Can Someone Use Your Marks in Ads Without Permission?

COUNTRY CORRESPONDENT CO-PUBLISHED EDITORIAL United States Davis Wright Tremaine

Can someone use your marks in ads without permission?

Use of third-party marks without consent in advertising or expressive works that might be viewed as advertising always carries some element of risk

Marketing departments everywhere have a valid infringement claim against a not to infringe the SweeTARTS mark. This are keen to use third-party trademarks third-party user of your marks – will depend classic fair use defence is fairly limited; it or service marks to advertise or promote on whether the user has a valid fair use applies only where one is using a descriptive their products and services. Third-party defence, which requires an understanding term and only where the term is used in its marks can serve as a proxy for location, of the intersection between US trademark descriptive sense rather than as a mark. affiliation or performance and create law and the First Amendment to the US It is effective for those limited instances authenticity in a marketing campaign. Constitution. in which a company wishes to use third- They may also be necessary to describe Trademark law protects an owner’s party marks solely for descriptive purposes, the use or compatibility of a product or exclusive right to exploit its marks and but does little to protect a company’s use service or to give a company access to a to prevent third parties from capitalising of a third-party mark for the purposes of new demographic or influencer. However, on the associated goodwill by suggesting identifying that rights holder or its goods or it is not always the case that use of a third an association or implied endorsement services. party’s marks for marketing and advertising between the owner and a third party What if a company wishes to use a purposes requires permission. without the owner’s consent. The First third-party mark to identify, compare If one wants to use a third-party Amendment prohibits any laws that abridge or associate its own products or services mark for advertising purposes, it is vital freedom of speech and therefore, among without infringing the third-party mark? to understand whether permission is other things, provides certain safe harbours Does trademark law actually require that required, and in the case of a third party and defences for users of third-party marks one avoid using the actual mark and using your marks, whether you have a valid where the public benefit of allowing the use instead refer to it indirectly (eg, by referring infringement claim in connection with that outweighs the owner’s rights in the mark. to Geico as “that insurance company with party’s unauthorised use of your marks. In general, these trademark law defences the Gecko”)? Or worse, does it prevent a Where possible, entities wanting to constitute the fair use doctrine (which company from referring to third-party use a third-party mark should obtain should not be confused with the fair use marks altogether? The First Amendment consent – it is often simpler than marketing doctrine that applies to use of third-party recognises this issue and permits certain departments realise. There may also be copyright). The trademark law fair use uses of a third-party mark for identification practical considerations which would doctrine essentially comprises the following purposes through a doctrine referred to as necessitate consent, such as a company’s three defences. ‘nominative fair use’. risk threshold or the need to protect The classic fair use defence applies A user of a third-party mark may claim existing business relationships, even where where a third-party mark is used to describe that a nominative fair use defence applies strong fair use defences are available. the user’s own goods or services, rather when each of the following factors is met: However, obtaining consent is often than to identify or associate it with the • The third-party product or service is not complicated and time consuming, and owner of the mark. Essentially, the defence readily identifiable without use of the could unnecessarily tip off competitors. prohibits a rights holder from appropriating mark; Compulsory licences are not available under descriptive terms for its exclusive use and • Only so much of the mark is used as is US trademark law and few companies wish thereby preventing others from accurately reasonably necessary to identify the to depend on a determination that a mark is describing their own goods or services. third-party product or service; and generic. Therefore, use of a third-party mark For example, a beverage manufacturer’s • The mark is not used in a manner that without consent for advertising purposes use of the phrase ‘sweet-tart’ to describe suggests sponsorship or endorsement by – and the determination of whether you the flavour of its fruit beverage was found the rights holder.

