Trademark Fair Use
by Jean Perwin | July 7, 2008
Design-related legal, copyright, trademark, or intellectual property rights confusion? NoD guest author and legal expert Jean S. Perwin is taking questions. If you have questions for Jean, email them to us using editor (at) notesondesign.net. Jean will reply to questions frequently here under the “Intellectual Property” category of NoD.
I’m a graphic designer who has recently done some campaign work for a local (county) race. The initials of the client are M.M. and this person desperately wanted to include some M&M candy type reference in the campaign materials. The final design includes a quarter-circle with a slab-serif lowercase m (not the actual M&M typeface, but similar), stuck up in the corner. It’s not the main image, but it is there. Is this ok under trademark law? I *think* so since it’s not really a commercial use, but can’t find a definitive answer anywhere.
The reason it’s hard to find a definitive answer is that there really isn’t one. This is the grey area of trademark fair use. You can use the trademark of another if it is being used to represent the product or company it actually represents. For example, if you repair cars, you can use the GM or Ford marks to indicate that you repair GM and Ford cars. But, if the mark is being used to promote something other than the product it represents, it’s not fair use. If you were my client, I would advise you NOT to use the M&M mark in this context. Even though it’s not a commercial use of the mark, it’s still using the mark to promote something that’s not candy without permission. It associates the mark with a political campaign that may or may not reflect the views of Mars, the maker of M&M and the owner of the trademark, but implies that it does. Your client would be better off and legally safer buying personalized M&M’s with his or her name on it and distributing them. Then they get to use M&M’s without a legal problem.
Jean Perwin is a Miami based attorney who specializes in Intellectual Property Law, Entertainment, and General Corporate Law.