Trademark

An important question for bloggers, citizen media creators, and other online publishers is whether trademark law limits their ability to engage in reporting, commentary, criticism, and other forms of political, social, and artistic expression. There is a threat, should trademark law become too robust, that companies and other trademark holders might use it to silence commentary, criticism, and unfavorable reporting. Such a "right to control language" would offend the First Amendment and seriously undermine the quality of public debate on issues of fundamental importance. The good news is that courts have consistently protected the public's right to use the trademarks of others in order to engage in criticism, commentary, news reporting and other forms of noncommercial expression. As long as what you're doing is really commentary, criticism, or reporting (etc.), and not a surreptitious attempt to sell goods or services, or to deceptively attract customers or readers you otherwise would not have had, you should be able to defeat a trademark claim brought against you. The bad news is that the law relating to this intersection of trademark law and free expression is complex and confusing. Neither Congress nor the courts have developed a simple and clear rule that protects your rights to use the trademarks of others for free speech purposes; instead they've developed a complex array of defenses to trademark claims that even lawyers find difficult to untangle. This makes it hard for a defendant to get a trademark lawsuit dismissed quickly with little expense, and it leaves bloggers and citizen media creators vulnerable to intimidation through the unscrupulous use of cease-and-desist letters.

It is easy to become the owner of a trademark. You simply need to use the trademark in commerce in connection with a good or service. Most citizen media creators will probably use a trademark in connection with a service -- the service of providing online publishing or creating an interactive online community or the like. Once you've gotten this far, you "own" the trademark in the sense that you have the right to use it in commerce with the specific good or service in question and to exclude others from doing so, as long as your use is not confusingly similar to or dilutive of another individual's or company's prior use of the trademark. For that reason, it is critically important that you do an effective search of existing trademarks before you adopt one in connection with your online services. Please see our section on searching for the trademarks of others for details. For more information on how to acquire trademark rights, see Sarah Bird's excellent post, Trademark Basics: Be First in Your Market, Be Distinctive, and Don't Confuse the Consumer.   read more »

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.   read more »

A trademark is a word, phrase, symbol or other indicator that identifies the source or sponsorship of goods or services. If an individual, business, or other organization uses a trademark to sell or promote its goods or services, then it can gain the right to use the trademark and to exclude others from using the trademark in connection with similar goods or services. Owners of famous trademarks, like "Windows," "McDonald's," or "Google," may also stop others from using them in connection with dissimilar goods or services. Trademark law is a branch of intellectual property law that is governed by both federal and state laws. By far the most important trademark law is the federal Lanham Act; because state laws generally follow the Lanham Act, this guide focuses on it exclusively.

A basic understanding of trademark law is important to your online activities for two reasons. First, as a provider of goods or services (e.g., online publishing, educating the public, news reporting), you may want to use trademarks to identify your work to the consuming public. In that case, you'll want to understand how to protect your legal rights, so that others do not unfairly take advantage of your reputation and the positive association you've built up between your trademark(s) and your work. Second, you should understand how you can properly make use of someone else’s trademark for purposes of news reporting, commentary, criticism, and like activities. This overview page and the more detailed sections that follow will help you get a grip on both of these important aspects of trademark law.   read more »