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By Spencer Young
Associate Attorney

Intellectual property laws can be rather complicated at times. As a general rule, trademark law allows only the trademark owner to make money off the use of their trademark.

However, that is too simple an explanation and doesn’t take fair use into account. The following guide provides a basic explanation of the difference between trademark infringement and fair use.

What Is a trademark?

There are several types of intellectual property. For example, patents represent the design of a physical product, whereas copyrights represent the body of an artistic creation (books, movies, music, etc.). Trademarks are slightly different because they don’t represent products that are sold but rather the identity of a brand.

What a Trademark Protects

A registered trademark — which can be composed of certain words, symbols, or iconography associated with a specific brand — is protected by federal law. For example, the Nike swoosh is a trademark, which means that no other sneaker creator could legally place that swoosh on their product.

Fair Use

However, trademark protections only go so far. There are situations where non-owners can use trademarks legally.

Most importantly, trademarks are designed to prevent others from profiting from your brand. If you purchase a pair of plain sneakers and draw a swoosh on them with a Sharpie, you aren’t profiting in any way. Furthermore, no reasonable party would believe that you legitimately own the swoosh trademark.

Fair use is slightly different. It allows you to potentially use someone else’s trademark in a way that earns you money. However, you can’t be using it in a way that makes others think you own the trademark. The following are some examples of fair use.

Parody

An excellent example of a parody trademark appears in the movie “Coming to America.” In the film, the main character works at a restaurant called McDowell’s. The name and imagery are intended to look similar to McDonald’s while being explicitly different. There are enough differences that no consumer would mistake them as being the same, and most would understand it was intended as a joke.

Comparative Advertising

For years, Pepsi ran ads where people took blind taste tests between Coke and Pepsi. While the ads never mentioned Coke by name, it would have been perfectly legal to do so. As long as none of the claims made are deceptive, you can use another’s trademark in comparative advertising.

Reviews

Reviewing a product almost necessitates mentioning it by name. Typically, video reviews will show the product or a trademark for the product just to avoid confusion. This example is fair use, even if the reviewer is receiving compensation for the review they created.

New Reports

Can you imagine how difficult it would be to share news stories if you couldn’t include trademarks in your reporting? That would be especially frustrating if you were trying to report on a defective product. In that case, it would be in the public interest to show the trademark.

Similar to comparative advertising, any type of news story, even a negative one, can use the trademarks of a product or service. The only stipulation is that the information presented must be accurate.

Discuss Your Options With a Lawyer Before Filing a Trademark Infringement Lawsuit

Fair use laws offer the general public many options for using a trademark legally. This can be true even in situations where that use may result in compensation.

Before filing a trademark infringement lawsuit, which may not get the results you want, discuss your case with an experienced trademark lawyer like those at the Sul Lee Law Firm in Dallas, TX. We can help you determine whether you have a case and whether litigation is your best option.

About the Author
J. Spencer Young is a Senior Associate Attorney at Sul Lee Law Firm. In assisting clients to obtain the best possible result, Spencer takes pride in working with clients and not just for them. Spencer combines his past work experience, an empathetic understanding, and an outside-the-box, yet practical approach to attack problems head-on. Born and raised in the heart of West Texas, Spencer attended the University of Texas at Austin for his undergraduate studies where he graduated with a Bachelor of Arts degree in government. Thereafter, Spencer attended Texas Tech School of Law, where he graduated in 2019. Spencer served as president of Texas Tech School of Law’s Student Bar Association and as a Board Member of the Board of Barristers. He also practiced in the School’s pro bono Civil Practice Clinic and was an active member of Texas Tech’s advocacy program. His article, You Signed What With Whom? A Comparative Analysis of the Assignability of Covenants Not to Compete was selected for publication as in Volume VI of the Tech Law Business and Bankruptcy Journal. During his time in Lubbock, Spencer also graduated with his Master in Business Administration from Texas Tech Rawls College of Business.