[E-trademarks] Fair use or infringement/misuse question

Tue Jun 11 14:34:27 UTC 2024

I think you need to give us more facts.  Is the show fictional?  Does the nature of the use imply some kind of endorsement by your client?  Mere use of a third party trademark by others, particularly when it is used on the actual goods provided by that party, is generally not infringement unless the use is somehow confusing to the public (so, for example the mark is used on goods not made by the mark owner, or the use implies some kind of sponsorship).  So, for example, Caterpillar lost a TM fight against Disney over a straight-to-video edition of George of the Jungle that used Caterpillar bulldozers and helmets in the video.   https://law.justia.com/cases/federal/district-courts/FSupp2/287/913/2476226/

Kevin Grierson
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  757-726-7799<tel:757-726-7799>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Hoffer, Paul via E-trademarks
Sent: Tuesday, June 11, 2024 9:08 AM
To: e-trademarks at oppedahl-lists.com
Cc: Hoffer, Paul <phoffer at harnessip.com>
Subject: [E-trademarks] Fair use or infringement/misuse question

EXTERNAL EMAIL
Dear list:

I would appreciate any comments and thoughts on the following situation.  A client’s trademark recently appeared on a streaming service produced show. No permission was sought to use the mark. The producers of the show have stated that it is standard policy not to ask permission to use the trademarks of others.  However, in this situation the client’s trademark has been altered or a mocked-up prop using a variation of the client’s trademark was used.  Would this still fall under fair use or has the line of infringement/misuse been crossed?    Alternatively, and assuming the client doesn’t wish to press the issue, should the client somehow try and capitalize on the popularity of the show?

Thank you for your input.

Paul R. Hoffer
Of Counsel
O: 248.641.1224<tel:248.641.1224>
5445 Corporate Dr, Suite 200
Troy, MI 48098
[Harness Intellectual Property Law Since 1921]<https://www.harnessip.com/>

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