Can I use this? When a trademark can and cannot be used
"I’m creating a LinkedIn training product. I was just wondering if there are any legal issues with having LinkedIn mentioned in the product title?"
You have created an awesome product that will help users of the popular website LinkedIn.com learn how to navigate the website better. You are mulling over names for your product, but everything you come up with includes ‘LinkedIn’ in the name. Can you do that? Is that trademark infringement?
Let’s begin with the basics of trademark and trademark infringement, and then go into when a trademark can or cannot be used.
Trademarks
The United States Patent and Trademark Office (USPTO) states, “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” As soon as the trademark is used in commerce or registered with the USPTO, legal trademark protections are activated.
Some examples of trademarks include:
- The Nike Swoosh
- The word “Disney”
Trademark Infringement
Trademark infringement is when a mark is used by someone who is not the trademark owner in a way that will likely cause consumers to be confused about the source of the trademarked item. To prove a case of trademark infringement, the owner must meet three criteria:
- They have a valid and legally protectable mark,
- They own the mark; and
- The defendant’s use of the mark to identify goods or services causes a likelihood of confusion.
Some examples of trademark infringement include:
- Using the Nike Swoosh on a pair of athletic shoes that were not produced by Nike.
- Using the word “Disney” on the cover of a children’s book that was not produced by Disney.
Note that if a company that sold cookies wanted to use a graphic in their logo that looked like the Nike swoosh, they likely could do so without committing trademark infringement, as the main purpose of trademark law is to prevent consumer confusion. Most consumers would not think the athletic giant had gone into the cookie-baking business.
Using Trademarks
A trademark cannot be used for a commercial purpose without permission from the owner. Examples of commercial purposes include advertising, merchandise, and presentations.
A trademark does not prohibit the use of the word/name/symbol altogether. Some ways that you may use the word/name/symbol while avoiding trademark infringement include:
“Fair Use”
Under the Fair Use doctrine a trademark may be used without permission for commentary or criticism as long as the purpose of the use is not the same purpose of the trademark (e.g., using the name the New York Times for another newspaper). This doctrine includes informational, editorial, and comparative purposes.
One important caveat here is that the use of the trademark must be relevant to the work. For example, it would likely be ok to use the Nike swoosh in an article regarding the shoe business, but probably not ok to use the Nike swoosh on an advertisement for basketball hoops.
Collateral Use
A trademark may be used without permission for identification purposes when the trademarked item is a part of a larger product. For example, if a car comes with XYZ tires, the car company can mention that fact using the trademark ‘XYZ tires’.
Parody
A trademark can be used in a parody in order to make light of the specific trademark. The parody must not result in competition or confusion between the trademark and the parody of the trademark.
Trademark Policies
Many companies have specific policies regarding the use of their trademarks. They may be found under titles such as Trademark Policy or Branding Policy. Generally, the company will require express permission in order to utilize any trademark that they own. The policy will also likely include how the company prefers their trademarks to appear for uses that do not require permission.
Trademark Symbols
When legally using a trademark in a commercial manner you must use the correct symbol with the trademark. For a trademark registered with the USPTO the symbol ® should come after the trademark. For trademarks that have not been registered with the USPTO, the trademark should be followed by TM (trademark) or SM (service mark) instead of the ® symbol. Further, the trademark should appear exactly as it does in the USPTO registry.
When using a trademark in a non-commercial manner, a symbol is not required. Often, the trademark is capitalized or italicized in order to call attention to the fact it is a trademark.
Our Scenario
So, can you use the term ‘LinkedIn’ in the name of your training product? Let’s see!
Our first step will be to see if LinkedIn could likely prove a case of trademark infringement if you use their name in your product’s name. As discussed above, there are three criteria that must be met to prove trademark infringement. Let’s go over each one:
They have a valid and legally protectable mark.
Yes. LinkedIn Corporation likely has a valid and legally protectable mark. According to their Branding Policy, “LinkedIn, the LinkedIn logo, the IN logo and InMail are registered trademarks or trademarks of LinkedIn Corporation and its affiliates in the United States and/or other countries.”
They own the mark.
Yes. LinkedIn Corporation actually owns a LOT of trademarks regarding the name LinkedIn in different variations. This can be easily verified through a quick query via the USPTO Trademark Electronic Search System (TESS).
The defendant’s use of the mark to identify goods or services causes a likelihood of confusion.
Probably. If your product is dealing with navigating the business-networking site and includes the name ‘LinkedIn’ in it’s name, it is likely that a consumer will believe that LinkedIn Corporation created the product.
Since it looks like it would be trademark infringement, in order to use ‘LinkedIn’ in the name you would have to fall under one of the exceptions. Let’s double-check each one:
“Fair Use”
Probably not. Using ‘LinkedIn’ in the name of a product built to navigate the trademark’s website is not commentary or criticism. In fact, it would likely to be found to be a commercial use, which always requires permission from the trademark owner.
Collateral Use
No. The trademark ‘LinkedIn’ is not a part of a larger product allowing this use.
Parody
No. Using ‘LinkedIn’ in a name of a product built to navigate the trademark’s website is not a parody.
The last chance is the company’s Trademark Policy. According to LinkedIn’s policy, you basically must fall under an exception or have permission. The exception would be if you are a third-party developer, in which case they allow the use of their name and specific logos if you meet very specific criteria.
In summary, you most likely cannot use the trademarked term ‘LinkedIn’ in the name of your product without the Corporation’s permission.
Additional resources:
Protecting Your Trademark: Enhancing Your Rights Through Federal Registration
Cornell Law School: Trademark Infringement