How to Get Permission to Use a Trademark Legally

Key Takeaways

• Trademark permission (or licensing) allows individuals or businesses to use a trademark legally with the owner's approval.
• Legal Risks: Unauthorized use of a trademark can result in legal action, fines, and business disruption.
• Exceptions: Fair use, comparative use, nominative use, and parody are exceptions to trademark permission.
• How to Get Permission: Identify the owner, negotiate a licensing agreement, and obtain explicit permission.
• Common Mistakes: Not understanding when permission is required or failing to comply with licensing agreements.
• Intellectual Property Protection: Trademark registration strengthens legal claims against infringement.

What Is Trademark Permission?

Trademark permission allows a company or individual to legally use a trademark held by another person or business. Getting trademark permission from a trademark holder can help your company increase sales, generate brand awareness, and increase positive customer associations with your product or service. But if done illegally, using someone else's trademark puts you at serious risk for legal trouble.

Trademark permission, also called licensing, exists to allow others to use a trademark, a word or mark that exclusively identifies one person or company as the source of a product or service. When granting proper permission, the trademark owner can take advantage of other benefits as well. Perhaps these benefits come in the form of profits for every item sold under the trademark permission agreement or a flat fee for using the trademark.

People or businesses who want to legally use a trademark can face the following situations:

• You may receive trademark permission without having to pay anything. Some companies choose to allow their trademarked logos and symbols to be used for free. But this practice is less common, and most trademark permission comes at a cost.
• Trademark permission may come about when a business files for trademark protection but gets denied because the mark is too similar to an existing trademark. The person or company that filed for the trademark may ask for permission to use the mark that is already in the registry.

When you're working to get trademark permission, you must go to whoever owns the trademark. This owner could be a company or a person, but if more than one person owns the rights to the trademark, all people involved must agree to the trademark's use.

Exceptions

Some trademark uses don't require trademark permission.

• When you're presenting information that educates, informs, or expresses an opinion, you don't have to get permission to use the trademark. For example, if you are writing a description for a new Chevrolet truck for your auto dealership blog, you don't need permission from the manufacturer to mention the trademarked name Chevrolet. You can also include the logo in the text without facing legal penalties.
• Another exception involves the fair use of the trademark. U.S. trademark law includes fair use, which means that a person or business using the trademark can use someone else's trademark under specific conditions. One use is also called descriptive use, since the word or words may describe something else in a general way. One example of fair use is a cereal manufacturer that includes the words all bran on the box. The company might simply be trying to show the consumer that the product contains bran and nothing else. But Kellogg's owns a trademark on All Bran, a name of one of its cereals. A third-party manufacturer might avoid legal trouble if the company makes clear that fair use connects with the words all and bran together.
• A parody is another example of an exception to the trademark permission law. If someone imitates the trademark in a comical way, this person doesn't need trademark permission. An example of a parody is a popular newspaper in the San Francisco Bay Area called The San Francisco Chomical. The established newspaper in the area is The San Francisco Chronicle, so this parody clearly pokes friendly fun at the title. Use caution when parodying a trademark. If someone believes your parody is offensive or hurtful, then the trademark owner could take legal action. Avoid confusion, but don't make your parody too similar to the trademarked product or company. A consumer should clearly see the differences and not confuse the two. Also, First Amendment rights give people broad rights to parody, as long as the parody makes clear that the parody is a criticism or commentary.
• Comparative use is another exception, which allows a competitor to use your trademark to sell its own products or services. You may remember when Pepsi launched the Pepsi Challenge to pit its drinks against those drinks from Coca-Cola. As long as the comparative use doesn't make false claims, mislead customers, or use a competitor's name to tarnish or harm its reputation, this use is a legal way to use a trademark without permission.
• A company may also use your trademark in marketing material, which is legal to a certain extent. For example, if a tool shop specializes in the repair of Honda lawnmowers, the shop can use Honda in its marketing pieces without permission. But if the brochure implies a relationship between the repair shop and the manufacturer, the trademark owner could have legal rights to sue.
• Nominative use allows people or businesses to use a trademarked name to refer to a person or business by name. Nominative use allows some limited usage rights for a logo but does not include using a logo to imply an association that doesn't exist. For example, while someone can't sell T-shirts with a band's name on the front of the shirt, a person can create and sell memberships for an unauthorized fan club of the band.
• Descriptive use of a word as a trademark has some of its own share of special considerations. For example, using the word rapid as a trademark in connection with a fast-food restaurant can be problematic if competitors use synonyms for the word to describe their restaurants. Trademarking words do not give any person or business exclusive rights to use a word.

