A trademark is any word, phrase, logo, or combination that distinguishes the source of one product or service from another in the marketplace. Businesses use trademarks to identify their products or services every day, but not all trademarks are legally protected in the same way. To get the benefit of enhanced legal protections, trademarks should be “registered” with the U.S. Patent and Trademark Office (USPTO). Doing so can help protect against the use of a trademark without permission.
Registration requires filing an application with the USPTO, paying the right filing fees, and passing a trademark review by the USPTO examiner. After completing this process, the USPTO issues a trademark registration certificate giving the trademark owner additional legal rights. Using a registered trademark without permission from the owner can lead to a trademark infringement lawsuit. However, a trademark registration does not always protect all uses of a trademark. There are some situations where even registered trademarks can be used without asking permission.
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What is trademark infringement?
Trademark infringement occurs when someone uses a registered trademark without permission and in a way that confuses consumers about the source of the products or services. Importantly, the use of the trademark must be “likely to cause” confusion to actual or potential users or customers. Although this definition seems straightforward, it can be difficult to fully grasp because there are many exceptions to this general rule.
The most clear-cut example of trademark infringement is where you have a designed logo that you use for your business. Let’s say that your business is a store that specializes in comfortable walking shoes. You have registered this logo as a trademark with the USPTO. Then, another business in your community starts using the same logo to advertise comfortable walking shoes for travel, which are similar to the shoes that you sell. In that situation, it is easy to see where an actual or potential customer would be confused by another company’s use of your logo. In that situation, you, as the trademark holder, can sue the other business for trademark infringement, because they have used your registered trademark without permission in a way that is likely to cause consumer confusion about the source of the goods or services, namely the shoes.
Trademark infringement requires that the user of the trademark use the trademark to sell goods and services. This requirement leads to some important exceptions to a registered owner’s rights. You might think that trademark infringement has occurred, but trademark infringement has not happened if it meets any of the following exceptions.
1. Informational or Descriptive Fair Use
You can use someone else’s trademark without permission if you are using it for informational purposes. This exception applies to situations where you are:
- Expressing an opinion
- Leaving a review
- Creating an informational piece
- Educating others about the brand or brand options for a particular product
- Describing the user’s own products
This exception exists, in large part, because of the First Amendment of the United States Constitution. Your freedom of speech rights allow you to express opinions and provide information to others, even if it uses someone else’s registered trademark.
Descriptive fair use allows use of a trademarked name in a purely descriptive sense. The key is that use must not be in reference to the mark, and must be done in good faith. For example, a commercial can claim that a drink is sweet and tart, without infringing the mark SWEET TART.
2. Nominative Fair Use
You can also use a registered trademark in order to specifically refer to that trademark or to reference the products or services sold under that brand. For example, an auto body shop can claim that it fixes TOYOTA or AUDI cars without infringing the trademarks of those companies.
Again, part of the rationale behind this exception is your free speech rights, but it is often even more straightforward than that. In one example, an authorized Lexus dealer used “Lexus” as part of its domain name (buyorleaselexus.com). Lexus sued for trademark infringement, but the court determined that nominative fair use grounds controlled—they were not trying to be Lexus, but they did sell Lexus vehicles.
News reporting or parody are other examples of nominative fair use, where trademark infringement is not likely to be found. In this type of use, the argument is that you are not harming or attempting to profit off the brand, and there is no confusion to actual or potential customers because it is clear that the trademark is being referenced to make a newsworthy or satirical point.
3. Not Actually Using the Trademark as a Mark
There is a legal exception to trademark infringement that includes uses where you are really not using the trademark as a mark. Opinion and reference pieces qualify for this exception, but consider another example.
Using a character from Disney or Warner Brothers can be trademark infringement in some situations. This may be the case if the goods or services you are providing are similar or related to those of the trademark owner, Disney. However, using a character on a t-shirt may not be trademark infringement because of how it is used. A common defense to trademark infringement claims is that the trademark is not used for a commercial purpose, or not used in connection with the sale of goods or services.
For example, if you run a website that highlights Disney’s business practices and mentions specific characters, and your site does not attempt to sell anything, that may be protected by the First Amendment (or nominative fair use) from any trademark infringement claims. When the character appears on a t-shirt, that person is not trying to advertise or “be” Bugs Bunny, for example. Instead, they are simply showing that they like Bugs Bunny.
You should keep in mind, however, that many cartoon characters might also be protected under a registered copyright, so starting to create hundreds of t-shirts with Bugs Bunny on them might not be a good idea. Again, the key consideration is whether you are attempting to commercially profit off of the association or potential confusion with another trademark. You might also want to consider getting a license to use a trademark rather than simply using names, pictures, or logos that might be protected under trademark or copyright laws.
Can I go to jail for trademark infringement?
No. Trademark infringement is prosecuted under civil laws, and is not a criminal act.
Instead, lawsuits over trademark infringement will usually require you to stop using the trademark, and you may have to return any profits made off of the infringing use, or pay money damages for the use of the trademark. Damages may be tripled in certain cases where the mark was intentionally used in the sale of counterfeit products or services.
Can I use a trademark that does not have the ® or TM signs?
The ™ notation is used for unregistered or common law trademarks, and ® is appropriate for registered trademarks. Sometimes businesses will use the ™ if they are in the process of registering their trademark.
The ™ notation has no legal significance, so it is never required to be used. The ® symbol’s use is less straightforward. The symbol puts others on notice that the trademark is registered and presumably owned by the user, or is being used under one of the trademark infringement exceptions noted above.
How long does a trademark last?
Unlike copyrights, trademarks can last forever as long as they are used in connection with the sale of goods or services. However, there are still renewal filings that must be done with the USPTO between the 5th and 6th year, 9th and 10th years, and every ten years after that.
Legal Made Simple
Trademark laws are complex. Understanding how these laws apply to your particular business or situation will often require the expertise of a trademark lawyer who understands you and your business goals. Lucky for you, Rocket Lawyer On Call® trademark attorneys are available for affordable consultations. If you are looking to register your own trademark, Rocket Lawyer trademark specialists are ready to get you through the entire process, from conducting a trademark search to filing the application, all at an affordable price.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.