact-intensive and each factor may be accorded different treatment depending on the case.
Here is a look into the eight-factor test applied by the 6th Circuit.
THE 8-FACTOR TRADEMARK INFRINGEMENT TEST
1. STRENGTH OF THE SENIOR MARK
The senior trademark is the one that was registered first or used first. The more distinctive is the senior mark, the more protected it is. A court will measure distinctiveness along the following spectrum:
A). Generic
Definition: Words or symbols that describe the product itself, rather than distinguish between competing versions of the product. A trademark can be rendered generic if consumers begin to use the mark as the generic name of the entire product group (like “aspirin”)
Strength: Never distinctive
Example: E-mail (no trademark)
B). Descriptive
Definition: Words or symbols that merely describe the ingredients, qualities, features, purpose or characteristics of a product.
Strength: Distinctive only if the mark has acquired secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the product, consumers recognize the mark as having a unique source. Registered marks with incontestable status will be presumed to be at least descriptive with secondary meaning.
Example: Windows (trademarked because it has a secondary meaning)
C). Suggestive
Definition: Suggestive trademarks suggest qualities of the underlying product, such that it requires imagination, thought, and perception to determine the nature of the product in question.
Strength: Inherently distinctive
Example: Playstation (trademarked because it suggests that it is a videogame device)
D). Arbitrary
Definition: Arbitrary terms are names that exist in popular vocabulary, but have no logical relationship to the products for which they are used. Whether a word is arbitrary or not has everything to do with the context in which it is used. The pairing of the mark with the particular category of product should appear to be random.
Strength: Inherently distinctive
Example: Apple (trademarked because computers bear no relation to the actual fruit)
E). Fanciful
Definition: Terms that are invented for the sole purpose of serving as trademark and have no possible association with the product for which it is used.
Strength: Inherently distinctive. Infringers of these marks are hard pressed to provide any explanation for their use the mark, leaving the impression that the real reason was a blatant attempt to trade off the goodwill generated by the owner of the trademark.
Example: Xerox (trademarked because the word has no meaning outside of this context)
2. RELATEDNESS OF THE PRODUCTS
Relatedness does not mean that the products are in the same broad industry. Rather, it means that the two products have the potential to be connected in the mind of the consumer.
Each case typically fits into one of the following three categories (and the weight given to the factor will change accordingly):
If the products compete directly then confusion is likely if the marks are sufficiently similar.
If the products are somewhat related but not competitive, then confusion will turn on other factors.
If the products are totally unrelated then confusion is unlikely.
3. SIMILARITY OF THE MARKS
This is a factor that the courts usually accord greater weight.
The court will look at the pronunciation, appearance, and verbal translation of conflicting marks. It will look to see if the given mark would confuse the public when viewed in isolation.
Also, the mark will be viewed in its entirety, not by its individual features.
4. EVIDENCE OF ACTUAL CONFUSION
The existence of actual confusion is direct evidence that the products in their actual market context have similarities sufficient to create confusion.
This factor will only be weighted heavily when there is evidence of past confusion or when the particular circumstances indicate such evidence should have been available.
Nevertheless, isolated instances of actual confusion after a significant period of time of concurrent sales or extensive advertising do not always indicate an increased likelihood of confusion and may even suggest the opposite.
5. MARKETING CHANNELS USED
A court will assess the similarity of the marks in light of the way they are encountered in the marketplace and the circumstances surrounding their purchase.
Evidence may include the relevant market the two products are sold in, the type of business the marks are used for, the methods of advertisement employed by the two parties, and the location that the respective products can be found at stores.
6. LIKELY DEGREE OF PURCHASER CARE
Generally, when analyzing this factor in a trademark infringement test, a court will apply the standard of the typical buyer exercising ordinary caution.
However, if a buyer has expertise or is otherwise more sophisticated with respect to the purchase of the product at issue, a higher standard is proper. Similarly, when products are expensive or unusual, the buyer can be expected to exercise greater care in her purchases.
The ultimate significance of a given degree of care, however, often will depend upon its relationship with the other seven factors.
7. THE INTENT OF DEFENDANT IN SELECTING THE MARK
If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity.
Intent is relevant because purposeful copying indicates that the alleged infringer believes that his copying may divert some business from the senior user.
Direct evidence of intentional copying is not necessary to prove intent. Rather, the use of a contested mark with knowledge of the protected mark at issue can support a finding of intentional copying.
8. LIKELIHOOD OF EXPANSION OF THE PRODUCT LINES
A strong possibility that either party will expand his business to compete with the other or be marketed to the same consumers will weigh in favor of finding that the present use is infringing.
A geographic expansion or an increase in the types of products offered can be relevant.
A finding that the parties will not expand their markets significantly, however, does not address the ultimate issue of likelihood of confusion.
Thus, an affirmative finding will provide a strong indication that the parties’ simultaneous use of the marks is likely to lead to confusion, while a negative finding is not a strong indication to the contrary.