If you're considering filing a suit against a person or business you believe is violating your trademark, get familiar with the exceptions. When a company or person uses the trademark in a safe way, you may not have much of a case.

Types of Trademark Agreements

Trademark permissions can take different forms, depending on the agreement between the trademark owner and the licensee. Some common types include:

• Exclusive License: The licensee gets sole rights to use the trademark in a specific market or region, meaning the owner cannot grant others permission.
• Non-Exclusive License: The owner allows multiple parties to use the trademark simultaneously.
• Sublicense: The primary licensee is permitted to grant permission to others under specific conditions.
• Franchise Agreement: The trademark owner (franchisor) provides the licensee (franchisee) with permission to use its brand, logo, and operational methods.
• Merchandising Agreement: A business is allowed to produce and sell products featuring the trademark.

Each agreement should include clear terms on permitted usage, duration, territory, fees, and quality control measures.

Why Is Trademark Permission Important?

Trademark permission gives people and companies the option to use a logo, symbol, image, design, word, or phrase that's protected under a trademark. Properly attributing the trademark to the owner is the main way to identify trademark permission.

Filing for a trademark protects your intellectual property from being stolen or copied. Using someone else's trademark is against the law, and that use comes with legal rights. If you use a trademark illegally, you could face a lawsuit in a federal court or deal with negative publicity. But going through the proper channels and getting permission will prevent these problems.

Consequences of Using a Trademark Without Permission

Unauthorized trademark use can result in severe legal and financial consequences, including:

• Cease-and-Desist Orders: The trademark owner may demand immediate cessation of unauthorized use.
• Lawsuits for Trademark Infringement: Owners can sue for damages, including lost profits and reputational harm.
• Monetary Penalties: Courts may impose financial penalties, which can be substantial in cases of willful infringement.
• Seizure of Infringing Products: Authorities may confiscate unauthorized goods bearing the protected trademark.
• Injunctions and Business Disruptions: A court order may halt the production, sale, or distribution of infringing items, impacting revenue streams.

To avoid these issues, always obtain permission before using a registered trademark in commercial contexts.

Reasons to Consider Using Trademark Permission

If you plan to use a logo, symbol, phrase, image, or design that has trademark protection, you must do so with permission. Businesses of all sizes are at risk when they use similar or the same marks as those registered with the United States Patent and Trademark Office (USPTO).

If you violate the trademark laws, you could face serious penalties. The trademark owner could take you to federal court, sue you for damages, and bankrupt your business.

Intellectual Property Rights and Trademarks

Common laws of states and federal statutes establish intellectual property rights that trademark owners have to use marks, names, and symbols as forms of identification. State common laws give trademark owners the right to legally enforce intellectual property rights against unapproved uses of trademarks.

Those who own federally registered trademarks can legally enforce their intellectual property through trademark infringement suits in federal courts. You also don't need to have your trademark registered with the USPTO to sue someone for infringing on your trademark as intellectual property rights.

Benefits of Trademark Licensing for Businesses

Getting permission to use a trademark can offer multiple advantages, including:

• Brand Association: Leverage an established brand’s reputation to build trust and credibility.
• Market Expansion: Trademark licensing allows businesses to enter new markets under a recognized brand.
• Revenue Generation: Companies can monetize their trademarks by licensing them to third parties.
• Reduced Marketing Costs: Using an established trademark may lower customer acquisition costs.
• Legal Protection: Licensing agreements provide clear usage rights, reducing the risk of infringement disputes.

Businesses seeking a competitive edge should consider negotiating trademark licensing agreements that align with their goals.

Reasons to Consider Not Using Trademark Permission

The only legal ways to get around using trademark permission are within recognized exceptions. But if you're not planning to use the trademark in a commercial setting, you have one more option.

The trademark fair use doctrine refers to limited purpose use of a trademark. Under the First Amendment, all citizens have the right to free speech. So naming a trademark in free speech in this way ensures that you still hold that right.

The U.S. Supreme Court established this loophole in part to encourage competition in the market, which benefits consumers. To qualify under the fair use doctrine, you need to make sure you're using the mark in competition. Marketing and advertising qualify as competition in this case. But the line becomes a little less defined: In a commercial setting, you do need to get trademark permission.

