Introduction

One of the more difficult issues encountered by a publisher and author is the question of when it is permissible to use or write about a trademark without obtaining permission from the trademark owner. Two examples of this issue include the following: (1) The use of brand names that are trademarks can make writing more realistic. Therefore, can an author use without permission trademarks such "Ford", "Hershey", and "Beanie Baby" in their work? (2) Can an author write a work that is either favorable or critical of a company or a company's product line(s) and within that work use a trademark of that company without obtaining permission from the trademark owner?

Regretfully, these are not always easy questions to answer. However, as with other legal issues that involve writing about another party or a party's property, whether this involves copyright, trademark, right of publicity and right of privacy, the only proper response to the question of writing about or using another party's trademark without obtaining permission will depend upon the specific facts involving the particular use.

Fundamentals of Trademark Law

A trademark includes any word, phrase, symbol, design, sound, smell, color, product configuration, group of letters or numbers that is used by a person or company to identify and distinguish its products or services from those provided by others. An author frequently wants to refer to trademarks, such as brand names, in their writings to make them more realistic.

The law recognizes and protects a trademark as intangible, intellectual property that has value to the trademark owner. Federal law, known as the Lanham Act, protects marks registered with the U.S. government while state and common law that differ from state-to-state protect state registered and unregistered (common law) trademarks.

Ownership of a trademark could potentially last forever. Although trademarks may be registered with the United States Patent and Trademark Office, federal registration is not necessary for establishing ownership. Ownership of trademarks may also be established under state and common law. Trademark law benefits producers and consumers by precluding the use of a mark when that use is likely to result in consumer confusion. Therefore, a trademark owner may attempt to prevent others from using their mark in a number of situations such as when (1) the trademark is being used on competing goods or services or the (2) consumer would likely be confused by the dual use of the trademark. However, even though trademark law protects the mark from "infringing" use the trademark owner's rights are not absolute since they must co-exist with our fundamental right of free expression.

Using Another's Trademark

The Lanham Act permits a non-owner of a registered trademark to make "fair use" or "nominative use" of a trademark under certain circumstances without obtaining permission from the mark's owner. The fair use and nominative use defenses are to help ensure that trademark owners do not prohibit the use of their marks when they are used for the purpose of description or identification. Fair use or nominative use may be recognized in those instances where a reader of a given work is clearly able to understand that the use of the trademark does not suggest sponsorship or association with the trademark owner's product or services and therefore is not being used in a manner to confuse the reader.

Generally, the use by an author of a trademark in a fictional work to describe or identify particular goods or services, such as "driving in my Ford", "eating a Hershey bar", "playing with my Beanie Baby" will not be considered an infringement as long as the use does not confuse the reader with respect to who actually owns the trademark. Trademark law also permits an author of a non-fiction work to include content that is favorable and/or critical of a trademark owner's products or services. In this type of work the author should only use the trademark to describe or identify the trademark owner's product or service and should be careful not to confuse the reader as to the actual provider of the trademark owner's products or services.

An author's use of a trademark for the above-referenced situations should be considered a non-confusing "nominative use" when it meets the following requirements: (1) the trademark owner's product or service must be one that is not readily identifiable without the use of the trademark; (2) the author only uses as much of the trademark as is reasonably necessary to identify the trademark owner's products or services; and (3) the author does nothing that would, in conjunction with the trademark, suggest to the reader sponsorship or endorsement by the trademark owner.

A trademark owner by choosing a descriptive term as its trademark must live with the result that an author remains free to write about or use the trademark in its "primary" or descriptive sense. Legal doctrine defines fair use of a trademark as the "reasonable and good faith use of a descriptive term that is another's trademark to describe rather than to identify the user's goods, services or business".

It is important to remember that the only type of use by an author that may suffice as a "fair use" of another's trademark is the use of the mark in a non-trademark sense. It is also possible that the "overuse" of another's trademark, even in a descriptive sense, may not be considered fair use. This is because the repeated usage by the author could lead to a likelihood of consumer confusion based upon a presumed connection or sponsorship with the trademark owner.

The fair use defense if it is to be successful must meet the following requirements: (1) the author's use of the mark must accurately describe the trademark owner's product or service; (2) the author must use the mark in a non-trademark manner and not as a source identifier of the author's work; and (3) the author's use must be in good faith.

One difficulty with the fair use or nominative use defense is the lack of legal certainty that can be relied upon. This is because of the subjectivity involved in defining the requirements of the defense such as "nominative use" and "non-confusing use". Court decisions involving the fair use or nominative use defense are fact specific to the particular case and sometimes the decision in a particular case appears to be contradictory to a decision in another cases.

Conclusion

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Lloyd L. Rich is an attorney practicing publishing and intellectual property law. He can be reached at 1163 Vine Street, Denver, CO 80206. Phone: (303) 388-0291; FAX: (303) 388-0477; E-Mail: rich@publishingattorney.com; Web Site: http://www.publishingattorney.com. The research for this article was provided by Holly Panetta a second year student at the University of Denver School of Law.