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Norton Law Corporation Trademark Infringement Fair Use

Using Another’s Trademark. Infringement or Fair Use?

I’m often asked whether a person’s use of a trademark is considered trademark infringement or if it the use is acceptable as fair use. The usual answer is…wait for it…it depends. That’s right, just like most legal questions, trademark infringement is often a variety of shades of grey without any clear cut black and white answer. As a result, whether something is considered trademark infringement is very, very fact specific, as you’ll soon find out. In short, unless you’re using the mark (or something incredibly similar to it) of another company to sell exactly the same product they are, then the answer to whether something is trademark infringement will remain the lawyer’s favorite answer: it depends.

Now, because this post is going to contain a bit of law and legal discussion, I’m going to need to bolster the standard disclaimer I have on the footer of every page on this site. The information contained in this post is not an acceptable substitute for hiring your own knowledgable trademark attorney to do a full-fledged analysis of the facts unique to your situation. If you try to analyze your use yourself, you have a very high risk of getting it wrong, getting sued, and owing a lot of money to the original trademark holder. I don’t want that to happen. You don’t want that to happen. So contact a trademark attorney if you are concerned about infringement.

With that out of the way, the common definition for fair use is a very straightforward one, and it comes to us straight from the Lanham Act (that’s the trademark law). Under that definition, fair use is the use of a name, term, or device, otherwise than as a mark, of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services made or sold by a party, or their geographic origin. That’s a more readable version of 15 U.S.C. § 1115(b)(5) if you’re interested in checking the statute itself. In other words, you can use another company’s trademark to describe your own goods or services, but not as a trademark. Pretty straightforward, right?

Ready for an example? Fender, the guitar maker, has a very old trademark for their guitars and other musical instruments. However, if you own an auto body shop, you can still advertise that you can fix a car’s fender. It’s not trademark infringement because you’re using “fender” to describe your own services—fender repair in this case—and you’re not using it to confuse customers into thinking you’re making and selling musical instruments.

But there’s a second type of fair use in the trademark world, known as nominative fair use. This type of fair use is very similar to the type of fair use we see with copyrights. In essence, nominative fair use means you can use another company’s trademark for things like parody, news reporting, commentary, and comparative advertising. However, here is where the grey areas of the law start to appear. Something about all of this being based on case law instead of statute that tends to cause a lot of grey areas. There’s a variety of tests for determining whether something is nominative fair use or whether it’s just plain trademark infringement. Here’s a few:

  1. Is the product or service being advertised/commented on/parodied not readily identifiable without using the trademark?
  2. How much of the trademark is being used? More than necessary?
  3. Is the use of the trademark suggesting some kind of endorsement or sponsorship by the trademark owner? Disclaimers used to show no affiliation?
  4. Is the mark being used in a misleading way?

It seems that one of the common ways a lot of businesses try to get around the trademark infringement argument is to just slap a disclaimer on the use that specifies there’s no relationship between the user and the trademark owner. However, while that may score a couple of extra points towards the nominative fair use, it’s often still not enough. Especially when we all really know that nobody reads disclaimers, terms of use, privacy policies, or any of that other boring stuff on a website.

So let’s take an example from real life. A few years ago, Tiffany, the jewelry maker, sued eBay, the online auction site, for (vicarious) trademark infringement. They claimed that because sellers on eBay were selling counterfeit Tiffany items and that eBay was advertising sellers were selling Tiffany items meant that eBay was liable for trademark infringement. The court in the case ruled eBay’s use was protected as a nominative fair use. Why? Because eBay was merely describing that there were Tiffany products available on their website, nothing suggested that eBay and Tiffany were affiliated (as if they were in an authorized distributorship arrangement), and eBay did not know in advance which items being listed were counterfeit. eBay, it should be mentioned, also seems to take a number of steps to remove any counterfeit items from its listings. As a result, eBay was found not liable for trademark infringement. Here’s the case citation if you’re interested: 600 F.3d 93 (2d Cir. 2010).

Oh, and before you decide to use another’s trademark on your website or in your advertisements, be sure to run it by your trademark attorney first. At least you can use the argument (if you get sued) that the trademark infringement wasn’t willful.

Why You Need to Record Your Trademark With US Customs and Border Protection (CBP)

At the risk of sounding sensationalist, if you run a business with products that are easily counterfeited, you need to record your registered trademark with the US  Customs and Border Protection (CBP), lest you suddenly find your business is being drowned out by fakes, copies, and products that, while looking similar to yours, do not carry the same quality and pedigree that your company’s goods do. Oh, and you also do not make any money off of them because the counterfeiters are instead.

