Trademark Rights are Limited
A trademark owner can stop other businesses that sell the same product or service from using a confusingly similar trademark in a way that is likely to cause customer confusion about the source of the goods or services. That’s it. That’s all the power a trademark owner has. If there is no confusion, then there is no infringement.
So for example, companies making different products can use identical trademarks, like GERBER for baby food and GERBER for knives. No one is likely to confuse baby food for knives, or vice versa, and so there is no infringement.
Case in Point: The Baltimore HONtroversy
Nevertheless, people often get all huffy when they think that by “trademarking” a word, someone is claiming an absolute and exclusive right to use that word for all purposes. For example, in 2010 Baltimore erupted in protest over a restaurant owner who registered a trademark for the word HON (short for “honey”). Baltimoreans, many of whom take local pride in this “working-class term of endearment,” insisted that no one should be able to “own” it, and they vented their anger through forums like “No one owns HON, Hon,” “TakeBackHon” and “Honicide.”
This was just silly. The restaurant owner correctly pointed out that despite her trademark registration, the term HON “absolutely belongs to everyone in Baltimore” and “I cannot take away the noncommercial use of the word . . . the trademark has to do with commerce.” It didn’t make any difference. Eventually protests and boycotts forced her to abandon her registration.
IMAX’s Deputy General Counsel Thinks Trademark Trumps Free Speech
This sort of misconception is understandable on social media, but it’s another thing altogether when the Deputy General Counsel of a major corporation claims that ownership of a word trademark allows her company to stop any use of that word.
“It’s like saying, ‘I have an IMAX Theater in my house.’”
Based solely upon this statement, G. Mary Ruby, who serves as Deputy General Counsel of IMAX Corporation, sent a cease-and-desist letter to Ars Technica on Thursday asserting that because IMAX Corporation owns the federally registered trademark IMAX, and because “unauthorized use of our trademark is expressly forbidden,” Ars Technica should issue “a written retraction immediately” and should not use the term IMAX in any future articles relating to SteamVR.
A Trademark Owner Cannot Prevent Use of That Trademark to Refer to the Owner or its Products
As Ars Technica notes, this is an absurd legal position. For starters, IMAX Corporation’s products and services don’t include technology journalism. It manufactures cameras and audio-visual systems, and it sells motion picture services. No one is likely to confuse it with Ars Technica, or mistake Ars Technica’s internet articles for IMAX movie cameras or IMAX movie projectors. Without any likelihood of confusion, there can be no trademark infringement.
More fundamentally, however, the claims of the IMAX Deputy General Counsel fly in the face of the First Amendment. If a business could prevent anyone from using its trademark for any purpose, then no one would be able to write about that business without its permission. The business would only approve favorable mentions in the news media and would become immune to public criticism. Obviously the First Amendment does not permit this.
Textbook trademark law reflects this principle. For example, it’s fine to use another business’s trademark when describing your own products. This is called “nominative fair use.” So, say that the Indomitable Corporation, which makes cell phone cases, wants to print on its packaging, “Our Indomitable™ Cases are compatible with Apple’s iPhone 6!” This would be fine. So long as the Indomitable Corporation does not use APPLE or IPHONE to designate the source of its products, it is free to use those terms to describe its products.
By comparison, not many textbooks (or court decisions, for that matter) discuss situations like this one, in which a company tries to stop journalists from using its trademarks in news articles. Probably this is because not many corporate attorneys are as poorly-informed as the Deputy General Counsel of IMAX Corporation.
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