Trademark law applies to the use of words, phrases, symbols, slogans and other "marks" to identify the source or sponsorship of goods or services. The Lanham Act, which is the federal statute that covers trademark law, makes it unlawful for you to use a trademark in a manner that confuses consumers about the source or sponsorship of goods or services. Creating this kind of consumer confusion is called trademark infringement. Trademark law's primary purpose is to protect consumers from confusion in making purchasing decisions, and it does not protect against confusion generally. If you use a trademark in a way that does not create consumer confusion, you cannot be held liable for trademark infringement.
But, in 1996, Congress expanded federal trademark law so that it now covers some uses of trademarks that do not create consumer confusion. The federal dilution statute, found at 15 U.S.C. § 1125(c), gives the owner of a "famous" trademark the ability to bring a federal lawsuit against someone for trademark dilution. Trademark dilution occurs when someone other than the rightful owner of a famous mark uses it in a manner that diminishes its power to identify the trademark owner's goods or services regardless of consumer confusion about source or sponsorship. The dilution statute does not apply to noncommercial uses of a famous trademark, such as for news reporting, criticism, commentary, and parody.
The following sections go into greater detail to explain what kinds of things can serve as a trademark, and what activities qualify as trademark infringement and trademark dilution.
What Is A Trademark?
A "trademark" is an intellectual property right in a particular "mark" used to used to identify the source or sponsor of a good or service. (Don't be intimidated by the word "mark" -- it is just a generic term for the various things that can qualify as a trademark, which we are about to describe.) A number of things can serve as a trademark (from Chilling Effects):
- names (such as company names, product names);
- domain names, if they label a product or service;
- slogans or phrases;
- product design; and
- product packaging (known as "trade dress").
Other types of trademarks are possible -- the key element is that the word, phrase, symbol, or design element act as a source-identifier for goods or services. You can think of it as very similar, if not identical, to the concept of branding. A trademark right is limited. It only applies to those goods or services actually identified with the trademark. A valid trademark entitles the trademark owner to stop others from selling similar goods or services using the trademark or confusingly similar trademarks; it does not entitle a trademark owner to completely lock up a word, phrase, or image and remove it from society's common vocabulary.
Common examples of trademarks include the word "Kodak" for cameras and the familiar Apple logo for computers, music-downloading services, iPhones (another trademark), and iPods (yet another). Other examples include the Nike "swoosh" for sneakers, the "golden arches" for fast food, the Starbucks mermaid for coffee, and slogans like "There are some things money can't buy -- for everything else there's MasterCard" and "Priceless" for credit-card services. A good example of trade dress is the the particular shape of a Coca-Cola glass soda bottle. On the Internet, trademark protection may apply to domain names, websites names, website logos, and the "total image" of a website, among other things. Again, the essential ingredient for trademark protection is that the name, phrase, symbol, or whatever serve to identify the source of a good or service. Some common Internet trademarks include the word "gmail" and domain "gmail.com" for email services, the domain "nytimes.com" for online news, the name "TechCrunch" for electronic publishing services, and the name "eBay" and its familiar logo for online auction services. In addition, website operators can protect the overall "look" of their websites as trade dress, if they can establish that consumers uniquely associate that "look" with their goods or services.
Not all words, phrases, symbols, and the like can serve as a trademark, however. The primary requirement for a valid trademark is that the mark be distinctive. For details on what kinds of words and phrases qualify as distinctive, see Naming Your Business: Choosing A Name Capable of Trademark Protection. Although the discussion focuses on names, the same points apply to other types of trademarks like symbols, words, and slogans.
For more information on registering and acquiring ownership of a trademark, please see the Trademark Ownership section.
Trademark Infringement and Dilution
Trademark law gives trademark owners the ability to bring a lawsuit for trademark infringement and trademark dilution. These two distinct legal claims are discussed below. Trademark law also creates a legal claim for cybersquatting, which is discussed separately in the Cybersquatting section of this guide.
An owner of a valid trademark may sue an individual or company for trademark infringement when that individual or company uses an identical or confusingly similar mark in connection with goods or services. The Lanham Act contains two statutory provisions authorizing an infringement lawsuit. 15 U.S.C. § 1114 gives the owner of a registered trademark the right to sue for infringement of that trademark. 15 U.S.C. § 1125(a) gives the owner of an unregistered trademark the right to sue for infringement of that trademark. For details on how trademark ownership arises via registration and otherwise, see Trademark Ownership. A trademark owner that wins a trademark infringement lawsuit can recover money damages and get an injunction barring the defendant from continuing its infringement. A court may also force a losing defendant to pay the trademark owner's attorneys' fees under "exceptional circumstances" -- basically, when the court determines that the defendant willfully or intentionally infringed the trademark.
The key to an infringement claim is a likelihood of confusion between the defendant's use of a mark and the trademark owner's use of its trademark. While different courts use slightly different standards to make this comparison, the factors most commonly used to determine the likelihood of confusion are as follows:
- the strength of the plaintiff's mark;
- the similarity of the plaintiff's and the defendant's goods or services;
- the similarity of the trademark used by the plaintiff and the trademark used by the defendant;
- the marketing channels used for their respective goods or services;
- the degree of care likely exercised by the purchaser of their respective goods or services;
- the defendant's intent in selecting the trademark;
- the likelihood of expansion of their respective product or service lines; and
- evidence of actual confusion.
