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Trademark question. Is a trademarked name and/or logo ONLY used by the company who has the trademark, , OR can others use it when REFERRING to the trademarked item? For example if we ran a radio commercial and our websight was promoting that we sell Nike shoes could we show the Nike trademark name (with the r symbol) and swoosh pattern on the commercial? The ad would again be naming our site that has Nike shoes available on it , but would be telling what we have to offer at the site. Another example, Bayer asprin, if we were selling it, could we show the pills on the commercial with their pill picture and trademarked name, as long as we have the little r with it, or is that not allowed? We are confused as to how the trademark protects the owner of it but still allows the people to promote the item if they market it or sell it. I know we are allowed to talk about the product in words, but we are unsure of the specific ways in which we can do this. Thanks VERY Much !
Submitted: 409 days and 21 hours ago.
Category: Legal
Value: $15
Status: CLOSED
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Fountain Hills , Arizona
Accepted Answer
The trademark owner has rights to protect against:
1) another using the mark in a way that is likely to cause confusion about whether the user of the mark is associated with the trademark owner; and
2) in a way that disparages or degrades the mark.
It sounds like (2) is not really applicable based on any facts you provide.
With respect to (1), it is not a straightforward answer and really depends on two issues (a) the facts and (b)how aggressive the trademark owner is. I mention (b) because the fact are what the facts are and the law is what the law is but an aggressive trademark owner can make your life pretty miserable even if, in the event you fully defended the case, you would win. And, the aggressive trademark owner may win a case they shouldn't through strong enforcement tactics against a defendant who lacks resources and resolve to fight back. So, as a practical matter, the owner of the trademark matters.
Having said that, back to (2), there is more chance that a trademark owner would contend likelihood of confusion exists where you use their stylized logo because the public is more likely to think you are authorized by the trademark owner. The safe route is to use the word (e.g. Nike, Bayer, etc.) but not stylized and without the swoosh, for example. You could also put a footnote that states "Trademarks used herein are trademarks of their respective owners" or something like that to make it clear you are not saying they are your trademarks.
I hope this helps. Please let me know of any followup issues. And, please press accept so I can be paid. Positive feedback is always appreciated.
Thank you.
Expert:
OnpointLegal
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95.3 %
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Answered:
10/9/2008
Lawyer (JD)
20+ years of legal experience
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