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Am I allowed to use a trademarked name in sentence?
- Thread starter breakaway
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The Occultist
Senior Member
In what way to you intend on using it?
TheGeekess
Keeper of the Kraken
Who holds the trademark on Madonna™? The Pope?
Personally, I like to use the handy dandy little ® or ™ when I use names of products in a sentence. © is another good one to keep handy.
Is it legally required to use the "tm" or variations of it if I use other peoples' trademarked names?
For example, writing a webpage for an up and coming singer, there would be an 'about section'. Would I be able to write "She is considered to be the next Mariah Carey". If it's illegal to have that as a heading, what if it's just a sentence in a paragraph.
For example, writing a webpage for an up and coming singer, there would be an 'about section'. Would I be able to write "She is considered to be the next Mariah Carey". If it's illegal to have that as a heading, what if it's just a sentence in a paragraph.
quincy
Senior Member
With names like Paris Hilton or Madonna, you do not have to use the trademark symbols because they are not just a product line.
And, as I said before, journalists do not use the trademark or copyright symbols generally, unless to leave them out causes confusion. When a trademark is used, however, it is capitalized (except for eBay) or sometimes italicized.
Most writers will try to use a generic equivalent when possible (ie. tissue instead of Kleenex), unless the use of a trademark is essential to a story or used for clarity (ie. Styrofoam™ is often used instead of cellular polystyrene).
What you mostly need to avoid is using someone's name or likeness, or copyright or trademark, without permission when to do so infringes on a right.
In your sample sentence, "She is considered to be the next Mariah Carey," you could be infringing on Mariah Carey's right to publicity/privacy (misappropriation of a name or likeness, or sometimes voice, signature, mannerisms. . . ) by using Mariah Carey's fame to advertise or promote a new singer.
The sentence would be okay to use if you said WHO considered this singer to be the next Mariah Carey (a quote from the person) or if you said HOW this singer is like Mariah Carey. But, again, when using names, copyrights, trademarks, you run risks if you don't get permission first. You need to be careful that you do not use famous names for the purpose only of attracting visitors to your site.
And you should run any questionable sentences by an attorney for review.
And, as I said before, journalists do not use the trademark or copyright symbols generally, unless to leave them out causes confusion. When a trademark is used, however, it is capitalized (except for eBay
) or sometimes italicized. Most writers will try to use a generic equivalent when possible (ie. tissue instead of Kleenex), unless the use of a trademark is essential to a story or used for clarity (ie. Styrofoam™ is often used instead of cellular polystyrene).
What you mostly need to avoid is using someone's name or likeness, or copyright or trademark, without permission when to do so infringes on a right.
In your sample sentence, "She is considered to be the next Mariah Carey," you could be infringing on Mariah Carey's right to publicity/privacy (misappropriation of a name or likeness, or sometimes voice, signature, mannerisms. . . ) by using Mariah Carey's fame to advertise or promote a new singer.
The sentence would be okay to use if you said WHO considered this singer to be the next Mariah Carey (a quote from the person) or if you said HOW this singer is like Mariah Carey. But, again, when using names, copyrights, trademarks, you run risks if you don't get permission first. You need to be careful that you do not use famous names for the purpose only of attracting visitors to your site.
And you should run any questionable sentences by an attorney for review.
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divgradcurl
Senior Member
No, unless you have a contract or other agreement with the party that requires it.
This is not correct. This usage would be protected under the "fair use" of a trademark. It is always legal to use a trademarked name to describe the thing that is covered by the trademark. It is never infringing to describe Mariah Carey as Mariah Carey. In this case -- "the next Mariah Carey" -- you are trading on anyone's fame, you are comparing someone to something else, and describing that something else by using it's trademarked name is permissible.
Now, if the sentence were "Mariah Carey considers this singer the next Mariah Carey" and Mariah Carey never said that, then THAT would potential be a misappropriation issue. But that's not the question at hand.
Do you have some support for this assertion? I have never seen rules delineated in this way.
quincy
Senior Member
I am going to simply throw out the terms instead of being detailed: Product disparagement, false advertising, trade libel, publicity rights/privacy rights (misappropriation), palming off, unfair business practices, antidilution.
When you use someone's trademark and then offer different competing goods or services, you can deceive a consumer, who may be attracted by the trademark which is used to "advertise" your own goods or services. And you can also tarnish the trademark by comparing it to your own less desirable or lesser quality product or service.
