Trademark fair use (nominative use).

[w0ndering]

Hey Guys,

I have a challenging question for all the intellectual property law gurus. Here is the situation:

Me and my partners are launching a web site/platform in the US where we want people to express their public opinion on different brands/events/sport teams etc. The purpose of the web site is to make it a popular platform for discussion which will allow us to monetize the web site later down the road.

So the question is. Is it ok to use logos of registered brands such as Apple, Microsoft or logos of sport teams such as Boston Celtics, Chicago Bulls etc? Will such usage of trademarks be considered "fair use" or do we need to have written permission from the owners?

My understanding is that we're using logos solely for the identification purpose which is considered "fair use". My concern is, will the brand owners come after us if the web site gets popular? Can they claim that we've used their brand awareness to make our web site popular? Please share your thoughts. Thanks.

Sincerely,

Andrei

 

[quincy]

Me and my partners are launching a web site/platform in the US where we want people to express their public opinion on different brands/events/sport teams etc. The purpose of the web site is to make it a popular platform for discussion which will allow us to monetize the web site later down the road.

So the question is. Is it ok to use logos of registered brands such as Apple, Microsoft or logos of sport teams such as Boston Celtics, Chicago Bulls etc? Will such usage of trademarks be considered "fair use" or do we need to have written permission from the owners?

My understanding is that we're using logos solely for the identification purpose which is considered "fair use". My concern is, will the brand owners come after us if the web site gets popular? Can they claim that we've used their brand awareness to make our web site popular?

First, I am going to recommend that you consult with an attorney in your area who can personally review your specific website plans and set-up. You do not want to take any unnecessary and potentially-costly legal risks. A personal review by an attorney well-versed in trademark law, who has access to all of the facts of your proposed operation, is the best way to ensure you have a legally-safe site.

That said, I can provide you with some general advice that applies to U.S. trademark law. The trademark laws in other countries can vary in significant ways.

In the U.S., trademark law does not prohibit a person from using a trademarked name or logo for commentary or criticism or news reporting, for comparison of trademarked services or goods as a consumer service, in parodies, as identification (description) of the trademarked product or service, or for most noncommercial uses of the mark.

Your proposed use for trademarks, therefore, appears to be okay.

That said, anyone who uses another's trademarked name or logo could find themselves the target of a cease and desist letter, an injunction, or legal claims filed against them, potentially for product disparagement, false advertising, trade libel, dilution, tarnishment or infringement.

A legal claim is more likely to be filed if any false statements are made about a company's products or services, or if any consumer could be confused as to a company's endorsement, support or connection with your site.

In other words, there is a legal risk in using another's trademark and there can be an increased legal risk when the purpose behind the use of another's trademark is to criticize the company and/or its products and services.

Whether your "discussions" will be critical of a trademarked entity or not could, I suppose, be up to those visitors contributing comments to your site.

You would be wise to do several things before starting your site: one, have your plans reviewed by an attorney prior to start-up and ask about, and work on, disclaimers and terms and conditions necessary for your site; two, have sufficient insurance coverage to handle any lawsuits that may arise despite your best efforts to avoid a suit; and, three, be very careful how you handle the intellectual property rights of others (especially if those with the IP rights have large legal teams and a lot of money ).

You may wish to take a look at both offline and online publications like Consumers Report, to see how they handle trademarks. If your site is planned to be a free-discussion site, you will need to take special precautions so that the visitors to your site do not (intentionally or unintentionally) harm your site with their postings. You may also wish to visit the following site and check their "legal risks" section: http://www.kcnn.org.

Again, I recommend you speak with an attorney in your area. Good luck with your website.

 

[w0ndering]

Thanks for your opinion. I really appreciate it

 

[quincy]

You're welcome, w0ndering. I wish you good luck with your website.