How To Use Trademarks In Advertisements?

You must have come across at least one famous trademark across the innumerable blogs and advertisements online. You yourself must have also considered using or used a trademark while blogging, reviewing, or selling a product associated with the mark. But can you use trademarks in advertisements? The answer is yes.

The advent of digital media has threatened the rights of the trademark owner. With every business and individual going online to sell, advertise, and voice their opinions, trademark owner’s exclusive rights to the mark and the goodwill of the brand face risk. To prevent them from losing the exclusivity, there are certain restrictions on the use of trademarks in advertisements. Although you can use trademarks in advertisements, you can do it only in certain ways.

The Nominative Fair Use Principle

The online medium has become famous for reviewing, sharing opinions, conducting surveys, criticizing, blogging, and even selling used products. All these forms of content can have popular brand names, logos or product names that are registered trademarks. Beneficial discourses, opinions, and reviews would never be available if people are under the threat of infringement. The law allows the public to use trademarks in advertisements under the Nominative Fair Use principle.

Infringement occurs when the trademark is used by someone without the owner’s permission in relation to the goods and services associated with it. The term ‘use’ here has a prime importance. If the trademark is used without permission for commercial purposes or to profit from it, then it can be considered infringement. A mere mention of the mark does not constitute infringement. This is exactly the basis of the Nominative Fair Use principle.

The use of a trademark under the Nominative Fair Use must satisfy three conditions:

• The trademark owner, product or service would not be identifiable without the use of the mark.
• The use of the mark must be limited to that of identification of the owner, product or service through that use.
• You must not use the mark to show any sponsorship or endorsement by the trademark owner, especially when that is not the case.

In simple words, if you do not use it for profit or with an intention to harm the brand, then it does not constitute infringement. For example, if an online survey is conducted of a new McDonald’s outlet for non-commercial purpose, it will have to use the brand’s name (trademark) making it valid under nominative fair use. If you have an Apple phone and wish to sell it through an online portal, the mere mention of the trademarked name would not constitute infringement. Likewise, a mention of a new product launched by Google cannot constitute infringement and is considered a nominative fair use.

The problem occurs when the advertisement can be done without using the trademark but you still use it. For example, a sporting brand runs an advertisement to attract people using a NY Knicks logo could be problematic. This is because the advertisement could run without using the mark and the mark’s use suggests it is used for profiting from it illegally. Individuals can even use trademarks for criticism and or to create a group of fans. Comparative advertising where two brands are compared also permits the use of a trademark. But since this kind of advertising poses a risk of depreciating the brand’s goodwill, it is highly controversial.

If you do wish to run a comparative advertising campaign with a competitor, there is one way to do so in a safe manner. You substitute the competitor’s name with a generic and unbranded name, yet make it obvious that it’s the competitor. Confusing? The Get a Mac campaign serves as a good example, where Apple compared Windows and the Mac system in a smart, yet a legally safe manner. The term PC (personal computer) is virtually synonymous with Windows and in the campaign the Mac was compared with PC. Hence, they said Microsoft Windows, without saying it at all.

Although the nominative fair use doctrine supports the use of trademarks in advertisements, you must exercise caution in doing so. A single mistake can result in a costly infringement lawsuit. Consulting a trademark agent can offer clarity on the subject to help you prevent infringing trademark and also protecting your marks.