The more similar the marks used, the more likely that consumers will be confused. In addition, confusion tends to arise when the plaintiff's and the defendant's goods or services are similar and they use similar marketing channels. The rationale is that, if the parties' goods or services are dissimilar, the ordinary consumer will not be confused about whether the goods or services come from the same source. For example, given the existence of Pepsi brand soda, someone selling soft drinks under a slightly different brand name, such as "Pipsi" or "Peps," would almost certainly lose a trademark infringement lawsuit. On the other hand, a company selling pet grooming services under the "Pipsi" or "Peps" brand name would be more likely to successfully defend against an infringement suit because ordinary consumers would probably not assume that Pepsi had moved into the pet grooming business. Needless to say, this example is a simplification of what you might see in a real case. The multi-factor test can result in complex line drawing, and it is often difficult to tell whether a certain use of a trademark will or will not infringe a trademark owner's rights. This is one of the primary reasons why trademark lawsuits are expensive to defend.
When it comes to online publishing, there are a few points to remember. First, a plaintiff cannot win an infringement lawsuit without proving that the defendant used a confusingly similar mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services. If you operate a purely noncommercial website (i.e., you do not sell any goods or services, and you don't host advertising or solicit donations in connection with your services), then you may be able to defeat a lawsuit without even getting to the likelihood of confusion question. We discuss this issue and other possible defenses to an infringement lawsuit in the Using the Trademarks of Others section.
Second, even if you do sell advertising or solicit donations, you primarily need to worry only about trademarks used by businesses or individuals doing work that is similar to yours. Before adopting a trademark (whether a domain name, a title for your blog, a logo, or whatever), you should look around at other websites doing work similar to yours to see if they are using the same or similar trademark. When you consider whether something is "work similar to yours," take a broad view. This could be anything from a journalism site, a blog, some kind of interactive web service, something tech-y with a heavy online presence, etc. Keep in mind that there is little certainty in this area, and you will just have to do your best in making the call. There is one important caveat. As discussed below, owners of famous trademarks can protect their trademarks with a dilution claim, even if there is no likelihood of confusion. So you may want to avoid using famous trademarks altogether.
Third, if you use a trademark owner's trademark in the process of criticizing, commenting, or reporting on the trademark owner, its activities, or its goods or services, you will have a good argument that no reasonable consumer would be confused into thinking that the trademark owner is the source or sponsor of your work. Take news reporting, it stretches credulity to imagine that consumers get confused about source or sponsorship when the New York Times reports on Wal-Mart's most recent earnings release or Ford's new hybrid car. The lack of confusion should be even more clear when it comes to criticism. For example, in Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), the United States Court of Appeals held that there was no likelihood of confusion between a website criticizing the religious and social views of Reverend Jerry Falwell and the Reverend's own services, even when the website made use of the domain name "www.fallwell.com." The court noted, in relevant part: "After even a quick glance at the content of the website at www.fallwell.com, no one seeking Reverend Falwell's guidance would be misled by the domain name-www.fallwell.com-into believing Reverend Falwell authorized the content of that website. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible."
An owner of a famous trademark may sue an individual or company for trademark dilution when that company or individual uses its trademark in connection with goods or services in a way that is likely to dilute it. See 15 U.S.C. § 1125(c). A trademark owner that wins a trademark dilution lawsuit can get an injunction barring the defendant from continuing its dilution, and in rare circumstances it can obtain money damages and attorneys' fees. To make out its case, the trademark owner need not show that the defendant's use of its trademark causes a likelihood of consumer confusion. The parties to the lawsuit need not be in competition, and the goods or services in question need not be similar. Importantly, the trademark in question must be "famous," which means pretty much what it sounds like. If an ordinary person would recognize a trademark as a household name, then it probably qualifies as famous.
There are two distinct types of dilution, blurring and tarnishment. Blurring refers to the loss of uniqueness of a trademark because of an association with goods or services other than those of the trademark owner. When Congress passed the statute, it indicated that the law would apply to the sale or advertisement of goods like hypothetical "Kodak Pianos," "Buick Aspirin," and "Dupont Shoes." Note that blurring can occur even if no reasonable consumer would believe that Kodak had started making pianos or that Buick had started making aspirin. Blurring is an extremely expansive concept -- it could encompass almost any unauthorized use of a famous trademark, so long as the defendant used the mark to identify its own goods or services, rather than to engage in commentary, criticism, news reporting, and like activities. Tarnishment occurs when the defendant's use of the famous trademark harms its image in the minds of consumes, such as by associating it with immoral or scandalous goods or services. For example, the lingerie seller Victoria's Secret sued a sex shop called "Victor's Little Secret" for tarnishing its famous trademark.
Because of the potential breadth of trademark dilution, Congress wanted to ensure that trademark owners could not use the law to silence speech protected by the First Amendment. To this end, Congress created specific exceptions to the dilution statute for the following uses of a trademark:
- any fair use of a famous mark in connection with comparative advertising or parody, criticism, or commentary upon the famous mark owner or the goods or services of the famous mark owner;
- all forms of news reporting and news commentary; and
- any noncommercial use of a mark. See 15 U.S.C. § 1125(c)(3)
These exclusions provide a good deal of protection for citizen media creators, but the courts have yet to provide exact or consistent meanings for many of these terms, such as "fair use", "news reporting," and "noncommercial use." In the most favorable cases, courts have determined that the dilution law does not apply to any speech that does more than propose a commercial transaction. See, e.g., Mattel Inc. v. MCA Records, 296 F.2d 894, 906-07 (9th Cir. 2002); Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 812 (9th Cir. 2003); Smith v. Wal-Mart Stores, No. 1:06-cv-526-TCB, slip op., at 81-83 (N.D. Ga. Mar. 20, 2008). Under this view, you could not be held liable for using a famous mark in nearly all forms of criticism, commentary, parody, and news reporting. But not all courts have embraced this view. We take up these issues and other defenses to trademark infringement and dilution in the Using the Trademarks of Others section.