Trademarks are everywhere. They are so saturated that even children as young as 3 can recognize trademarks. If there’s a trademark everywhere you turn, as a creator, how do you respect a trademark owner’s rights and still be able to make your own creations? Do you always have to blur someone’s trademark from your videos? How can you review the latest Samsung tablet without being able to say “Samsung”? The answer lies in trademark fair use.
Trademark fair use is often a formal part of trademark law. It’s also very fact dependent. So, if you need an answer to a specific question, be sure to ask a trademark lawyer. Also, every country’s trademark law is a little different, so the details of fair use are probably different too. This article focuses on trademark fair use in the US because most of our readers are in the US. If you’re reading this from another country, you should check your country’s fair use laws to make sure you don’t run into issues.
Let’s start by defining trademark fair use.
- Trademark Fair Use is a Defense in Trademark Lawsuits
- Descriptive Fair Use is Pretty Easy to Understand
- Nominative Fair Use Depends on Several Factors
- How Trademark Fair Use Can Apply to Creators
- Where it Comes to Trademark Fair Use, Use Some Common Sense
- Many Creators Make Money Through Endorsements, and Showing a Trademark is Only One Type of Endorsement
Trademark Fair Use is a Defense in Trademark Lawsuits
In the US, a trademark owner has two types of rights. First, they have the right to prevent others from using the same or similar mark on same or similar goods. Second, they have the right to prevent others from using their mark in a way that suggests the trademark owner’s sponsorship or endorsement. This second right doesn’t require you to put the mark on similar goods or services in commerce. It’s only about how you’re using the mark.
It’s fairly easy to avoid infringing the first type of trademark right. If you happen to sell the same or similar goods or services, then just don’t put the same or similar mark on your goods or services.
It’s the second type of infringement that trips people up. That’s where fair use becomes important.
There are two categories of trademark fair use: descriptive fair use and nominative fair use. We’ll discuss each below.
Descriptive Fair Use is Pretty Easy to Understand
The first type of trademark fair use is called descriptive fair use. Most people probably don’t even realize that this is a type of fair use. This type of fair use has to do with the original meaning of the trademarked word.
Some trademarks are actual words in the language. Examples include Apple/apple, Adobe/adobe, and Amazon/Amazon. If we say, “Are you going to buy an apple?”, are we referring to the computer or fruit? Sometimes, this might get confusing, especially if we’re asking verbally instead of in writing.
Fortunately, the law won’t let a big company completely take over a word and prevent people from using the word in its original meaning. But your use of the word has to accurately describe what you are doing.
So, an apple farmer can use the word apple to sell their fruit. A builder who uses sun dried mud bricks to build houses can tell people that they build houses with adobe. And a travel agency that sets up tours can tell people they have Amazon tours available.
This is descriptive fair use.
Nominative Fair Use Depends on Several Factors
The second type of trademark fair use is called nominative fair use. This type of fair use is very fact dependent.
Nominative fair use happens when you’re using the trademark as a trademark. But, usually, you’re not selling the goods or services that are normally sold under the trademark.
Nominative Fair Use Has to Satisfy Three Requirements
There are three requirements for nominative fair use. You have to satisfy all three requirements. And they are:
- You have no other way to identify the product or service except to use the mark,
- You use only as much of the mark as needed to serve your purpose, and
- Your use of the mark does not suggest sponsorship or endorsement of the trademark owner.
How to Use Nominative Fair Use
Usually, you’ll find nominative fair use in comparative advertising, parody, news reporting, scholarly articles, and similar. These are only example categories. It’s the three factors above that are important in the analysis.
In writing our articles on branding, we’ve used plenty of trademarks as examples. But we haven’t used any logos. Our use of the marks falls under fair use because we satisfy all three fair use requirements:
- We have to use the marks because our articles are about trademarks and we cite them as examples.
- We’ve only used as much of the mark as necessary—i.e. just the word marks in the articles and no logos.
- Our trademark articles are intended to teach. If you read the articles, you’ll see that we’re not using the marks to suggest or imply that the trademark owners are sponsoring or endorsing our articles.
How Trademark Fair Use Can Apply to Creators
Creators are more likely to have to use nominative fair use than descriptive fair use.
Product reviews and unboxings are a type of news reporting. If you’re writing or videoing a review of the newest iPhone, you’ll have to use Apple and iPhone to refer to the product. This is fair use. You’ll also likely have to show the product as a part of your review. The packaging and the product will have an Apple logo. Since this is a product review, you shouldn’t have to blur the logo out.
