Trademark Law: Using someone’s trademark in your book, blog or website

Using someone’s Trademark in your book, blog or website is something that you need permission to do.  Generally, trademark owners monitor use of their registered trademarks diligently and will often send cease and desist letters asking that unauthorized uses of their trademark be removed.  (For example the NFL and POPSICLE trademarks are heavily monitored and policed in this way.)

How do you figure out if a word is a registered trademark?  Sometimes you can tell by doing a quick GOOGLE search, or for a more definitive search look on in the USPTO’s list of registered trademarks.  Here are instructions for running a basic USPTO (US Patent and Trademark Office) search to see if a word is a trademark:

• Click – http://tess2.uspto.gov/
• Then Click on – New User Form Search (Basic)
• Enter your business name in the ‘Search Term’ field
• Click – ‘Submit Query’
• To be really comprehensive, Back-page and search the key words in your business name separately

If you discover that a word is a trademark, it is possible that the trademark owner will give you permission to use their mark… ask em.

You might enjoy knowing that the inspiration for this post came up last night while I was talking to my mom.  She is currently writing a children’s story about a horse that likes specific types of candies as treats.  So, in order to list the candies in the text of her story, it’s important to know which ones are trademarks and which ones are not.  This way she can acquire the needed permissions to use the trademarks.  (my mom’s site –  http://www.bayouponytales.com/ )

Owning a Trademark = Power (Exclusive Use of a Trademark)

A major benefit of registering a Trademark is the exclusive right to use the Trademark, which comes with registration.  Ownership of a registered Trademark bestows an exclusive right to use the Trademark with or on ALL similar goods and services.  This exclusive right restricts other people, companies and businesses from using your Trademarked term or logo on similar goods and services.  This exclusive right can be a powerful tool in the marketplace.

For example, POPSICLE is a registered Trademark of Unilever and only Unilever has the authority to use the word POPSICLE when selling, advertising and promoting frozen treats on a stick.  This means that the word POPSICLE is off limits to any other person or company selling frozen treats on a stick.  POPSICLE cannot be used on other companies’ product names, blogs, napkins, merchandising, or advertising.  As you can see, this carries a lot of weight in the market place against competitors.  The unauthorized use of the mark POPSICLE recently put a small shop in Brooklyn in a bind when they started making and selling a product called ‘People’s Popsicles.’  Since the shop did not have permission from Unilever to use the POPSICLE trademark, the shop had to rename their product, print new merchandising, and erase every use of POPSICLE from their menu and blog.

Exclusive use rights that come with owning a registered Trademark are powerful.  Don’t underestimate their value in the market place.

BY: Vanessa Kaster, Esq., LL.M.

For more personalized legal services contact me at vk@kasterlegal.com

More information on this subject:  http://www.kasterlegal.com/storage/NYSBA%20Electronically%20In%20Touch.%20%20Article%20by%20Vanessa%20Kaster.pdf ; http://www.nysba.org/Content/NavigationMenu24/ElectronicallyInTouch/2010Issues/September2010/default.htm