You’re probably asking yourself why you’ve never heard of the CBP trademark registry. Simply enough, it’s because the CBP registry is not very well known. If you’re a service provider, you probably don’t need to know about it—and you can stop reading this article at around 100 words in—but if you’re in the business of making a product, especially consumer focused products, the CBP database can actually be of incredible import. But first, a few facts about the CBP trademark registry. It was set up as a way for the CBP to record the trademarks and copyrights of intellectual property owners who were concerned about counterfeit goods flowing through America’s borders. When your trademark or copyright is recorded with the CBP, they start looking out for those goods as they come in through Canada and Mexico, as well as across the Pacific and Atlantic. Once they find counterfeit items, they can exercise a number of actions, including seizure, destruction, and monetary sanctions—but more on those later.

So, you’re selling goods, say, high end watches in the $5,000 to $15,000 range. You’ve spent a lot of time and effort developing the movements, the unique design, the branding, and the overall image for the type of lifestyle you’re selling. You’ve partnered with an excellent trademark attorney from the very beginning to help you develop your brand cohesively, and you’ve registered your trademarks for the company name, any of the unique names of the individual watches, any logos, and maybe even the trade dress for your uniquely designed watches themselves. At this point, you’ve already completed the first step in recording your trademark with the CBP—registering your trademark. You see, the CBP has to go through a lot of different products when they cross the border, and while it would be great for them to be able to check all of them for trademark violations, they have to cap it somewhere or the manpower necessary would be prohibitive. As a result, in order to record your trademark or copyright with the CBP, you need to make sure it is validly registered with the United States Patent and Trademark Office (USPTO). That’s your first step: trademark registration. Or, if you’re interested in protecting your copyrights with help from the CBP, you need to make sure that you register your copyrights with the US Copyright Office.

Benefits of Recording with the CBP

Now that you know the first step for recording your trademark with the CBP, let’s discuss some of the perks of doing so. There are four major benefits:

  1. The CBP will be able to monitor and seize any merchandise with any counterfeit marks that are similar or identical to the trademarks you have recorded with them.
  2. The CBP will be able to issue monetary fines/sanctions against anyone or any business who tries to bring counterfeit goods with your trademarks into the United States.
  3. The CBP will be able to contact the US Attorney’s Office in order to initiate criminal prosecution of counterfeiters.
  4. The CBP will be able to raid counterfeit production facilities both nationally and internationally depending on the scale of the counterfeiting operation.

If you’re faced with an influx of counterfeit goods steering sales away from your own products or you are afraid that as your brand grows, you’ll have problems curtailing counterfeiters later on, these are some very powerful weapons the CBP provides trademark and copyright holders. Effectively, by recording your trademark with the CBP, you can not only shut down the local importers and merchants who sell your goods in shady back alleys and low end swap meets, but you can even stop the flow of goods entering the United States or prevent them from being manufactured at all.

What is the Enforcement Process Like?

The enforcement process for trademarks and copyrights registered with the CBP is very simple. Once you have recorded your trademark or copyright with the CBP, they will contact the intellectual property owner (or the law firm you’ve listed as your attorney of record) to provide them with all of the necessary information regarding a seizure. Essentially, they will give you a description of the merchandise, the quantity of the items they’ve seized, who has been manufacturing these items, and who has been importing them into the United States. The CBP may, in some situations, even provide you with with a sample of the infringing counterfeit merchandise so that you can go after the manufacturers and importers with a civil case for trademark or copyright infringement, if you so choose. As you can see, the process is generally very simple with the CBP only contacting you (or your attorney) when they’ve detected a suspected counterfeiter.

How Much Does Recordation Cost?

Recordation with the CBP is very inexpensive—but more than the very low fees charged by the US Copyright Office for registering a copyright. As of this writing, the fee is only $190 per copyright and $190 per mark per international class for a trademark (if you don’t know what that means, please contact me). The form is fairly straightforward and everything can be done online. To be perfectly honest, you don’t even need an attorney to do it. But if you’d like to hire me, I’m always happy to help at a very reasonable flat fee with discounts for clients who have hired my office to register their trademarks.

There is one thing to keep an eye out for, if you’re going to register with the CBP. Around the time you successfully register a trademark, many people are contacted by third party organizations claiming to be working for or related to the CBP or some other governmental organization. They always send letters. These letters look very official, often bearing some kind of official seal or something along those lines—they are not from any official organization. Instead, they are designed to trick new trademark owners into believing they are not taking advantage of all of their registration rights. As such, they charge often exorbitant fees for services that shouldn’t cost more than a few hundred dollars. I’ve seen examples of letters that charge as much as $1,500 to register a trademark on the CBP. Do not fall for these scams, and if you’re going to hire someone to assist you with recording your trademark or copyright with the CBP, use someone you trust.

