TrademarkFilter: Fair use of an old logo?

October 2, 2006 7:06 PM

I'm wondering about the way that trademarks can be enforced in a very specific instance.

I'd like get some (useful household) items made that feature a trademarked line drawing. This image, which could generically be considered a logotype, has been trademarked since the early 60s. It appears to have recently been registered with USPTO for a bunch of generic Goods & Services categories that don't have anything to do with the original product at all:

• IC 025. US 022 039. G & S: CLOTHING AND HEADGEAR,
  
• IC 014. US 002 027 028 050. G & S: CLOCKS, MATCHES, COSTUME JEWELRY, ASHTRAYS, COLLECTIBLE PROMOTIONAL ITEMS,
  
• IC 006. US 002 012 013 014 023 025 050. G & S: METAL RINGS AND CHAINS FOR KEYS,
  
• IC 009. US 021 023 026 036 038. G & S: BACKLIT SIGNS, ELECTRIC SIGNS, NEON SIGNS
  

(I'm ommitting a bunch of others).

It is my understanding that trademarks don't expire as long as the holder is actively defending the mark for its registered uses.

So, can I legally make some items that don't expressly fall into one of these categories but use this trademarked image? I'm mostly looking to use this image for personal purposes and without monetary gain. However, if the items turn out nicely, I'd consider selling them on a small scale if it was legitimate to do so within the scope of copyright and trademark law.

I'm being intentionally vague about my intentions and the trademark in question as I don't want to open myself up to a C&D before I even get started. I know that I should consult a qualified lawyer and hereby release you from the advice you are about to provide.

posted by maniactown to law & government (16 comments total)

Maybe the trademark holder plans to make jewelry or clothing out of the line drawing just as you do. The trademark not only applies to the item as marketed but also the item as the owner wishes to market it.
posted by Not in my backyard at 7:21 PM on October 2, 2006

A trademark is not reserved only for a single category; it's reserved for everything. And if it's used for anything and the trademark holder lets it go, they can lose the right to the trademark.

Thus if they consider the trademark to be valuable, and if they ever find out about your usage, no matter what you're using it for, even if it doesn't compete with their business, they'll C&D you.
posted by Steven C. Den Beste at 7:22 PM on October 2, 2006

At least that's the case when it comes to logos such as the Apple "apple with a bite out of it". When it comes to names, strings of characters, the rules are a bit different IIRC.
posted by Steven C. Den Beste at 7:23 PM on October 2, 2006

To be clear, my use doesn't specifically fall into any of the categories registered with the USPTO. I was under the impression that a trademark had to apply to a particular "trade" - which is why there could be Apple Computers and Apple Records (bad example, I know since those parties have repeatedly been tied up in litigation over similar issues).
posted by maniactown at 7:35 PM on October 2, 2006

SCDB is partially correct, for well known marks that achieve a famous status, like coca-cola, for instance, you can't use them anywhere for anything. But that usually applies to names, i.e. the words "coca-cola" not the fanciful cursive logo that everyone recognizes, because that artwork is also copyrighted as well as trademarked.

If you want to use it for personal purposes, and not to sell, then go right ahead. Trademark law, unlike copyright, protects the use of marks in commerce, and it your use isn't in commerce, it's not a violation of tradmark law. You are not allowed to sell them, even on a small scale, legally speaking.

However from a realistic standpoint, if your use of the product is so outside the ordinary scope of the mark's use, then you can fly under the radar. (You are a tatto artists giving people Budweiser tattoos). Keep in mind, however, that anyone else can do exactly what you are doing, and you can't stop them. You are not protet from other people's copying.

In the example you are giving, though, it seems like the mark is intended for use everywhere, on the actual products as well as T-shirts, hats, etc. So the second you put that logo on anything, you should expect a C&D.

Of course, you could always sell a bunch, and then stop when you get the C&D and say "Oops, I'm sorry, I thought I was okay, my bad." As long as you aren't making a lot of money, they won't come after you for damages.

My best advice, however, would be to come up with your own brand and own idea - that way you have something unique and all your own.
posted by Pastabagel at 7:36 PM on October 2, 2006

My best advice, however, would be to come up with your own brand and own idea - that way you have something unique and all your own. No kiddin'. I worked for Old Navy.
posted by Doohickie at 8:03 PM on October 2, 2006

GAWD.. I mean "IT worked for Old Navy." (I miss the old mandatory preview thingy since I am teh suck.)
posted by Doohickie at 8:03 PM on October 2, 2006

I was referring more to brands like "No Fear" which as far as I know sell nothing other than stickers with "No Fear" written on them.
posted by Pastabagel at 8:06 PM on October 2, 2006

I'm not sure if this is what you mean with regard to the Old Navy crack, but the "logo" that I'm using is really not the exact trademark, although it's quite similar.
posted by maniactown at 8:31 PM on October 2, 2006

Trademarks are proprietary, plain and simple. Any company that employs a lawyer who thinks there might be some confusion about the relationship between your product and their company can serve you with a cease & decist letter. The bigger the company, the more likely they are to ferociously protect their trademark.

