1. What is figurative use of a trademark?
In the United States, figurative use refers to the use of a mark, generally owned by another company, to attribute the characteristics, qualities or attributes of the product or service identified by that mark to a different type of product or service, or to a person or intangible object. Examples include “the Rolls-Royce of hair dryers,” “the Teflon president” and “placing a Band-Aid on the problem.”
Note that the word “figurative” is often used in various countries other than the United States to describe a design or image mark.
Figurative use is also different from generic use of a mark. Generic use of a mark refers to the use of a trademark to identify the product or service in that industry, rather than to identify the owner of the trademark. Examples of generic use include: “I need a Kleenex” rather than “I need a tissue,” or “Xerox this letter” rather than “photocopy this letter.”
2. What types of trademarks are used figuratively?
Typically, only well-known marks are used in a figurative sense. Therefore, customers are not likely to be confused as to the source of origin when encountering a figurative use. In the first example above, most people know, or believe, that Rolls-Royce is not a trademark for hair dryers, thus limiting the success of an infringement action.
3. Is figurative use of a trademark beneficial to the trademark owner?
The interest of a trademark owner may or may not be served by its figurative use. If the trademark is used in a derogatory or unseemly way, or to describe a poor quality product, the figurative use may be harmful to the trademark. The trademark owner also cannot control the figurative use of its mark by a third party. On the other hand, figurative use of a mark may be beneficial in certain contexts such as when it supports a claim of distinctiveness or the famous character of a mark, and when the trademark is used under the premise that the public knows the mark and the characteristics of the underlying product associated therewith.
4. Can figurative use of a trademark by another violate the trademark laws?
Figurative use of a trademark may be a violation of the trademark laws if it leads to public confusion as to the source of origin or sponsorship, which could constitute trademark infringement.
Additionally, if the mark is used in a derogatory or an unseemly way, or is otherwise seen as diluting the strength of the trademark, then a dilution action alleging tarnishment and/or blurring may be appropriate. However, a fair use or free speech defense may prevent the issuance of an injunction on the figurative use of a trademark in certain cases. This is especially true when the figurative use is in a noncommercial setting, such as a newspaper article, or is a parody. In some cases, the line between protected parody and actionable infringement or dilution may be difficult to ascertain.
5. How should you respond to the figurative use of your trademark?
Serious consideration should be given before deciding to litigate or take other enforcement action. Dealing with figurative use of a trademark by another need not necessarily be an adversarial situation. If the use is not objectionable, it may even further enhance the fame of a mark. However, if the use is objectionable and fits under one of the categories of trademark infringement or dilution, then legal action may be appropriate. Consulting with an experienced trademark practitioner is recommended.
Additional INTA Resources
Trademark Basics: A Guide for Business
A Guide to Proper Trademark Use for the Media and Publishing Professionals
Trademarks vs Generic Terms