Ultimately, recording with the CBP is a very valuable tool for trademark and copyright owners who are looking to protect their products from counterfeiters. It is a service offered by the government at a reasonable fee that provides many great perks to intellectual proper rights holders. If you need more information or you’re interested in pursuing a registered trademark, a registered copyright, or a recorded trademark or copyright, please don’t hesitate to contact me. And, if you’ve dealt with counterfeiters before (either with the help of the CBP or on your own in civil court), please leave your story in the comments below.

2 Simple Ways to Protect Your Trademarks

If you’ve looked at any other pages about trademarks on our site, you’ll know we say the same thing over and over again. Trademarks are perhaps the most important asset your business has. Yet time and time again we hear from business owners that just aren’t willing or aren’t able to keep up with protecting their trademarks from infringement or dilution. Hopefully this post will introduce those business owners to a couple of great ways to protect their trademarks without having to sacrifice their spare time—if they have any—or was their money needlessly.

Monitor Your Trademarks for Infringers and Diluters

Trademarks are susceptible to two major forms of attack from other businesses, and the general public. These are commonly known as infringement and dilution. The details of each are too broad for this post, but in general, infringement means the violation of your rights as a trademark holder and dilution means, well, the dilution or tarnishing of the trademarked brand. Nevertheless, you want to avoid both from happening to your mark.

But how do you stop trademark infringement and trademark dilution? Before you do anything, you’re going to have to find out where the attacks are coming from. And in order to find out who’s attacking your mark, you need to monitor what other similar businesses are doing. After all, in general, it will be these similar businesses who are most likely to start chiseling away at your trademark rights.

While the easiest way to monitor your trademark is to find a great trademark monitoring service, you can also watch your trademark yourself. The route you choose depends on whether your time or your money is more valuable.

In any event, if you decide you want to monitor your trademarks yourself, there are a few free tools available that can help you out. The first is the, widely regarded as very user unfriendly, trademark search through the United States Patent and Trademark Office (USPTO). TESS, as it is commonly known, allows you to search through the USPTO’s trademark registry with a variety of options. How often you choose to search is completely up to you, but the general recommendation is usually once a month.

The next tool at your disposal is to track social media and domain name registrations. See what people are talking about. Check out newly registered usernames that sound incredibly similar to your best-selling product. Should only take an hour. Or three. Or ten. Luckily, there is a tool out there that can help speed things up a bit. KnowEm, a social media and username search engine (with a very rudimentary trademark search function) can help you keep track of who is using what username on social networking sites as well as which domain names have been registered. This kind of information can go a long way to helping you sort out who may be trying to plunder your trademark.

Finally, we have the good old search engine search. Google, Bing, Yahoo, whatever your favorite search engine is, use it. Conduct a search every so often to make sure your mark isn’t turning up in places you don’t want it to. You can even use Google Alerts to notify you when new content with your trademark—or something highly similar to it—appears in Google’s search results.

Hire An Attorney Before You Send Out That Cease & Desist Letter

The cease and desist letter. Favorite document of all those who think they’ve found a trademark infringer. Sent to intimidate those who may be violating a business’s trademark into submission. But are they really all they’re cracked up to be?

Imagine this scenario. You think you’ve found an infringer. You’re absolutely livid that this guy is totally ripping off the name of your product you’ve worked years to perfect and spent hundreds of thousands of dollars to produce and market. So you decide to draft a cease and desist letter to tell this guy to put a stop to his actions. In your haste, you adopt a pugilistic tone in hopes of making him shake in his boots. You send it off, and a few weeks later you get a response from the guy’s attorney. He’s responded to your cease and desist letter with one of his own—except this time he’s telling you his client has a senior trademark and he wants you to stop selling your product and change its name to something that’s not infringing on his trademark.

Yeah. That’s not a situation you want to find yourself in. But it happens to some business owners. They think they’ve found an infringer. They send off the letter. And whoops, it turns out they were wrong and now they either have to stop selling their product or they decide to fight a long and expensive trademark infringement suit.

And it can all be so easily avoided in two easy ways. First, keep your cool and don’t send off a cease and desist letter to every person you think is infringing or diluting your trademark. Second, contact a trademark attorney if you think you’ve found someone negatively impacting your trademark rights. At the very least, a cool head and a second pair of (well trained) eyes can go a long way to make sure you don’t inadvertently get yourself into trouble by acting too hastily.

Image courtesy: Steve A Johnson