Back to Lesson Index


Lesson 28 - Trademark 3:

What Happens if I Use
Someone Else's Trademark?

Up to now, we've been talking about how you get a trademark - how you convert a word or phrase or design into something the law recognizes as a trademark. But most of us will rarely have to think too much about this problem, because we're not going to be producing that many trademarks of our own. A more important question might be: what can you do, and what can you *not* do, with someone else's trademark? What can the owner of the trademark do to you if you use his or her trademark?

Well, as we lawyers are fond of saying, that depends. It depends mostly on what kind of use you are making of the other person's trademark. Generally speaking, you cannot use another person's trademark if that use would confuse the reasonable consumer about the identity of goods or services associated with that trademark. So, for example, you are *not* infringing anyone's trademark when you:

  1. put in an advertisement that the software you are selling is "compatible with Microsoft Windows,"

  2. write an article that repeatedly refers to the Nike shoes that the protagonists were wearing, or

  3. market a kind of home-made soup under the name "Lotus."

Windows, Nike, and Lotus are all trademarks, of course - but the particular uses you are making of them in the above examples is not likely to confuse consumers about the identity of particular goods. In the first two cases, you haven't tried to associate the trademarks with any goods other than the ones with which they are properly associated - Windows software and Nike athletic shoes. In the third case, you can plausibly argue that soup and software are not the kind of goods that consumers get confused about, and that no reasonable consumer - indeed, no one in their right mind - would think that your soup, and the Lotus Corporation's software, come from the same source just because they share the same name.

One important caveat here. Some trademarks are *so* distinctive that they get broader protection than this. Owners of particularly famous trademarks can protect them not only against "confusing" use by others but against what is called "dilution" as well. A trademark is "diluted" if its association with someone else's products injures the general goodwill and reputation associated with the trademark, even without any confusion among consumers. In other words, the Coca-Cola company might be able to stop you from marketing a Coca-Cola brand of shoes even though the differences between shoes and soft drinks are sufficient to avoid any possible consumer confusion. They can use anti- dilution laws to claim that their trademark is so well-known that it will inevitably be tarnished by your use.


authors:
Larry LessigDavid PostEugene Volokh


Back to Lesson Index

Copyright © 1999 Social Science Electronic Publishing, Inc. All Rights Reserved