Back in January, we began rolling out the Citizen Media Law Project's Legal Guide. So far, we've published major sections of the guide covering Forming a Business and Getting Online, Dealing with Online Legal Risks, Newsgathering and Privacy, and Access to Government Information. This week we are excited to announce that we've published the section on Intellectual Property, which explains various intellectual property concepts, including copyright, trademark, and trade secrets, and provides practical advice about how to use the intellectual property of others and protect your own work from exploitation.
A trademark is a word, phrase, symbol or other indicator that identifies the source or sponsorship of goods or services. If an individual, business, or other organization uses a trademark to sell or promote its goods or services, then it can gain the right to use the trademark and to exclude others from using the trademark in connection with similar goods or services. Owners of famous trademarks, like "Windows," "McDonald's," or "Google," may also stop others from using them in connection with dissimilar goods or services. Trademark law is a branch of intellectual property law that is governed by both federal and state laws. By far the most important trademark law is the federal Lanham Act; because state laws generally follow the Lanham Act, this guide focuses on it exclusively.
A basic understanding of trademark law is important to your online activities for two reasons. First, as a provider of goods or services (e.g., online publishing, educating the public, news reporting), you may want to use trademarks to identify your work to the consuming public. In that case, you'll want to understand how to protect your legal rights, so that others do not unfairly take advantage of your reputation and the positive association you've built up between your trademark(s) and your work. Second, you should understand how you can properly make use of someone else’s trademark for purposes of news reporting, commentary, criticism, and like activities. This overview page and the more detailed sections that follow will help you get a grip on both of these important aspects of trademark law.
Common examples of trademarks include "Yahoo!" in its characteristic red font, YouTube's slogan "Broadcast Yourself," and the venerable "New York Times."
Many trademarks use a stylized font or a particular combination of a logo and a product or business name, but a trademark can be as simple as a word in plain text, like "iPod," or a domain name, like "gmail.com," so long as the trademark owner uses it to identify its products or services. The crucial element is that the word, phrase, symbol, or design element act as a source-identifier for goods or services. If you want more information about what qualifies as a trademark, consult the section on What Trademark Covers.
To acquire rights in or "ownership" of a trademark, you simply need to use the trademark in commerce in connection with your goods or services. You do not obtain trademark rights through use in commerce, however, if your use is confusingly similar to someone else's prior use of the trademark. You may choose to register your trademark, but you are not required to do so in order to bring a lawsuit to protect it. Registering a federal trademark puts others on notice that you are using the mark, which may discourage them from adopting a similar trademark or business name in the future. It also helps you make out your case if you ever file a lawsuit to vindicate your trademark rights. Registration is fairly expensive, however, and you will want to consider whether the benefits of registration justify the expense. If you are interested in obtaining trademark rights, registering a trademark, or protecting your rights once established, see the Trademark Ownership page. In addition, we provide specific information about choosing a name for your website, blog, or organization in the section on Trademark Law and Naming Your Business.
The primary goal of trademark law is to protect consumers from confusion about the source or sponsorship of goods and services. It does this by allowing a trademark owner to prevent others from tricking consumers into buying a product or service they mistakenly believe comes from the trademark owner. Stated differently, the law helps consumers identify with accuracy the products and services that they want to buy and protects them from deceptive market practices. To see how this works, imagine a consumer - Sally. If Sally buys a computer that is labeled with the distinctive Dell logo, she can be pretty sure that the computer was made by Dell Inc. and nobody else. She can take Dell's reputation into account without worrying that a knockoff company is making shoddy computers and selling them with the Dell logo on them; trademark law prohibits this kind of confusing commercial activity, and it gives Dell the right to sue for trademark infringement if someone does so. In recent years, Congress has expanded the scope of trademark law to encompass harms other than consumer confusion, including dilution and cybersquatting, that we discuss below.
Federal trademark law protects against three distinct unlawful activities:
- Trademark Infringement: Trademark infringement happens when you use a trademark owner's trademark or a similar mark in a way that is likely to confuse the public into believing that the trademark owner is the source or sponsor of your products or services. This is the most common type of trademark claim, and it effectuates trademark's primary purpose of avoiding consumer confusion. See What Trademark Covers for details.
- Trademark Dilution: Trademark dilution happens when you use a trademark owner's famous trademark in a way that is likely to weaken its capacity to identify the trademark owner's goods or services or to tarnish the wholesomeness of the mark. The trademark owner need not show that you created consumer confusion, and dilution may occur even if your goods or services are completely different from the trademark owner's. Because of dilution law, it's probably not a good idea to call a blog "Kodak News" or "McDonald's Blog," unless it is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others carefully). For details on trademark dilution, see What Trademark Covers.
- Cybersquatting: Cybersquatting happens when you register, use, or sell a domain name with the intent to profit from someone else's trademark. Congress passed the Anticybersquatting Consumer Protection Act in 1999 to stop speculators from buying up multiple domain names and selling them at exorbitant prices to the legitimate owners of the associated trademarks. If your use of a trademark owner's trademark in a domain name does not fit this stereotypical model, you should be able to avoid cybersquatting liability. For details, see the Cybersquatting section.
Although trademark law provides trademark owners with a powerful tool for protecting the integrity of their trademarks, the law does not permit them to silence legitimate reporting, commentary, criticism, and artistic expression. As one court put it: "Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view." L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987). Because of the important role that trademarks play in our cultural vocabulary, "much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark." The New Kids on the Block v. News America Publ'g, 971 F.2d 302, 306 (9th Cir. 1992).
The good news for citizen media creators is that the courts have therefore consistently protected the public's right to use the trademarks of others in order to engage in criticism, commentary, news reporting and other forms of noncommercial expression. This point is of special importance not only to journalistic sites, but also to gripe sites that focus criticism on particular companies and often use the companies' trademarks in their domain names. While the law is solicitous of your rights of free expression, the legal doctrines in this area are complicated. For this reason, it may be difficult to understand just how the law protects your use of a trademark in a particular act of reporting, commentary, criticism, and the like. If you want to make use of another's trademark in the course of these kinds of activities, you should consult the section on Using the Trademarks of Others.
Finally, if you host user-generated content, such as user comments, you'll want to consider whether trademark law will hold you responsible for materials posted on your website or blog by your users. Unfortunately, the protection provided by the "safe harbors" of the Digital Millennium Copyright Act and section 230 of the Communications Decency Act generally do not protect you from trademark claims. For details, see Trademark: User-Generated Content.
This guide is not a full treatment of trademark law, but it does provide what we hope is a good understanding of how to deal with the legal issues surrounding trademarks.