The Cyberlaw Guide to Protest Art: Trademark

6 min readJan 22, 2018

This is the Trademark section of the Cyberlaw Guide to Protest Art. It covers what trademark protects, and when you can use another person’s trademark (with or without their permission). To get an overview of the complete Guide, visit the Roadmap, or link to the other sections here:

Copyright Part 1: what copyright protects (and what it doesn’t) and how to deal with copyrighted works
Copyright Part 2: the law of fair use — what it is, how it’s determined, and the risks of fair use
Copyright Part 3: getting permission to use the work of others — how to identify a copyright owner and how to make a license request
Rights of privacy and publicity: legal rights of privacy and publicity, which are implicated when protest art features real people
Sharing and merchandising your work: licensing your work including with Creative Commons, using disclaimers, and making money

What Is Trademark?

A trademark is a word, symbol, or phrase used to identify and distinguish a particular manufacturer or seller’s product. The Nike “swoosh,” McDonalds arches and Adidas stripes are all examples of registered trademarks. Trademarks can take the form of a brand name, logo, slogan, or some combination thereof.

For trademark protection, a mark must be recognizable enough that the consumer will recognize the brand or manufacturer. This means that something generic, like an American flag logo for a company that sells American flags, would not qualify for registration. However, more specific phrases, like “Sweatsuit Nation” or “Mission Mountain Gun Owners” would be eligible.

What does trademark protect?

The owner of a trademark has the exclusive right to use it in commerce, which means they’re the only person who can use that word, logo, or phrase to make a profit. If someone other than the trademark owner is selling something and uses the trademark in a way that’s likely to confuse a consumer about the brand or manufacturer, the trademark owner can sue them for trademark infringement.

For example, if a graphic designer with the last name “MacDonald” were to develop a logo— say, a curvy yellow “M” — to feature on his website header and as a signature on his artwork — it would probably be okay. However, if the same designer subsequently tried to produce a line of snacks or food products featuring his new “M” logo, it’s not hard to guess who might file a trademark infringement suit in response. The “M” logo combined with the “MacDonald” name used in connection with food products would almost certainly confuse consumers about the origin of the products — they might think that McDonald’s (of the Golden Arches fame) were somehow affiliated with the graphic designer’s new snack line.

Why register a trademark?

While a copyright automatically exists in most creative works, trademarks must be registered with the U.S. Patent and Trademark Office (USPTO) to receive full legal protection.¹

If the owner of a registered trademark thinks her mark is being infringed anywhere in the country, she may sue in federal court. If the trademark owner is able to prove infringement, available remedies include:

A court order that the defendant stop using the trademarked material
A court order requiring the destruction or forfeiture of infringing articles
Monetary relief, including the defendant’s profits or damages sustained by the plaintiff
Payment of the plaintiff’s attorney’s fees

You can tell a mark is registered by use of the symbol “®”.

However, owners of common law or unregistered trademarks do still have some rights. An unregistered mark will not receive as much protection — for example, the owner of an unregistered trademark can only assert her rights in the geographic market in which her business already operates. She can’t enforce her rights in other cities and states. If the owner thinks that someone is copying her unregistered trademark, she will usually be able to sue in state court, but not federal court, and she may not be able to collect monetary relief or recover attorney’s fees. Typically, an unregistered trademark owner’s remedies are limited to injunctive relief — that is, a court order demanding that the infringer stop using the mark, but no money damages. You can tell an unregistered mark by use of the symbol “™”.

When Can You Use Another Person’s Trademark?

Commentary and criticism

As a general rule of thumb, you can use trademarks freely for commentary and criticism.

For example, an artist could use the Barbie logo in artwork critical of Barbie’s unrealistic beauty standards, and the owner of the trademark wouldn’t be able to silence him. However, this is only true as long as there is no risk of confusion between the artist and the trademark owner. In other words, it has to be clear that the Barbie trademark owner has not created or endorsed the artwork. The same artist would open himself up to infringement liability if he used the Barbie trademark again in an unrelated context — say, materials promoting the campaign of a blonde politician. A consumer might be confused by the reference to Barbie and conclude that that the Barbie trademark owners were involved in promoting the candidate.

Nominative fair use

You can also use a trademark in the context of nominative fair use. This is a technical term for a concept that’s not too technical at all. When you need to use a trademark to identify a product so you can talk about it, that’s nominative use. This legal doctrine acknowledges that sometimes we need to use trademarks to be clear when we’re talking about another party’s products or services, and not because we’re trying to profit off of that use. If musician were to write a song about big corporations intruding on the market for local coffee shops, she might find it necessary to reference certain trademarked products, like a Frappuccino®.

Parodies

You can also use trademarked elements in parodies, as long as the parody is not tied too directly to commercial use. In one parody-related lawsuit, the federal court described trademark parody as a cultural necessity:

“Trademark parodies, even when offensive, do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark.”²

However, just like with commentary and criticism, courts will consider the likelihood of consumer confusion in determining whether a parody uses trademarked material appropriately. Your parody can evoke the original but must clearly not be the original (i.e., it must be something new, commenting on the original). For example, a court concluded that a pornographic parody of Star Wars was not infringing the Star Wars trademark because it merely evoked the original, and the likelihood of consumer confusion was small.

Also similar to criticism, your parody must be aimed at the trademark owner or their goods and services, not an unrelated third party or issue. For example, a parody using the Nike trademark must be aimed at Nike (its products, business practices, etc.). You can’t just use the Nike mark to criticize another company or person in a more attention-grabbing way.

Again, if your parody confuses consumers (i.e., they believe the trademark owner created or sponsored your work), you may be liable for infringement. This means when you are trying to sell something or make a profit, you should tread more carefully around others’ trademarks — remember that courts will likely view artistic and editorial parodies more favorably.

The Cyberlaw Guide to Protest Art: Trademark

What Is Trademark?

When Can You Use Another Person’s Trademark?

Read More!

Written by Cyberlaw Clinic