When Unauthorized Use Is Not Trademark Infringement

Trademarks are valuable assets that help businesses to establish and protect their brand identity and reputation in the market. However, trademarks are not absolute rights that grant the owners unlimited control over how their marks are used by others. Sometimes, unauthorized use of a trademark may not constitute trademark infringement if it falls under certain exceptions or defenses. In this blog post, we will explain what trademark infringement is, and when unauthorized use is not trademark infringement.

the back of a Macbook with several stickers of various brands on it

Trademarks are valuable assets that help businesses to establish and protect their brand identity and reputation in the market. However, trademarks are not absolute rights that grant the owners unlimited control over how their marks are used by others. Sometimes, unauthorized use of a trademark may not constitute trademark infringement if it falls under certain exceptions or defenses. In this blog post, we will explain what trademark infringement is, and when unauthorized use is not trademark infringement.

What is trademark infringement?

Trademark infringement is the unauthorized use of a trademark that is likely to cause confusion, deception, or mistake among consumers as to the source, origin, affiliation, or sponsorship of the goods or services. Trademark infringement can harm the trademark owner’s goodwill and reputation, and can mislead or deceive consumers into buying inferior or counterfeit products or services.

To prove trademark infringement, the trademark owner must show that:

  • They have a valid and protectable trademark;

  • The alleged infringer used a mark that is identical or similar to their trademark;

  • The alleged infringer used the mark in commerce in connection with goods or services that are related to those covered by their trademark;

  • The alleged infringer’s use of the mark is likely to cause confusion among consumers as to the source, origin, affiliation, or sponsorship of the goods or services.

If the trademark owner can prove these elements, they may be entitled to various remedies, such as injunctions, damages, profits, attorney’s fees, and costs.

When unauthorized use is not trademark infringement

However, not all unauthorized use of a trademark constitutes trademark infringement. There are some exceptions or defenses that may allow a person to use a trademark without permission from the owner and without liability for infringement. Some of these exceptions or defenses are:

Fair use

Fair use is a doctrine that allows a person to use a trademark for purposes of criticism, comment, news reporting, teaching, scholarship, research, parody, satire, or comparative advertising. Fair use does not infringe the trademark owner’s rights because it does not create confusion among consumers as to the source or sponsorship of the goods or services. Rather, it serves a public interest in promoting free speech and expression.

For example, a newspaper may use a trademark to report on a news story involving the trademark owner or their products or services. A blogger may use a trademark to criticize or comment on the quality or performance of the products or services. A competitor may use a trademark to compare their products or services with those of the trademark owner. These uses are considered fair use and do not infringe the trademark owner’s rights.

However, fair use has some limitations and conditions. To qualify as fair use, the person must:

  • Use the trademark in good faith and in a truthful manner;

  • Use the trademark only as much as necessary for the intended purpose;

  • Use the trademark in a way that does not imply endorsement or affiliation by the trademark owner;

  • Use the trademark in a way that does not tarnish or dilute the distinctiveness of the trademark.

If the person fails to meet these conditions, their use may not be considered fair use and may constitute trademark infringement.

Functional use

Functional use is another doctrine that allows a person to use a trademark that describes a feature or function of their products or services. Functional use does not infringe the trademark owner’s rights because it does not identify or distinguish the source of the products or services. Rather, it informs consumers about what the products or services do or how they work.

For example, a company may use a trademark that describes the shape or color or material or ingredient or quality or quantity or size or weight or speed or performance or price or benefit of their products or services. These uses are considered functional use and do not infringe the trademark owner’s rights.

However, functional use also has some limitations and conditions. To qualify as functional use, the person must:

  • Use the trademark in a descriptive and non-trademark sense;

  • Use the trademark only as much as necessary for the intended purpose;

  • Use the trademark in a way that does not imply endorsement or affiliation by the trademark owner;

  • Use the trademark in a way that does not tarnish or dilute the distinctiveness of the trademark.

If the person fails to meet these conditions, their use may not be considered functional use and may constitute trademark infringement.

Conclusion

Trademark infringement is a serious offense that can harm both the trademark owner and consumers. However, not all unauthorized use of a trademark constitutes trademark infringement. There are some exceptions or defenses that may allow a person to use a trademark without permission from the owner and without liability for infringement. Some of these exceptions or defenses are fair use and functional use. However, these exceptions or defenses have some limitations and conditions that must be met. Otherwise, the use may still be considered infringing. If you need help with determining whether your use of a trademark is authorized or not, you may want to consult a professional trademark attorney who can advise you on your rights and obligations.