When You Don't Need Permission to Use Another Owner's Trademarks

By law, you need not request permission to use a trademark belonging to another if it is for an editorial or informational use.

By , Attorney | Updated By Brian Farkas, Attorney

Trademark law protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services in the marketplace. When a trademark is registered with the U.S. Patent & Trademark Office (USPTO), the trademark owner can enforce its mark across the United States.

However, trademark "ownership" is not absolute. Are there any circumstances under which you would be permitted to use a trademark without the prior permission of its owner? The short answer is that you can use a trademark belonging to another person or company if you use the mark for:

  • informational or editorial purposes to identify specific products and services, or
  • if your use is part of an accurate comparative product statement.

Basics of Trademark Infringement

Trademark infringement is the unauthorized use of another person or company's registered trademark. For example, if you wanted to start making electronic gadgets and decided to stamp Apple's recognizable fruit-shaped logo onto your products, this would be fairly obvious trademark infringement. Customers are likely to be confused about the origin of the goods, and you would essentially be profiting from the goodwill that Apple has generated over many decades.

Put differently, consumers would mistakenly buy your product assuming it was the "real" Apple product. In such a situation, Apple could sue for trademark infringement. Not only could it win a court order requiring that you stop infringing, but it could also win money damages.

Statutory Exception Within Trademark Infringement Law

The Lanham Act is the statute that largely controls federal trademark law. One provision of the law allows for certain uses of trademarks. Under 15 U.S.C. § 1115(b)(4), one can assert a number of defenses against a claim of trademark infringement.
These include situations where "the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin...."
In other words, the use of a trademark does not necessarily qualify as an infringement if the user is not actually using the trademark as a mark. When would you not be using a trademark as a mark?
Consider a scenario in which you are writing an article about Apple. Your reference to "Apple" in the headline and body of the article uses the trademark, but you are not using the trademark for the sake of selling or identifying computers. Rather, you are using the trademark for non-mark purposes—in this case, for commentary or news reporting.

Informational Uses of a Trademark Are Permissible

Informational (or "editorial") uses of a trademark do not require permission from its owner. These are uses that inform, educate, or express opinions protected under the First Amendment of the United States Constitution—freedom of speech and of the press.

For example, permission is not required to use the Chevrolet logo in an article describing Chevrolet trucks, even if the article is critical of the company. You could (obviously) use the word mark "Chevrolet" as well as the famous golden "plus sign" logo mark. This would be true whether you were publishing a news article or an article in an academic journal.

Similarly, if you were making a documentary film on the history of American trucks, you would not need permission to include the Chevrolet logo. However, the use of the logo must have some relevance to the work. For example, it would not be wise to publish an article critical of overseas auto manufacturing practices and include the Chevrolet logo unless Chevrolet was, in fact, mentioned in the article.

Finally, you are also permitted to use trademarks for purposes of parody or commentary. For example, if you were writing a skit about how young people are always on their phones, you could glue the Samsung logo onto the actors' prop phones without fearing a claim of trademark infringement.

Using Trademarks for Comparison

Under trademark law (specifically, 15 U.S.C. § 1115(b)(4)), you are generally permitted to use a trademark as a means for comparison. For example, you could create a newspaper advertisement that incorporates your mark and your competitors' marks in order to describe a difference between the companies.

Imagine that you make a type of coffee that you believe to be tastier and less expensive than any other company's product. You could include on your advertisement the logo of Starbucks along with the price of its comparable drink from another coffee company.

Two important caveats apply here, however. First, you may not alter your competitors' trademarks in a way that is derogatory or misleading. (For example, you cannot dress up as Ronald McDonald and make him look unattractive!) These activities could subject you to a claim of trademark disparagement.

Second, any comparative information that you use must be accurate. While subjective statements (which coffee tastes better, which product is easier to use, and so forth) are difficult to judge for accuracy, factual information is not.

So if you say, for instance, that Starbucks charges $3.50 for a 12-ounce black coffee, 20% more than competitors, that fact needs to be demonstrably true. If you say that Apple uses deadly chemicals in its iPhones that could leak into users' hands, that also would need to be true.

In other words, any lies associated with your use of a competitor's trademark could subject you up to a claim of trademark infringement or disparagement. Assuming that your statements about a competitor are true, however, trademark law does provide some degree of leeway to use registered marks, even without permission.

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