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I have to admit, I have a certain affinity for Johnny Cash songs, and “I Walk the Line” is no exception. Ostensibly written as a pledge to his first wife Vivian to remain faithful to her when he was on the road touring, it became his first #1 Billboardhit. The first verse says it all:
I keep a close watch on this heart of mine
I keep my eyes wide open all the time
I keep the ends out for the tie that binds
Because you’re mine, I walk the line
Oddly, applying these lyrics to policing the use of your trademarks may not make much sense at first, but bear with me — there is a lot more here than meets the eyes (and ears).
Policing third-party use of your trademarks, whether in traditional media or online, is a delicate task. As a trademark owner, there is a duty to police your trademarks under the law that, if not property and consistently executed, can impact the strength of the trademarks at issue. Of course, addressing third-party marks that bear a “likelihood of confusion” with your mark(s) is a foundational part of stemming any potential trademark infringement. Any valid policing strategy, however, must go beyond “classic” trademark infringement, such as where third-parties do not use a confusingly similar version of your trademark, or otherwise actually use your trademark in their print marketing as well as their online advertising.
It may come as a surprise to the uninitiated that third-party uses of your trademarks are not per se infringing uses. You read that correctly — not all uses of your trademark by others are infringing uses. Trademarks are defined under the Lanham Act as follows:
[A]ny word, name, symbol, or device, or any combination thereof… used by a person, or… which a person has a bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. § 1127.
Pardon the refresher, but it is essential to understand that trademarks distinguish the owner’s goods and services from those of another through use, but they must also act as a source identifier for the goods and/or services. To avoid an infringing use, therefore, any third-party use cannot present a likelihood of confusion between the original trademark owner and the third party using the trademark. If there is no likelihood of confusion presented by the third-party use of your trademark, there can be no infringement, and its use is deemed trademark “fair use.” Seems simple, but like most applications of the law, the devil is in the details.
Trademark “fair use” can be divided into two categories: classic (or descriptive) fair use, and nominative fair use. Under classic fair use, a third party would be using your trademark(s) in a descriptive way. For example, using a red and white target and the term “target” to describe a third party’s archery target would not infringe upon Target Corporations iconic bullseye target and “TARGET” trademark if such use is truly descriptive — in other words, that such use is descriptive of a nature, quality, ingredient or other attribute of the goods or services. If the use is not purely descriptive, then the third-party use begins crossing the line of trademark infringement because of potential confusion in the marketplace.
Nominative fair use is less evident — it deals with the third-party use of your trademark when referring to your product in the third-party marketing materials and advertising. Nominative fair use is most common where there is a comparison being made between the third-party product/service and the goods/services under you trademark(s). Essentially, such nominative fair use is permitted so long as there is no confusion created by the use and there is no indication of sponsorship, affiliation or endorsement of the third-party by the trademark owner. Unfortunately, there is no uniformity of authority in the circuit courts regarding nominative fair use analysis, making the engagement of qualified intellectual property counsel essential when evaluating any such possibility.
When it comes to policing third party use of your trademarks, three primary considerations therefore come to mind that any trademark owner must heed:
Don’t Jump to Conclusions. Believe me, I get the frustration when a brand identifier is being used by a third-party (especially a competitor), and it is absolutely understandable to express concern. That said, not every use of your trademarks is infringing, and any review of the potentially infringing use must be approached methodically and reasonably. Trademark owners must be open to the possibility that third parties may use their marks in a way that simply doesn’t rise to the level of actionable infringement. Put another way, any non-trademark use of the term by a third-party would not infringe your trademark(s).
Don’t Miss the Forest for the Trees. When it comes to trademark policing, nothing is more frustrating than dealing with a stubborn adherence to certain facts without looking at the use as a whole. Again, emotions understandably run high when third party use is uncovered. That said, a review of the potentially infringing use must address the use in context — like the old maxim, focusing on certain aspects of the problem can act as blinders to the situation and impair the analysis. Sometimes the third-party use may “walk the line” of fair use of your trademark(s), so don’t let your passion for the brand overwhelm reason in policing the problem.
Don’t Go It Alone. I cannot stress enough how essential it is to engage qualified intellectual property counsel when developing and executing any trademark policing program. Especially when dealing with potential nominative fair use, it is important that the brand policing team not only appreciates the problem, but can act with internal checks and balances to ensure a diligent and reasonable approach to the situation. I have previously written about approaching such policing when it comes to social media and the pitfalls of being too aggressive, and third-party fair use is no exception. This is an area where using qualified intellectual property counsel is invaluable and worth every penny in protecting your brand.
Policing third-party use of trademarks requires a rational approach infused with a good dose of diligence and patience. Third-party use of your trademarks may or may not “walk the line” of trademark infringement, but I can assure you that your policing strategy will need to “walk the line” in its own way as well. If not, then you may end up in a “ring of fire” that you may not be anticipating, and burn your trademarks (and business reputation) in the process.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.
Walking The Line: 3 Considerations When Policing Third-Party Fair Use Of Trademarks curated from Above the Law
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