When Can I Use Another Company's Trademark?

So you run a business dealing with and/or servicing other companies who have registered trademarks? Always make sure you are not using those companies’ trademarks in an infringing manner, or you may find a cease-and-desist letter in your mail one day.

One goal achieved by a registered trademark is to give the owner of the trademark control over how his trademark is perceived by the marketplace with regards to associations. To illustrate, we can look to “VW” and “Volkswagen”, marks that are registered on the US federal trademark registry. If you are Volkswagen, which not only sells cars at VW dealerships but also earns considerable revenue from servicing VW vehicles, you might not be happy about the mechanic who hangs a giant “VW” logo above his garage, followed by the words “repair shop.” On the other hand, a federal appeals court in California upheld the use of “Volkswagen” and “VW” marks by a mechanic who operated a garage specializing in the servicing of Porshes and Volkswagens.

Context is important. The court heavily based its opinion on the fact that the mechanic consistently used the word “independent” whenever he advertised his business as an “Independent Volkswagen Porsche Service.” Because of this, the court found in favor of the mechanic, ruling that the mechanic’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” Volkswagen Aktiengesellschaft v. Church, 411 F.2d 350 (9^th Cir. 1969).

Thus, business owners are not entirely prohibited from all uses of another company’s trademark. However, in order to do so, the use of the trademark must fall into an exception for use of another’s mark. Uses which are likely to confuse consumers as to the source of the product which the mark is attached to are more likely to be prohibited, while uses which are merely informative (such as the above example or when used in conversation to identify a company) are more likely to be permitted uses.

– ck

When Can I Use Another Company’s Trademark?

So you run a business dealing with and/or servicing other companies who have registered trademarks? Always make sure you are not using those companies’ trademarks in an infringing manner, or you may find a cease-and-desist letter in your mail one day.

One goal achieved by a registered trademark is to give the owner of the trademark control over how his trademark is perceived by the marketplace with regards to associations. To illustrate, we can look to “VW” and “Volkswagen”, marks that are registered on the US federal trademark registry. If you are Volkswagen, which not only sells cars at VW dealerships but also earns considerable revenue from servicing VW vehicles, you might not be happy about the mechanic who hangs a giant “VW” logo above his garage, followed by the words “repair shop.” On the other hand, a federal appeals court in California upheld the use of “Volkswagen” and “VW” marks by a mechanic who operated a garage specializing in the servicing of Porshes and Volkswagens.

Context is important. The court heavily based its opinion on the fact that the mechanic consistently used the word “independent” whenever he advertised his business as an “Independent Volkswagen Porsche Service.” Because of this, the court found in favor of the mechanic, ruling that the mechanic’s “prominent use of the word ‘Independent’ whenever the terms ‘Volkswagen’ or ‘VW’ appeared in his advertising was sufficient to distinguish his business to the eye of the customer.” Volkswagen Aktiengesellschaft v. Church, 411 F.2d 350 (9^th Cir. 1969).

Thus, business owners are not entirely prohibited from all uses of another company’s trademark. However, in order to do so, the use of the trademark must fall into an exception for use of another’s mark. Uses which are likely to confuse consumers as to the source of the product which the mark is attached to are more likely to be prohibited, while uses which are merely informative (such as the above example or when used in conversation to identify a company) are more likely to be permitted uses.

– ck

Plain English: Intellectual Property, Trademark, and Copyright

I often get confused looks when I inform business owners that I am an intellectual property attorney, but that I do not do patent applications. There is a very common misconception, even amongst attorneys, that “intellectual property” is synonymous with patents; and this is simply incorrect. “Intellectual property” (“ip” in legal lingo) describes the category of law, while “patent law” is one of four types of intellectual property law.

Intellectual property is made of four sub-categories of law: trademarks, copyrights, trade secrets, and patents. Below, I have provided a brief explanation and example of what trademarks and copyrights are, and a quick distinction of trade secrets and patents:

Trademark: a unique logo that serves to protect a company’s brand and to also protect consumers by allowing them to rest assured that a product with a recognizable logo attached to it was actually made by the company associated to the logo. Examples: When you buy a shoe with a Nike Swoosh logo on it, you know that it was produced by Nike, and when you buy a Louis Vuitton bag with their signature “LV” logo patterned onto a brown background, you know that you are getting an actual Loius Vuitton bag.

Copyright: Copyrights serve to protect artists and the art they create. Whether it’s music, a magazine article, or a painting, once an artist has created something legally “unique” in the United States, the artist automatically has copyright protection in their art against anyone who “substantially” copies their artistic work. Examples: Ray Charles created the song “I Got a Woman” in the 1950’s, and in the United States, has copyright protection in that song for his life, plus 70 years after he dies. How then, did Kanye West make the song “Gold Digger” in 2004, which sampled parts of Ray’s song “I Got a Woman”? Just because Ray Charles had copyright protection when Kanye made his song, doesn’t mean Kanye cannot use the song, but it does mean that Kanye could only use Ray’s song subject to Ray’s terms and conditions; a license.

Trade Secrets: Trade secrets are the gems to a company’s success in creating a profitable good or service, and are secrets that must be well kept by the company. As long as the company puts forth a sufficient effort in keeping the secret, anyone who uses illegal means to discover the secret may be legally liable. Reverse engineering is a legitimate way to discover a trade secret. A most notable example of a trade secret is the formula for Coca-Cola, which only a handful of people in the company know and have access to.

Patents: Patents are protections for persons or companies who have created a useful invention that advances some type of technology. Note that this is different from copyright where the protection is for art. Patents essentially give the person who files a successful patent a 20 year monopoly on the technology they have patented, meaning they have exclusive rights over how much they want to sell or license the technology and in deciding who is allowed to produce the technology.

– ck

Cliff Kuehn, A San Francisco Trademark and Copyright Attorney

Quite simply, trademark and copyright law has fascinated me intellectually since it instantly gripped my attention during law school (a first at the time)…and never let go. I understand this probably sounds quite nerd-ish to the general population, and so be it! This blog is written for those who are interested in how intellectual property laws protect (or harm, depending on who you ask) individuals, businesses, and society as a whole.

I am a young intellectual property attorney with my own firm in San Francisco, on a (understandably seemingly overambitious) path towards building a reputable firm which delivers the high-quality work and bandwidth of a “BigLaw” firm, but treats all clients like important clients. Currently, I assist individuals and businesses on entity formation, provide preemptive legal support on intellectual property issues, and advise clients on how their intellectual property rights can help them increase and protect revenue.

Thank you for visiting my newborn blog, and I hope to provide future visitors with quick, interesting, and relevant thoughts on trademark and copyright law!

– ck