Name of the Game: When is it “Fair” to Use Someone Else’s Trademark?

Let’s say you’re a huge fan of Coca Cola. You grew up drinking their soda, you were one of their first Facebook fans, you collect Coke bottles from around the world, and now you’ve decided to use their trademark on your own fan site.

Before you get started on the design for your new fan site, stop for a moment. You might be heading into trouble.

We’ve written before about how the use of another’s trademark can sometimes be considered “fair” when it is used in parody or satire – see here and here. But there are other ways you can use another’s trademark that may be considered “fair use.” So we thought a quick guide to another popular form of trademark fair use would be helpful for you, the fan, to avoid trademark infringement and to brand owners who are not sure if someone is infringing on their trademark.2015-07-22_name-game-fair-use-tm_kandis

So back to that fan site – you want to use Coca Cola’s trademarks to refer to your favorite soda on your site. Or perhaps you want to advertise your own brand of soda by touting how wonderful your soda brand is compared to say, Diet Coke. In the United States, such use of someone else’s trademarks may be “fair” and non-infringing under what’s known as “nominative fair use,” so long as your use does not cause confusion for the consumer and does not give the impression of Coca Cola’s sponsorship or endorsement.

How to stay on the right side of the law

Courts use a three-part test to determine whether trademark use qualifies as nominative fair use.

  1. No need to use “absurd turns of phrase” – Referring to Coca Cola by its trademark may at times be necessary. To put it another way, trademark law does not compel individuals to use “absurd turns of phrase” simply to avoid trademark liability. For example, one could refer to the New York Times as “the long-established daily newspaper in New York,” but it is far simpler to refer to that paper by its name.
  2. But don’t use the mark more than necessary – You can use only so much of a trademark before it becomes overkill. For example, when former Playmate of the Year Terri Welles created a website using “Playboy” and “Playmate of the Year 1981” in the website’s headings, metatags and banner ads, such use was fair since it was a title that truthfully described her. But the repeated use of the abbreviation “PMOY ’81” as a watermark on the website went too far and thus was not considered fair use.
     

    The use of a word mark, rather than a corresponding logo or design, may weigh in favor of fair use. Former playmate Welles used only the trademarked words “Playboy” and “Playmate of the Year 1981” and not the font or symbols associated with the trademarks. Similarly, a soft drink competitor could use the term “Coke” or “Coca-Cola” to fairly compare its product, but it would not be entitled to use the distinctive lettering.

  3. Be truthful! Don’t imply a relationship that doesn’t exist – When you use a trademark, it must accurately portray the relationship between you and the trademark owner. For example, when a magazine used the name (and trademark) of the band “New Kids on the Block” to publicize a telephone poll (about the band) and contest it was running, the magazine’s advertisements were fair use because the ads did not give the impression that the band sponsored the contest.
     

    Similarly, if you write a blog post in which every mention of Coca Cola is negative, you use a clear disclaimer of any affiliation with the company, and there is no implied affiliation, connection or sponsorship, your use of the Coca Cola trademark may be fair.

Need further guidance around the fair use of trademarks? Contact us today.

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