Capitalizing on an established brand can be good for sales and brand awareness. You can attract new customers to your business, keep loyal customers, and improve sales. While using someone else’s trademark may sound beneficial, there are laws that prevent you from doing so.
Doing so can land you in trouble, especially if you’re in the same vicinity as the other person. They can sue you for infringement, especially if the trademark is already registered.
If you’re unsure of what to do, speak to a lawyer. However, you should speak to one within the same location as the trademark you want to use. If you and the other person operate your businesses in San Diego, speak to any trademark lawyer San Diego has.
Typically, the only exception to this restriction is if it’s for informational or editorial use. But what should you do if that’s not the case and you wish to use it for another purpose? Well, buckle up and read on to find out!
What to do before using someone else’s trademark
Before using someone else’s trademark, you must ask for permission from the owner before using it unless it’s for editorial or informational purposes. In fact, there is a term used for this: trademark permission.
How is trademark permission helpful? Obtaining trademark permission allows you to use someone else’s trademark legally. Doing so can help you to increase awareness, sales, and good customer associations for your own business.
Using another person’s trademark illegally can result in a federal lawsuit and negative publicity. As a result, you may have to pay damages which may result in bankruptcy which is not ideal you want if you want your business to grow. It can also reflect badly on your brand or any future brands you create and will likely affect your existing and potential client base.
Therefore, you should use the proper means to get permission to use the trademark. You should ask for permission and adhere to the laws guiding intellectual property rights and trademarks.
Of course, there’s another exception for when you can use a trademark without permission, and it’s called the fair use doctrine. If you want to use it for a “limited and transformative purpose,” then you don’t need permission from the owner. However, this doesn’t cover usage for profit, regardless of how little you make.
If you want to use a trademark for a non-profit purpose, you must carry out the four-factor test to check whether the fair use doctrine covers your usage. Consider the intended purpose of use, the nature of the material copied, the value of the copyrighted work, and how much is copied.
Asking for permission isn’t complicated. The owner may allow you to use the trademark at a cost or even for free. Depending on the owner, you may have to pay a licensing fee and sign a licensing agreement.
It can sometimes be difficult to determine when to ask for trademark permission. If you’re unsure, speak to a trademark lawyer for clarity.
How to ask for a trademark permission
Usually, asking for permission is simple, but it depends on the trademark owner. In most cases, there are steps you can follow to achieve your goals. Below are the steps to follow:
Find the owner
The first step to asking for permission is to track down the trademark owner. It’s much easier if you know where they’re located but if you don’t you can search for them through the state trademark or USPTO database. This is one of the easiest ways to find the owner.
You might even get lucky and realize that the trademark is no longer valid, which means that you won’t need to get permission. However, if it’s still valid, you’ll need to ask. You can also search through the company’s website or online trademark databases. Lastly, you can ask a trademark lawyer to help you find the owner.
Get licensing requirements
After finding the owner, reach out to them. You can contact the owner or attorney-of-record through postal mail, email, or your trademark attorney. In the message, you should include all necessary information about your business that you think the owner should know and how and where you plan to use their trademark.
You should also check to see whether the owner has an established procedure for licensing their trademarks. Otherwise, ask the owner if they can agree to a licensing agreement prepared by a trademark lawyer.
Negotiate permission to use the trademark
Established businesses usually have attorneys or a trademark licensing office that handles trademark permission requests. If they don’t, you will both need a trademark attorney to draw a trademark licensing agreement.
Work with a lawyer to ensure a smooth negotiation between you and the trademark owner and to ensure no one is ripping you off.
Sign an agreement
Negotiate with the owner and get a written licensing agreement. You should ensure that the license agreement clearly specifies the duration of the license, whether it’s renewable, and if the trademark usage is exclusive or not.
The agreement should also clearly state payment terms, whether you’re paying a license fee up front, a sales percentage, a lump sum, or a combination of any. A trusted trademark lawyer should look through it before you sign it.
After reviewing it, you can sign the agreement and start using the trademark. Once you sign it, the agreement legally binds both parties to the contract and you can revisit the contract in the future to avoid any misunderstandings.
Using another person’s trademark without permission is serious. If you don’t want the owner to sue you in court or ruin your brand’s reputation, getting permission is crucial.
Check with a lawyer to determine your intended usage and see if you need to obtain permission. You may realize that you don’t need actually it!
If you do need permission, hire a trademark lawyer. They can carefully look over the agreement for you and will help you negotiate favorable terms throughout the period you intend to use the trademark.