Trademark Permission: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A TrademarkTrademark Infringement
Trademark permission, also called licensing, allows others to use a trademark as the source of a product or service.8 min read
2. Why Is Trademark Permission Important?
3. Reasons to Consider Using Trademark Permission
4. Reasons to Consider Not Using Trademark Permission
5. Common Mistakes
6. Frequently Asked Questions
7. Steps to File
8. Get Legal Help With Trademark Permissions
Updated November 4, 2020:
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.
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.
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.
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.
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.
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.
Frequently Asked Questions
- What does trademark permission mean?
Trademark permission means that the owner of the federally registered trademark allows you to use the mark. The process of getting trademark permission often involves negotiations to make sure that both parties are happy with the terms. Once you have trademark permission, you can only use the mark in way(s) upon which both sides agree.
- When do I need trademark permission?
You need to get permission to use a trademark in most commercial situations. If you're selling a product, make sure you have permission to use the mark before you put it on there. You could lose a lot of money and face legal issues if you do so without permission.
The exceptions to this rule include comparative use, descriptive use, collateral use, nominative use, and parody/criticism.
- What could happen if I use a trademark without permission?
Depending on the case, you or your business may be sued for trademark infringement which could lead to a court case against you. You may be asked to immediately forfeit your use of all products that infringe on the copyright through a cease-and-desist order. You may also need to pay a judgment to pay for damages or injunctive relief. Finally, you could lose money, property, or other rights important to you.
- What is considered commercial uses of a trademark?
Commercial uses of a trademark can include activities such as advertising and marketing. Examples can include business-sponsored promotions (such as public programs), advertorials (paid advertising appearing in an editorial form), and merchandise.
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.
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.