Mariah Carey's name may attract consumers to the website (a website of which she has no connection), the comparison of the unknown singer to Mariah Carey may create more sales for the CDs of this unknown singer (trading off Mariah Carey's name), the unknown singer may suck (disparaging Mariah Carey's name), Mariah Carey's name is connected to this unknown singer in an unfavorable way (tarnishing Mariah Carey's image).
Everyone has the right to prevent unauthorized uses of their names or images to sell products, however those names or images may be used.
Trademark law does permit the use of trademarks for comparative advertising and descriptive purposes - agreed. This does not, however, prevent a trademark owner from suing over the use. When using a trademark without permission, you may have to defend your right to use it (if you even have the right), in court and at the cost of thousands and thousands of dollars to do so.
Even though there is free speech, litigation can silence this speech fairly quickly. And when you are dealing with a "strong" mark, such as you have with a famous name, it is offered more protection than others.
Fair use, by the way, is a defense to a claim of infringement in trademark law. Breakaway would have to show that he was using Mariah Carey's name to describe this unknown singer (and if the singer is nothing like Mariah Carey that would be difficult) and he would have to show he was doing so in a way other than trading merely off the "good will" of her trademarked name.
If I say my new soda pop has the same fizz as Coke, that describes my soda pop and could be an acceptable use of the Coke trademark (if I can prove it is true). I can say that I sold more cans of my new soda pop in December than Coke sold in December. That is comparative advertising that could be an acceptable use of the trademark (if I can prove it is true). But I cannot say, divgradcurl, that my new soda pop is the next Coke, without hearing very soon from Coke's legal team, and I cannot say my new singer is the next Mariah Carey.
When you use someone's trademark and then offer different competing goods or services, you can deceive a consumer, who may be attracted by the trademark which is used to "advertise" your own goods or services. And you can also tarnish the trademark by comparing it to your own less desirable or lesser quality product or service.
Mariah Carey's name may attract consumers to the website (a website of which she has no connection), the comparison of the unknown singer to Mariah Carey may create more sales for the CDs of this unknown singer (trading off Mariah Carey's name), the unknown singer may suck (disparaging Mariah Carey's name), Mariah Carey's name is connected to this unknown singer in an unfavorable way (tarnishing Mariah Carey's image).
Everyone has the right to prevent unauthorized uses of their names or images to sell products, however those names or images may be used.
Trademark law does permit the use of trademarks for comparative advertising and descriptive purposes - agreed. This does not, however, prevent a trademark owner from suing over the use. When using a trademark without permission, you may have to defend your right to use it (if you even have the right), in court and at the cost of thousands and thousands of dollars to do so.
Even though there is free speech, litigation can silence this speech fairly quickly. And when you are dealing with a "strong" mark, such as you have with a famous name, it is offered more protection than others.
Fair use, by the way, is a defense to a claim of infringement in trademark law. Breakaway would have to show that he was using Mariah Carey's name to describe this unknown singer (and if the singer is nothing like Mariah Carey that would be difficult) and he would have to show he was doing so in a way other than trading merely off the "good will" of her trademarked name.
If I say my new soda pop has the same fizz as Coke, that describes my soda pop and could be an acceptable use of the Coke trademark (if I can prove it is true). I can say that I sold more cans of my new soda pop in December than Coke sold in December. That is comparative advertising that could be an acceptable use of the trademark (if I can prove it is true). But I cannot say, divgradcurl, that my new soda pop is the next Coke, without hearing very soon from Coke's legal team, and I cannot say my new singer is the next Mariah Carey.
TheGeekess
Keeper of the Kraken
So, what about all these publishing houses that compare their writers to Tolkien/Heinlein/et al? I don't know how many blurbs promising that this writer is the next Tolkien/Heinlein/et al I've seen in the past 20+ years of reading sci-fi/fantasy paperbacks.
divgradcurl
Senior Member
Again, do you have any support for your assertions, other than your opinion? You might want to take a look at McCarthy on Trademarks, particularly the sections on "nominative fair use." The use of a trademark is not nearly as narrow as you make it out to be.
quincy
Senior Member
Do you know how many times on this forum you have asked me to look at McCarthy, divgradcurl?