But what if you’re shooting a short video and the actors happen to be drinking beer? Can you show them drinking from a can with the Budweiser trademark? Going over the three factors for nominative fair use, we see that it’s probably not necessary to show the Budweiser mark when showing people drinking beer. If you can tell your story just fine without showing a trademark at all, then showing the Budweiser mark wouldn’t be fair use. Your viewers might think that Budweiser has endorsed the scene or your entire video.
Where it comes to trademark fair use, always test your use against the three factors to see how things come out. If you can’t pass the fair use test but you still want to use the mark, then you’ll need to get a license from the trademark owner. But you should use a little common sense too.
Where it Comes to Trademark Fair Use, Use Some Common Sense
Before the internet became so accessible and before just about anyone can create online content, trademark fair use or trademark licenses were pretty easy to handle. There were standard media outlets like newspapers, TV stations, publishing houses, and movie studios. These provided easy ways and channels for trademark owners and artists to contact each other to work out fair use or to get a license for the use.
The Rise of Social Media Made Trademark Enforcement Difficult
But when social media and other creator platforms came along, things became chaotic. For one, most creators are not experts in trademark law. They don’t know the line between fair use and unauthorized endorsement. And there are so many creators. How can a trademark owner enforce their exclusive right to the mark in any sensible way?
Earlier on, some big brands got into publicity trouble by sending out stern cease and desist letters. Some angry recipients of these letters published them on the internet and created bad publicity for the trademark owners (even though sometimes the trademark owners were legally in the right).
Things have evolved since then. Some of the bigger companies seem to be taking a kinder, gentler approach.
Some Trademark Owners Seem to Go with the Flow and Welcome Free Publicity
Remember the TikTok Ocean Spray guy? He skateboarded down the street to the music of Fleetwood Mac while sipping on a bottle of Ocean Spray Cranberry Juice.
The video went viral. And it’s virtually certain that he didn’t get Ocean Spray’s permission to use the trademark for the video. (He probably didn’t talk to Fleetwood Mac either, but music licensing is different. He probably got permission to play the music through TikTok’s music licensing service.)
But neither Ocean Spray nor Fleetwood Mac was angry. Quite the opposite—Ocean Spray seemed delighted that their sales got a boost. They sent him a lot of gifts. They probably sent him a letter too, expressing their happiness and giving him permission to use the mark. This would protect the Ocean Spray trademark because Ocean Spray has now policed the mark by making the video an approved endorsement.
And Fleetwood Mac probably got a bump in music sales. Everyone lives happily ever after.
Be More Careful if You Use the Mark in a Negative Way
Just because some trademark owners react well when you use their mark without permission, it doesn’t mean that this will always be the case. The Ocean Spray skateboard guy didn’t do or say anything to put the bottle of cranberry juice in a bad light. If he did, Ocean Spray may not have been so happy with his use of the trademark.
For example, Apple apparently does not want the iPhone to be used by movie villains. They don’t want their phones to be shown in a negative way. So, if you’re making a film where the cellphone never works and causes a lot of trouble, and if you choose to use an iPhone, Apple might have a problem with it. And they might let you know.
In other words, where it comes to using someone else’s trademark in the content you create, use some common sense. If you show the mark in a positive light, even if you can’t claim fair use and didn’t contact them for a license, the trademark’s owner might not mind. They might reach out to you and work something out that will make both of you happy.
But if you trash the product, you might get a nasty letter from the trademark owner. They might demand you stop using their mark. Right. Now.
And if you do something in between, then that’s a business risk only you can decide whether or not you wish to take.
Many Creators Make Money Through Endorsements, and Showing a Trademark is Only One Type of Endorsement
One of the most common ways a creator makes money is through product endorsements. There are two types of product endorsement. Most people know that a famous or influential person can endorse a product. And in this article, we just went over the second type of endorsement—how a product might endorse a creative work.
So, in our next article, we’ll look at how a person can endorse a product. That is, we’ll talk about a person’s right to publicity and right to privacy. Because only you have the right to decide if you want to be associated with a product. Nobody else should be able to take your name or photo and stick it on a product without your permission in order to sell the product. Unless maybe they pay you.
Here’s the article:
Product Endorsements and the Right to Your Name and Likeness, for Creators
DISCLAIMER: This article does not constitute legal or accounting advice. Instead, it contains general information. The information gives you the background you’ll need to hit the ground running when you do go get advice from a lawyer or accountant. Only lawyers and accountants properly licensed in your state/country are qualified to give you legal or accounting advice.
Questions? Comments?
