No! There is a doctrine of “fair use” in trademark law called “nominative fair use” that allows for the use of someone else’s trademark to refer to that mark for purposes of mentioning the owner’s goods and services that are associated with the famous mark. This is done to provide additional information to the consumer, so that the consumer knows what the goods and services are for, and it’s not considered “tradeamark use” as to the famous trademark, but rather “nominative use.” Nominative trademark use is a sort of “calling out” what other goods and services the user’s goods and services are compatible with or are used with.

We see this all the time! For example, when people create software, and say that the software is “compatible with Apple (r) computers, the software creator is not claiming that the software is from Apple; they’re just saying that the software can be used with the Apple operating system. This is important for consumers to know, because if you don’t have an Apple computer, then you won’t be able to use the software .

The same goes for courses that teach people how to get more clients on LinkedIn, or how to use the Facebook ad platform. If you’re not using these trademarks to imply some sort of association with LinkedIn or with Facebook, this nominative fair use is legally permissible.

We sometimes also see “nominative trademark use” with comparisons of certain goods. Reviews, for example, do this quite often, and compare goods and services with competing goods and services. This is covered under the “fair use” provisions of trademark law which allow the use of others’ trademarks to name the goods and services being compared. Without the use of the trademark, it might be difficult for a consumer to know exactly what goods and services are being compared. We don’t want to restrict the flow of information by forbidding this sort of nominative trademark use. It’s not trademark infringement to use someone else’s trademark in a comparison of goods and services. 

The bad news: These big companies like to bully small creators, even if you have a disclaimer that your product isn’t associated with the famous brand. They know that they can bury a small business with legal proceedings and threats, and they have endless money to do this. So the owner of the brand may try to bully you into submission, even if your using the trademarks in a legally permissible manner.

Bottom line: If you’re going to use someone else’s famous trademark in your product name or description, be prepared to give this up if you get a cease and desist letter from the owner of one of these famous trademarks. Yes, your use may be legally permissible, but if you don’t have the money to fight about it, then it’s better to choose a different name. Tread carefully when using ANY famous mark.

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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.