When you profit from another company’s trademark, that’s trademark infringement. The most common example of this are knockoffs that use a company’s registered trademark. Using a similar trademark that causes confusion among customers is another common example.
To understand it better, look for these trademark infringement cases:
3M vs 3N in China – A company sold products that are similar to 3M’s products using the company name “3N”
Guns N’ Roses and Oskar Blues Brewery – Oksar Blues Brewery branded one of its beers Guns ‘N’Rose.
If you’re thinking of registering a trademark, I suggest doing thorough research before investing in it. What you want to avoid is investing in a brand name that is already being used somewhere else. If you want to be certain, it would be best to work with trademark attorneys who can do a trademark comprehensive studybefore proceeding with your registration. You will be able to save money and time, especially if you don’t know anything about trademarking. A trademark lawyer will also be able to help you protect all elements of your brand.
| A trademark is a symbol in the form of a word. It is a device or a label which is applied to articles of commerce with a view to stipulate the customers that the particular article is a good manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt by other persons. | Trademark Infringement and Remedies | A trademark is a symbol in the form of a word. It is a device or a label which is applied to articles of commerce with a view to stipulate the customers that the particular article is a good manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt by other persons. A trademark identifies the product of its origin and guarantees of its unchanged quality. A trademark advertises the product and distinguishes it from others. A trademark is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory. | Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, and 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India).For example, printed matter, newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class 41.The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement. Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one. An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favor of the applicant then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal. A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well. The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register. | Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered. | India’s obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc. India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions. | Trademark Infringement And Remedies | Trademark infringement is a violation of the exclusive rights attaching to a registered trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when the infringer (i.e. the person doing the infringing act), uses a trademark which is identical or confusingly similar to a registered trademark owned by another person, in relation to products or services which are identical or similar to the products or services which the registration covers. The owner of such registered trademark may commence legal proceedings against the infringer. | A trademark which is not registered cannot be infringed as such, and the trademark owner cannot bring infringement proceedings. Instead, the owner can commence proceedings under the common law for passing off or misrepresentation, or under legislation which prohibits unfair business practices. In some jurisdictions, infringement of trade dress may also be actionable. To establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. | Trademark infringement is an infringement of exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensee. Trademark infringement typically occurs when a person uses a trademark which may be either a symbol or a design, with resembles to the products owned by the other party. The trademark owner may begin an officially permitted proceeding against a party, which infringes its registration. There are two types of remedies are available to the owner of a trademark for unauthorized use of its imitation by a third party. These remedies are an action for passing off in the case of an unregistered trademark and an action for infringement in case of a registered trademark. An infringement action and an action for passing off are quite different from each other, an infringement action is a statutory remedy and an action for passing off is a common law remedy | In case of infringement / passing off trademark, a criminal complaint can also be filed. It may be noted that under the Provisions of the Trade Marks Act, 1999, the offences under the Act are Cognizable, meaning there by that police can register an FIR (First Information Report) and prosecute the offenders directly. | Civil remedies in Trademark: | # Injunction/ stay against the use of the trademark | # Damages can be claimed | # Accounts and handing over of profits | # Appointment of local commissioner by the court for custody/ sealing of infringing material / accounts | # Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim ex-parte injunction | The Courts can grant injunction and direct the custom authorities to withhold the infringing material / its shipment or prevent its disposal in any other manner, to protect the interest of the owners of intellectual property rights. This legal proposition can be enforced with / without involving the concerned authorities as a party in the suit. | The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings. | The order of interim injunction may be passed ex parte or after notice. The Interim relief's in the suit may also include order for: | (a) Appointment of a local commissioner, which is akin to an “Anton Pillar Order”, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc. | (b) Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff |
It stands for a “trademark”. Polish law does not associate any rights with this symbol. Every entrepreneur who uses the distinctive name or logo actually uses the trademark. However, not every trademark is protected by the Patent Office. In such a case, some of the entrepreneurs uses this symbol.
It stands for “copyright”. This symbol can sometimes be found on all kinds of goods like: candy bars, cereal and maps. In the broader sense, it is a right of the author in the respect of the creation of the work. It’s about a right to abtain financial benefits. Each trademark of unique graphic design is protected by a copyright law.
It stands for “service mark”. In Poland the concept of trademark include service marks. As for the meaning of this symbol, an analogous situation occurs like in the TM. An entrepreneur who protects his trademark may use the ® symbol and also the TM or SM. The occurrence of the latters does not say anything about the legal protection afforded by registration in the Patent Office.
It’s a symbol denoting registration of the geographical indication in the appropriate Patent Office. In this case we can only talk about goods originating from a given area on the condition that their specific features result from their place of origin (eg. Champagne). As in the case ® authorized persons may or may not use this symbol next to a specified designation.
It’s a symbol of the topographies of semiconductor products. Unfortunately, in Poland, the topographies of semiconductor products are not filed into protection very often.
