Allowing Third-Party Use of Marks Without Risking Abandonment

Abstract

Trademark law does not grant the absolute right to exclude, as copyright and patent laws do, but rather only gives the trademark owner the right to prevent a likelihood of confusion and, in some cases, dilution. Therefore, the law freely allows the use of your trademark, in its trademark sense, by others as long as there is no likelihood of confusion. We identify some commonly occurring fact patterns as defenses, but some are not true defenses but an acknowledgment that in some particular fact patterns, such as nominative fair use and parody, there is no likelihood of confusion. Therefore, a trademark owner has no ability, and therefore no duty, to enforce these non-infringing uses. At the other end of the spectrum, a trademark owner who does not enforce its rights where there is a likelihood of confusion is at risk of weakening the distinctiveness of its mark or losing its mark altogether. With the growth and adoption of social media, marketing departments are advised that they need to engage the consumer base and let their customers advocate for and endorse the company. Further, social media have given customers a platform for publicizing what they perceive to be over-enforcement of rights, which can create a publicity nightmare for the company. This means that the aggressive enforcement standards that we have been quick to apply in the past may not be appropriate for the new world of social media. But, in order to be able to step away from a maximal enforcement position, we have to better understand the risks of reduced enforcement and more carefully balance the risk against the advantage of having customers as brand ambassadors on social media. This article attempts to do that.