Yes, I know nominative fair use. Fair use is decided at the court level and it is a terrific defense to infringement. But it does not always hold up, it is subjective, and it is fact specific. Most importantly, it does not prevent a lawsuit. It is a defense to an infringement action only.
In breakaway's first post he said he wanted to use "The Next Madonna" or "The Next Universal Studios" in large font. He would have a hard time claiming that was a fair use or good faith use of the trademarked names.
He is trading off the famous trademarked names, in all of his examples. The Trademark Dilution Revision Act revised the Lanham Act to allow for a trademark owner to seek relief if the use of the trademark willfully intended to trade on the recognition of the famous mark. It also defines dilution by tarnishment as an association that harms the reputation of the famous mark.
To use a trademarked name in a comparative way, he would have to make sure his comparison was accurate and not a misdescription. He must make sure his claims can be substantiated. His use cannot disparage the mark - his use cannot portray the mark in a negative manner.
The use of the trademarked names in the manner breakaway is suggesting using them are potentially deceptive and potentially disparaging, and potentially opens him up to an infringement action (among other actions).
If a trademark is used unfavorably or misused, the trademark owner can look to federal and state trademark and anti-dilution laws, the FTC, and the NAD for relief. In addition, since two of the trademarks discussed here are also famous people, the trademark owner/famous person can look to privacy laws, as well. And, depending on how horrible the comparison is (ie. Mariah Carey compared to one of the Wiggles, for instance), defamation could be considered.
On any site that has information on fair use (including the USPTO site and the Copyright Office site), there is always a warning on fair use. Fair use is tricky, it does not prevent a lawsuit and, according to the government websites, getting permission to use a copyright or a trademark is the wisest course of action.
All of these sites do not give these warnings because no one ever sues for infringement. They give these warnings because too many people DO sue for infringement.
To correct his usage of the trademarks, he merely needs to compare with truthful specifics (ie. "She is considered to be the next Mariah Carey because of her vocal range"). But he should avoid using Mariah Carey to attract people to his website or sell another singer's CDs.
That is my advice, the reasons for my advice, and I'm sticking to it all.
Yes, I know nominative fair use. Fair use is decided at the court level and it is a terrific defense to infringement. But it does not always hold up, it is subjective, and it is fact specific. Most importantly, it does not prevent a lawsuit. It is a defense to an infringement action only.
In breakaway's first post he said he wanted to use "The Next Madonna" or "The Next Universal Studios" in large font. He would have a hard time claiming that was a fair use or good faith use of the trademarked names.
He is trading off the famous trademarked names, in all of his examples. The Trademark Dilution Revision Act revised the Lanham Act to allow for a trademark owner to seek relief if the use of the trademark willfully intended to trade on the recognition of the famous mark. It also defines dilution by tarnishment as an association that harms the reputation of the famous mark.
To use a trademarked name in a comparative way, he would have to make sure his comparison was accurate and not a misdescription. He must make sure his claims can be substantiated. His use cannot disparage the mark - his use cannot portray the mark in a negative manner.
The use of the trademarked names in the manner breakaway is suggesting using them are potentially deceptive and potentially disparaging, and potentially opens him up to an infringement action (among other actions).
If a trademark is used unfavorably or misused, the trademark owner can look to federal and state trademark and anti-dilution laws, the FTC, and the NAD for relief. In addition, since two of the trademarks discussed here are also famous people, the trademark owner/famous person can look to privacy laws, as well. And, depending on how horrible the comparison is (ie. Mariah Carey compared to one of the Wiggles, for instance), defamation could be considered.
On any site that has information on fair use (including the USPTO site and the Copyright Office site), there is always a warning on fair use. Fair use is tricky, it does not prevent a lawsuit and, according to the government websites, getting permission to use a copyright or a trademark is the wisest course of action.
All of these sites do not give these warnings because no one ever sues for infringement. They give these warnings because too many people DO sue for infringement.
To correct his usage of the trademarks, he merely needs to compare with truthful specifics (ie. "She is considered to be the next Mariah Carey because of her vocal range"). But he should avoid using Mariah Carey to attract people to his website or sell another singer's CDs.
That is my advice, the reasons for my advice, and I'm sticking to it all.
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divgradcurl
Senior Member
Nothing can prevent a lawsuit. Nothing.
