Trademark registration

Fair Use of Trademarks (for Mortals)

Navigating Trademark Law: Balancing Fair Use and Avoiding Consumer Confusion.

Fair Use of Trademarks (for Mortals)

The main purpose of trademark law is to avoid consumer confusion about who owns goods or services that are being sold to the public.  The fundamental question in any trademark infringement lawsuit is whether the defendant’s use of a trademark creates a “likelihood of confusion” with the goods or services sold by the plaintiff.  


The first defense in any trademark infringement lawsuit is whether there is a likelihood of confusion regarding whose goods and services the trademark represents.  That is typically what courts are asked to resolve.  

Yet, there are times when it is ok to reference a trademark owned by another person.  For example, writing about a product or service is generally ok if you are reporting on it, commenting on it, or critiquing it.  In these scenarios, consumers will know that you are not selling a competing product or service, so there is no likelihood of confusion.  This is called “fair use” of someone else’s trademark.  

You can reduce the likelihood of being sued for trademark infringement by, for instance,  avoiding a website design that looks like the trademark owner’s website or resembles its product packaging.  And, you should avoid choosing a name, logo or slogan that looks or sounds the same as someone else’s that is selling similar goods or services, or you could be viewed by a court as  trying to confuse the public by stealing your competitor’s name, logo or slogan to further your business. 

In legal speak, there are two types of “fair use.”  

The first type is called “descriptive fair use.”  This defense protects your ability to use ordinary words to describe your own products or services, even if those words happen to be part of someone else’s trademark.  A good example is use of the term “sweet-tart” to describe a cranberry drink despite a company’s name of “SweeTarts” for its candy.  Another example is using the domain name despite a beer company’s name of “Sam Adams” as its trademark for beer.

The second type of “fair use” is called “nominative fair use.”  It protects your ability to use a trademark to refer to a trademark owner or its goods or services for things like reporting, commentary, criticism, parody and comparative advertising. Some examples include a newspaper’s use of the  band name “The Rolling Stones” trademark to create and report on polls asking readers questions about the musical group’s popularity; another newspaper’s use of the trademark “Miami Heat” to report on the team; and a photographer’s use of “Barbie” dolls in a parody to criticize Mattel’s famous toy and the values it represents. Another example could involve using the names of well-known companies to report on lawsuits in which they are involved. 

In a nutshell, you must be careful in selecting a name, logo or slogan to avoid one that looks or sounds like that of a competitor.

If you have questions, contact us or hire a seasoned trademark lawyer and make sure that you get it right!

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