When is it permissible to use or write about a trademark without obtaining permission from the trademark owner? To make writing more realistic, can you use trademarks such "Ford," "Hershey," and "Beanie Baby" in your work without permission? Can a book that is either favorable to or critical of a company or a company’s product line use a trademark of that company without obtaining permission from the trademark owner? Unfortunately, these are not always easy questions to answer. As with other legal issues that involve writing about another party or its property, responses depend upon the specific facts involving the particular use.
Cutting Down on Confusion
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. Ownership of a trademark has the potential to last forever. 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 United States Patent and Trademark Office, while various state laws and "common law" provisions protect state-registered and unregistered trademarks. Trademark law benefits consumers as well as producers 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 (2) the consumer would probably be confused by dual use of the trademark. But the trademark owner’s rights are not absolute since they must coexist with our fundamental right of free expression.
The Lanham Act permits a nonowner 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 to help ensure that trademark owners do not prohibit the use of their marks for the purpose of description or identification. Fair use or nominative use may occur when 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 products or services and therefore is not being used to confuse the reader. Generally, using 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 it does not confuse the reader about who actually owns the trademark. Trademark law also permits content in nonfiction works that is favorable to and/or critical of a trademark owner’s products or services. In this case, it is important to use the trademark only to describe or identify the trademark owner’s products or services and not to confuse the reader as to the actual provider of the trademark owner’s products or services. 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." In other words, use of a trademark will be considered a non-confusing "nominative use" when it meets the following requirements:
- the author’s use of the mark must accurately describe the trademark owner’s product or service
- the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work
- the author’s use must be in good faith
- the trademark owner’s product or service must be one that is not readily identifiable without the use of the trademark
- the author must use only as much of the trademark as is reasonably necessary to identify the trademark owner’s products or services
- the author must do nothing that would, in conjunction with the trademark, suggest to the reader sponsorship or endorsement by the trademark owner.
One difficulty with the fair use or nominative use defense is that "overuse" of another’s trademark, even in a descriptive sense, may not be considered fair use since repeated usage could confuse consumers about a connection to or sponsorship with the trademark owner. And another is a general lack of legal certainty to rely upon. 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 case.
If you’re contemplating the use of a trademark in a book, ask yourself the following questions:
1. Is the use of the trademark incidental?
It should be. Avoid giving the appearance that the trademark owner and author/publisher are associates of one another.
2. Is the use contributing to the dilution of the trademark?
Dilution is the legal concept where a "famous" trademark that is so frequently used becomes generic in the mind of the buying public. A trademark that becomes a generic term loses its trademark protection. Common examples of dilution are the trademarks Kleenex and Band-Aid, which have come to refer to all tissues and adhesive bandages. Whenever possible, use a generic term instead of a trademark.
3. Is the use of the trademark disparaging?
Be careful if you decide to place a product or service in a "bad light." You should not disparage a product or service unless you’re writing a nonfiction critical evaluation of it. Naming a food product in a novel and implying that it makes people sick would be disparagement.
4. Does your use turn the trademark into a noun or verb or does it turn the mark into the plural form?
The improper use of a trademark could weaken the protection of the mark. Trademarks are adjectives; they should not be used as nouns or verbs. If a trademark is in its singular form, it should not be used in its plural form. Follow each use of the trademark with the generic noun–e.g., use the word "cereal" after the trademark "Cheerios."
5. Is the trademark recognizable as such by its style?
The trademark should distinctly stand out from the text surrounding it. In print or electronic media, marks should be placed in quotes, capitalized, underlined, italicized, or boldfaced. The trademark should never be used by an author in the identical color, style, or type font as that associated with the trademark owner. You may wish to take two additional precautions when using another’s trademark in a book.
Include a disclaimer and a list of each of the trademarks used in the work along with its TM or ® symbol and the name of its owner on the book’s copyright notice page.
The disclaimer should state, at a minimum, the name of the owner of the trademark, that the trademark is being used without permission, and that the publication of the trademark is not authorized by, associated with, or sponsored by the trademark owner.
Obtain insurance to protect against potential infringement claims.
Authors and publishers can get "Media Risks Insurance" or "Media Perils Insurance" or "Errors and Omissions Insurance" to cover many of the legal risks associated with publishing. Generally, in addition to providing protection against trademark infringement, trade libel, and product disparagement claims, this type of insurance policy will provide protection against claims involving copyright infringement, right of privacy and publicity, and idea misappropriation that may arise from the preparation, publication, distribution, and promotion of a written work.
This article is not legal advice. You should consult an attorney if you have legal questions that relate to your specific publishing issues and projects.