A recent example involves a charity event in New Zealand, that was going to be called the Playboy Ball. A band named Hefner was scheduled to play, among other things, and it was all in the name of raising funds for sick kids.

It shouldn't surprise anyone that the event was sent a C&D letter, but there was something surprising about the story. I heard an interview with the band on the radio, and they said lawyers were even miffed about their band name. I think they were being sued over it, but I can't remember for certain. They were adamant about keeping the name.

So the lesson here is that it's really more about the defense of the copyright than the specifics of how it's registered.
posted by nadise at 9:26 PM on October 2, 2006

I'd be worried about the copyright in the line drawing, unless the right has expired. It would be a good idea for you to find out who, if anyone, holds the copyright in the image. I don't feel like I've got a good handle on what you're planning to do, but bear in mind that statutory damages are often available in infringement cases.

W/re registration, it's my understanding that you can prospectively register something, but that ultimately, unless you use your mark in commerce, the registration is meaningless. You aren't supposed to be able to register stuff and squat on it indefinitely. Has the mark holder actually used the mark, or have they just been registering and re-registering with the USPTO? Are they still using it?

The test in trademark is nearly always whether there is a likelihood of confusion. Could the consumers of your product reasonably believe that your stuff is being made by the other company? If "yes," then you've got a problem. If "no," you may well be in the clear. With all but the most famous of marks, a court will be unlikely to find a likelihood of confusion where a mark is being used in radicaly different industries. (Your example of Apple Computers and Apple Records is a very good one.) Geography can also be a consideration.

Bear in mind of course that unlike a copyright holder, a tradmark holder who fails to police infringing uses may lose her rights in her mark. For that reason, trademark holders often err on the side of agressiveness when dealing out the C&Ds. Having a perfectly good right to use the image in a particular way does not guarantee that no one will harass you about it.
posted by palmcorder_yajna at 11:24 PM on October 2, 2006

The drawing may have copyright protection. Although it might not since it was created before copyright was automatic on created works.
posted by grouse at 2:57 AM on October 3, 2006

Thank you all for your informative responses. There doesn't appear to be a copyright on the image, according to a cursory search of the uspto.gov copyright database.

I may have squandered any traffic to this question, but here's a more concrete, still theoretical example of what I'm hoping to do:
There was a regional soap company who used their trademark "Soap Lady" -- a cutesy logo of a woman with a bucket -- to market their soap in the 60s. The logo wasn't used much in the interim, but has become kitsch-ily popular in the area. I would like to have paper plates printed, with this logo on them, for my own use at a theme party. My friend owns a small gift shop in the area and may offer to sell the plates to her customers. Since I am not selling soap (or even hats or keychains as protected by their trademark registration), does this usage interfere with their trademark?
posted by maniactown at 6:37 AM on October 3, 2006

maniactown - If they aren't selling soap anymore, you are fine from a trademark standpoint. HOWEVER, the picture is automatically protected by copyright, even if it is not registered in the copyright office. And the copyright doesn't need to be renewed.

You only need to register copyrights to prove priority dates and in order to sue someone for infringement. Technically, your friend and you would be breaking the law by putting the image on plates, but if it's something you really want to do, I'm sure you can have the plates made for the party and no one will be the wiser. Your friend should probably avoid selling the plates, though, because someone in the area may know who the copyright owner is, tell them, etc and your friend gets busted.

Short answer - make the plates for your party, but do not sell them to the public.
posted by Pastabagel at 7:29 AM on October 3, 2006

There doesn't appear to be a copyright on the image, according to a cursory search of the uspto.gov copyright database.

Since when does US PTO have a copyright database or have anything to do with copyright?

This may boil down to whether the mark you are infringing is "famous" or not. If so, then you are prohibited from diluting it even if there is no competition or confusion implied. You can't make, e.g. Buick-brand aspirin. There is the Federal Trademark Dilution Act and acts in individual states as well.

But if there is going to be real money involved, you're going to need a real lawyer. Sorry I can't be more helpful.
posted by grouse at 7:33 AM on October 3, 2006

the picture is automatically protected by copyright

This is only true for works created in 1978 or afterwards. And it sounds like that is not the case for this image.
posted by grouse at 7:36 AM on October 3, 2006