Read up on nominative fair use. Good faith is not one of the factors.
Show me a case where this type of language has been found to be "trading off." Trading off, in this sort of instance, would usually entail putting up a website for the singer, then putting "Mariah Carey" in the metadata, or maybe hidden text saying "Mariah Carey" so that the website would appear first in a web search for Mariah Carey.
You are mixing things up here. Disparagement is a separate issue. There is no requirement that a comparison be accurate or substantiated under trademark law. There may be other unfair business issues, or tortious interference or slander sorts of actions, but there is not a trademark action for comparisons that are wrong or misleading.
When looking at comparisons, you look at factors like whether or not you NEED to use the trademark in order to identify the thing you are comparing to, whether or not you've only used what you need of the trademark and no more, and whether or not the ad or whatever implies endorsement or anything like that. Accuracy and substantiation are not factors here.
Further, "the next Mariah Carey" is inherently subjective -- how would you substantiate it in the first place? How do you substantiate which tastes better, Coke or Pepsi? What if he said "better than Mariah Carey?"
Where do you get these ideas? First off, you will get no relief from anti-dilution laws for potential damages. See Moselely et. al. d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al. . Second, famous persons generally get less protection from privacy and defamation laws that do non-famous people. Sullivan v. NY Times ring a bell?
Do not confuse copyright fair use with trademark fair user. Yes, both are defenses to an infringement action, but trademark fair use is far less squishy than copyright fair use, it has boundaries that are far closer to bright line rules.
How is this any more truthful or objective than "the next Mariah Carey?" Maybe she is the next Mariah Carey because the dresses the same way. Or has the same vocal range. Or is going to appear in the sequel to Glitter?
Your reasons are not important -- the basis for your reasons is what is important.
quincy
Senior Member
I gave the basis for my reasons, div. A whole list of them. Are you looking for me to quote the texts of these laws (there are 50 versions of some of them), or are you looking for case law?
As for your question about how you substantiate which tastes better, Coke or Pepsi, that is definitely a problem. Check out the Papa John's suit over Pizza Hut's "best pizza" slogan they wish to trademark.
You are right that famous people have given up some of their privacy rights, and to win a defamation action, they must prove actual malice instead of negligence, but famous people have GREATER publicity rights and misappropriation rights, plus they tend to be very very rich, so it sort of balances out.
You are also right that nothing can prevent a lawsuit if a person is intent on suing. That is why it is important to protect yourself from a lawsuit by getting permission from property rights owners before using their material, by getting insurance to cover the costs of any potential lawsuit that might arise, and by avoiding whenever and wherever possible the areas that are lawsuit magnets (like copyright and trademark infringement and privacy/publicity right violations).
As for your question about how you substantiate which tastes better, Coke or Pepsi, that is definitely a problem. Check out the Papa John's suit over Pizza Hut's "best pizza" slogan they wish to trademark.
You are right that famous people have given up some of their privacy rights, and to win a defamation action, they must prove actual malice instead of negligence, but famous people have GREATER publicity rights and misappropriation rights, plus they tend to be very very rich, so it sort of balances out.
You are also right that nothing can prevent a lawsuit if a person is intent on suing. That is why it is important to protect yourself from a lawsuit by getting permission from property rights owners before using their material, by getting insurance to cover the costs of any potential lawsuit that might arise, and by avoiding whenever and wherever possible the areas that are lawsuit magnets (like copyright and trademark infringement and privacy/publicity right violations).
divgradcurl
Senior Member
Caselaw, where someone who said "the next whoever" was found liable for trademark infringement, or defamation, or unfair business practices. Anyone can google the ext of the laws -- it's the caselaw -- and analysis of the caselaw -- where the answers usually lie. Statutory analysis can only take you so far.
I believe Papa Johns won that suit. But that's a different issue than the one under discussion here.
And your point is? Do you have any case in any jurisdiction where saying "the next whoever" was found to be misappropriating a famous person's likeness, or infringing on their publicity rights?
Intellectual property rights and first amendment sorts of protections live in a kind of tension. Living in fear of a lawsuit means giving up a big chunk of your own rights to use works. Hopefully more states will start coming up with statutes like California's anti-SLAPP statutes so that people can fight back against those who would use their power to strike down otherwise legal speech by those who they think are unwilling (or unable) to stand up for their rights.
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