What is a “trademark use”? This question comes up in this way: You want to use a trademarked name or brand or logo (not yours). You want to make commentary about the trademark, or simply reference the trademark in some way.
Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”. If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.
The Good and The Ugly – Trademark Use Examples
Some examples illustrate the point:
1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character. The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark. The trademark is clearly incidental to the photo and to the story.
2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest. “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms. The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.
Nominative or Fair Use of Trademarks
What I referred to above as “not a trademark use” is also sometimes called “nominative” use, and sometimes “fair use”.
One commentator cites “nominative” trademark use in a fictional work to describe or identify products or services, including “shopping for books at Walmart”, “playing a Playstation game”, and “wearing Oakley sunglasses.” As I previously wrote,
In (hopefully) plain English, the defendant makes no argument to counter a trademark owner’s typical claims of trademark infringement such as likelihood of confusion or dilution of trademark and so forth. Instead, the use of the trademark is permitted as a fair use since the use simply (and only) identifies the trademark.
There, I was specifically commenting on a court decision involving Toyota and a broker of Lexus cars, where the broker-defendant had (without Toyota’s permission, obviously) used Toyota’s name in its website domains to promote its business. In that case, Toyota did not dispute the legality of the brokerage’s business nor its authority to broker and sell Lexus vehicles. The Lexus auto brokerage could therefore successfully argue that use of the “Lexus” was necessary to identify the product being sold.
No Endorsement or Sponsorship – Express or Implied – by Trademark Owner
Critical, also, to a claim that a use of a trademark is “not a trademark use” is lack of a statement – implied or express – of endorsement by the trademark owner. This goes back to the most common ground for a claim of trademark infringement, namely likelihood of confusion as to the source of the goods or services being promoted. The ultimate value of trademark is the association of a logo, brand, product or service with a particular individual or company owner. The absence of that association in a third party’s use of a trademark – “Oh Lord, won’t you buy me … a Mercedes Benz / My friends all drive Porsches, I must make amends” – (see Joplin, Janis) undercuts an infringement case while supporting a “nominative” use argument.
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