If you violate the terms of a trademark, you put yourself at risk. The owner of the trademark can sue you for damages, which is the money lost during the time that you infringed on the trademark. You will also legally have to stop using the mark immediately, which can put a strain on your business or product manufacturing process.

When You May Not Need Trademark Permission

In some cases, businesses and individuals can legally use a trademark without explicit permission, including:

• Fair Use for Commentary or Criticism: Mentioning a trademark in an article, review, or parody may be legally protected.
• Comparative Advertising: Using a competitor’s trademark in an advertisement to compare products is often permissible, provided it is truthful and non-deceptive.
• Descriptive Use: If a word within a trademark is used in its ordinary sense and not to indicate a brand, permission is not required.
• Nominative Use: Referring to a brand by its name without implying endorsement is generally allowed.

If unsure about whether permission is needed, consulting a trademark attorney is recommended.

Common Mistakes

One common mistake is not understanding when you must get trademark permission. The rules for when you need to get permission and when you can use the trademark can be confusing at times. If you have questions, contact a legal professional who understands trademarks. Attorneys have a better understanding of the proper use of a trademark.

Common Pitfalls When Seeking Trademark Permission

Businesses and individuals often make mistakes when dealing with trademark permissions, such as:

• Failing to Conduct a Trademark Search: Not verifying the status of a trademark before use can lead to infringement issues.
• Misinterpreting Fair Use Laws: Assuming fair use applies without legal guidance can be risky.
• Ignoring Licensing Terms: Violating the conditions of a licensing agreement, such as quality control measures, can result in contract termination.
• Using Similar or Modified Trademarks: Slight alterations of a protected trademark may still constitute infringement.

Avoid these pitfalls by seeking expert legal advice and securing proper authorization before using a trademark.

Steps to File

• Find the owner of the trademark
  • When you search for information about the trademark, you can usually learn about who owns the trademark. The USPTO database or state trademark databases are two of many sources that can help you find trademark owners.
  • In a more extensive search, you may find that the trademark is no longer valid. In this case, you don't need to get permission.
  • When the trademark is still in effect, you'll need to contact the owner to ask for use permission.
• Negotiate for permission to use it
  • Some bigger businesses that hold trademarks use an attorney or trademark licensing office to handle these requests. But if the organization doesn't have a standard protocol for trademark permissions, you may need to work with a trademark attorney to draft a trademark licensing agreement.

When you get trademark permission, you can legally use the mark to improve sales of your products or services. But foregoing the request for trademark permission puts you and your company in jeopardy unless the situation falls under the exceptions to trademark laws.

How to Negotiate a Trademark License Agreement

When requesting permission to use a trademark, consider the following steps:

1. Identify the Trademark Owner: Check the USPTO database or state records to verify ownership.
2. Define Usage Terms: Specify how the trademark will be used, including marketing materials, packaging, or digital platforms.
3. Discuss Licensing Fees: Negotiate any royalties, lump-sum payments, or performance-based compensation.
4. Outline Quality Control Requirements: Trademark owners often require licensees to meet specific brand standards.
5. Draft a Formal Agreement: Work with an attorney to create a legally binding contract outlining the terms.

Ensuring clear terms in the agreement helps both parties avoid misunderstandings and legal disputes.

Frequently Asked Questions

Can I use a trademark without permission if I modify it slightly? No, making slight changes to a trademark does not necessarily avoid infringement. If the modified mark is still recognizable or likely to cause confusion, legal action may follow.

How long does it take to get permission to use a trademark? The timeline varies depending on the trademark owner, the complexity of negotiations, and legal reviews. It can take anywhere from a few weeks to several months.

Is verbal permission enough to use a trademark? No, verbal agreements can be disputed. Always obtain written permission through a licensing agreement to ensure clarity and legal protection.

What happens if I use a trademark without realizing it was registered? Accidental infringement can still lead to legal consequences, including cease-and-desist orders and financial penalties. Conducting a thorough trademark search before use is essential.

Can a trademark owner revoke permission after granting it? Yes, if the licensing agreement includes termination clauses, the trademark owner may revoke permission if the licensee violates the terms.

Get Legal Help With Trademark Permissions

If you need help with trademark permission, you can post your question or concern on UpCounsel's marketplace. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.