110 | OCTOBER/NOVEMBER 2015 www.WorldTrademarkReview.com The nominative fair use defence was Kraig Baker Jeffrey Carter first articulated in New Kids on the Block v Partner Associate News America Publishing, Inc, a 1992 case in which boy band New Kids on the Block [email protected] [email protected] (NKOTB) sued two newspapers over their Kraig Baker is chair of the technology, Jeffrey Carter concentrates his practice use of the NKOTB word mark in connection advertising, trademark and entertainment on transactional IP matters, with a focus with polls that prompted readers to group. He advises clients and provides on clients in the media, entertainment respond to questions such as “Who’s the assistance with licensing transactions in and advertising industries. He regularly best on the block?” and the inquiry: “Now media, entertainment, technology, sports, provides counselling and production which kid is the sexiest?” advertising, privacy and social media, with a legal services to film and television The court determined that the particular emphasis on mobile, digital media production companies, television networks newspapers’ use of the NKOTB mark and interactive entertainment. Mr Baker and theatrical producers. Mr Carter’s satisfied each of the nominative fair use is an instructor in the communications production legal experience is varied factors, noting that the newspapers could leadership graduate programme at the in nature, including the drafting and not practically refer to NKOTB without use University of Washington, where he teaches negotiation of agreements relating to the of the word mark. Further it found that classes on law of digital distribution, acquisition of underlying rights, production the newspapers’ use of the word mark only interactive media and content, and law and financing, and inbound and outbound (and not the associated logos) satisfied privacy issues with data and analytics. content licensing. the ‘use only as much as is reasonably necessary’ requirement. Finally, it ruled that the reader polls did not expressly or impliedly suggest any endorsement or For example, a restaurant might advertise or falls within the fair use doctrine. This sponsorship on the part of NKOTB. that it “uses Boar’s Head deli products to establishes that use of a third-party mark The nominative fair use defence is craft delicious sandwiches”, but should will be fair use so long as: stronger where the following steps are taken. avoid stating that it has “teamed up with • the use has artistic relevance to the First, the ‘use only as much as is Boar’s Head to craft delicious sandwiches”. work, which has been construed as reasonably necessary’ requirement is Boar’s Head in turn may be able to refer to “more than zero”; and stronger where the use is limited to use the restaurant as a “customer”, but should • the use does not explicitly mislead the of the word mark in a generic font – any not refer to the restaurant as a “satisfied viewer as to the source or origin of the use beyond this is rarely acceptable. customer”. As before, context matters and work (and thus avoids any potential Therefore, companies should avoid using any use that could be construed as an consumer confusion). a third party’s logo, taglines, catchphrases, implied endorsement should be reviewed signature font or a font and size designed to with care. This test sets a low bar and should be make the third-party mark stand out within Native advertising and expressive works easy to meet for use in expressive works. For the context of the advertisement. sponsored by, involving or even written and instance, a recent case upheld the ability Second, the user should take steps to produced by advertisers are an increasingly of a painter to paint realistic scenes from ensure that no endorsement or sponsorship popular form of marketing and promotion. Alabama football history, including accurate is expressed or implied between the two Mountain Dew, for example, produces portrayals of uniform colours and logos. companies. For example, a disclaimer can aspirational extreme sports videos designed Nevertheless, companies should be cautious be helpful – although use of disclaimers to reflect and advance the Mountain Dew if consumers could be misled as to the is not necessarily dispositive. More culture, rather than to directly promote source or origin of the expressive work or if importantly, the user should avoid using the sale of Mountain Dew products. This it seems that the creator of the expressive logos altogether because the use of a third- blurring of the line between expressive work is trading on the goodwill of the party logo or other brand indicia is more works and advertising is complicated and underlying mark. This is particularly true likely to suggest endorsement. Use of a beyond the scope of this article. However, where the third-party mark is particularly third party’s marks in connection with assuming that extreme sports videos prominent in the expressive work. sweepstakes, contests and giveaways may such as those produced by Mountain In general, use of third-party marks also suggest endorsement. For example, Dew are expressive works under the First without consent in advertising or had the NKOTB reader polls involved a Amendment, under what conditions may expressive works that might be viewed as prize giveaway of NKOTB concert tickets, Mountain Dew integrate third-party marks advertising always carries some element of the court may have found an implied (including yours) into those videos? risk; and while obtaining consent is often endorsement. First Amendment law has established desirable, it is not always the case that Finally, statements should be factually the Rogers test to determine whether the consent is obtained. Whether such usage accurate with respect to the relationship use of a third-party mark in an expressive is legally permissible requires a careful between the user and the mark owner. work constitutes trademark infringement analysis of the fair use defences.