We have all heard of stories of trademark infringement. If you wear, paint or even display something believed to be a trademark of a particular company, it is possible that you have just infringed on their trademark and may face a claim. If a trademark has been registered in the USA, you can be sued for using those particular marks without the express permission of the trademark holder. This is because you can cause what is referred to as a ‘likelihood of confusion’ to their potential or actual customers, the confusion being that they can assume that the products from your company are those from the original company instead. There are several exceptions to the rules though as follows:
- Nominative Fair Use
This is a carve-out to the regular infringement laws. Here, you are allowed to use the trademark belonging to someone else in order to comment on the mark, the offerings of the company, or to make a point. You may also be allowed to use the trademark without permission in order to make a true statement regarding your business that cannot be said with referring to the said trademark. An example is when a Lexus dealer who was authorized to sell their cars used the ‘Lexus’ to create domain names e.g. buyalexus.com. Lexus had sued the said dealer for infringement of copyright but were shot down because the dealer was making a truthful statement. Under nominative fair use, he was in the clear because he legally leased and sold Lexus cars.
- Functional use
Another exemption to trademark violations is functional use. This is when the mark is being used for something that does not include disseminating information regarding the source of these services and goods. An example of functional use is in the Fleischer case where it was said that if you took a particular well known character and placed it on jewelry, clothing and so on, this is seen as functional where the wearer simply wants to identify with the said character. It also shows that the wearer likes the character. Because the person is not trying to deceive consumers regarding the origin or source of the said products, this is considered a functional use.
The issue of functional use actually opens up some very pertinent issues. Does it mean that anyone can make as well as sell t-shirts and sports jerseys of popular teams with the insignia on them? Does that mean that the wearers are infringing on a trademark or is this considered functional since they are showing their allegiance to the group? This would mean that it is not considered infringement. The Fleischer case, if followed up by the Supreme Court, could mean that trademarks would be used with a lot more impunity than they currently are.
Well, you will need to have a good lawyer put in your trademark documentation to ensure that everything is airtight. In the event of any trademark infringement, a litigation lawyer would come in handy to ensure that ‘cease and desist’ letters were written and sent out and if all else fails that court proceedings were opened.