Did You Just Inadvertently Violate Trademark Law?
By Procopio Partner Barry F. Soalt
We’re all digital communicators today, whether you’re an advertising firm account manager, a corporate marketing executive, or simply someone posting your latest insight on Facebook. What we often fail to realize, however, is how when we communicate with the world we regularly run the risk of potential intellectual property infringement.
You may have heard some warnings about inadvertent copyright violations, including the need for explicit permission from the owner of a photograph to make use of it. Or perhaps you’ve learned that your continued use of an image acquired from a stock image company has now become an infringement, because your present use exceeds the scope of the initially acquired license. You may also be aware of the myth that use of less than some arbitrary percentage of a copyrighted work makes the use legal. What you likely aren’t fully aware of are the many ways in which your online communications could run afoul of trademark law.
So what is a trademark? It’s generally a word, name, symbol or device used in trade to indicate the source of goods and distinguish them from goods of others. A service mark is the same as a trademark, but identifies the source of a service rather than a product. Trademark rights can arise by use (“common law use”) and/or registration. Registration of trademarks is done on a country by country basis, worldwide. Most owners of marks around the world register them with government agencies—in the U.S. it’s the U.S. Patent and Trademark Office. Trademark registrations can be maintained for as long as the owner continues to make appropriate use of the mark, complies with requirements to maintain/renew the registration, and seeks to enforce it.
Inadvertent trademark infringement is of critical importance to potentially hundreds of millions of people, namely bloggers. There are more than 350 million blogs registered on Tumblr and more than 75 million blogs and websites using WordPress. Of course, we can’t forget the more than 2 billion active monthly Facebook users, or the millions more posting content to LinkedIn or Twitter. In a sense, we’re all publishers now, and all subject to avoiding violation of the trademark rights of others, including registered and unregistered trademark rights.
You might be surprised how many expressions can comprise the subject of registered marks. Trademark rights can cover a company’s name and logo, of course, as well as its product brand names and services. Other expressions that can be trademarked include advertising phrases and by-lines, when both are used in a trademark sense, such as Nike’s “Just Do it,” or sounds, such as NBC’s three-note chime. Those you probably immediately associate with the owners, but there are numerous trademarks that are not widely recognizable, but carry the same legal rights; for example, the uniform and distinctive trade dress look and feel of a restaurant theme or retail store layout, such as the Apple Store. Inadvertent violations of trademark rights of others can also arise from a failure to conduct an appropriate clearance search; adopting an expression that creates a likelihood of confusion with another mark; the misuse of a trademark; and the dilution of the distinctive value of a well-known mark.
Any entrepreneur or marketing professional looking to create and build a brand should start by ensuring a thorough clearance search is conducted on the various elements comprising the brand. Has your mark been searched for a competitor with a product identity similar to yours? Infringement only requires the existence of a “likelihood” of consumer confusion, not actual confusion. How about your logo design, or the shape of the product packaging? And what about that proposed promotional slogan? You might be surprised how often a registered or common law mark exists for what you thought was an original expression.
In conducting trademark clearance, there are instances in which I’ve had to run multiple searches for a client before determining that the company’s proposal was likely clear of conflicts. On occasion, I’ve had to run 10-12 searches before finally clearing a major brand launch or for clearance of concepts created by advertising agencies for their clients. Being proactive in searching up front can help avoid major litigation headaches later, and the financial impact of rebranding midstream. This is particularly important when considering that the U.S. registration process typically takes close to a year before issuance. And foreign registration can be longer and expensive. Don’t sell the screening process short. It is the most important part of the branding process.
A trademark owner has several remedies available when an infringement occurs. Under federal law—the Lanham Act—remedies potentially available in trademark litigation include an injunction against use of the complained-of mark, and other damages sustained by the trademark holder, costs, the infringer’s profits, treble damages and attorneys’ fees. These remedies are cumulative, so risk to the infringer can become substantial.
So what should you do when writing your next blog post? A typical blog or social media user can communicate very well without making use of someone else’s trademark. Avoiding use of trademarks benefits the author as well. You don’t want to mislead viewers of your post into thinking you have a relationship with or are affiliated with the trademark owner, or that you’re sponsored by them.
Intellectual property law extends beyond what you write, however. The very social media handle you’ve chosen could be subject to a trademark infringement suit. If you’ve purchased keyword advertising to promote your product or service with search engines, the visible use of a competitor’s trademark may constitute infringement in certain jurisdictions. You can also be liable if you include someone else’s trademark in online metadata, the text that isn’t visible to a reader of your content but is scanned and read by search engines. The potential for liability differs from country to country.
There are narrow uses of a registered mark that some courts have found permissible. A company may legally, for example, use a competitor’s trademark in certain ways when comparing products. Use of a mark in a fully descriptive manner or in parody—relying upon a humorous difference from the original work to convey contradictory messages—can also be potentially free of liability. But there are no cut-and-dried guidelines, nor absolute freedom from risk of exposure here; the safest approach is always to avoid the use of another’s mark from the outset.
This doesn’t mean you can’t express yourself online, or promote your own product or service. Creative minds are seeking registrations for new trademarks every day, which suggests there are still plenty of original expressions out there. When you’ve run the proper trademark searches and developed a company name, product name, packaging shape, and tagline that are truly yours, you’re free to run with them. And you should promptly consider having your own unique branding registered, to keep competitors from cozying up to your brand identity and to protect yourself from infringement.