Nominative Use is Your Friend

[Lynn Fredricks]

I am glad to see that there are better and better articles appearing on wikipedia - especially this description of nominative use - the defense against trademark infringement. This is extremely relevant in a world where companies trademark their product names then tell the world you can’t use that name in statements of compatibility. If there’s simply no other way to express compatibility then according to nominative use, you can use it in very specific way.

Works with Product X Okay

This is very applicable to - say - products that are designed only to work with the Apple iPod, or Adobe Photoshop (talking plugins here). If I make a plugin that works with Photoshop, I can say “Plugin X for Photoshop” and comply with fair use doctrine.

On the other hand, this isn’t a license to grab a logo and slap it onto a box or splash screen. For example, “iPod” can be expressed in text without the need to use the Made for iPod logo. Many companies have logo programs that are special licenses to use such official logos, and regardless of fair use, you can limit your fair use rights by agreeing to participate in these logo programs.

So Why Go for the Logo?

Not surprisingly, ecosystem companies like Apple and Adobe don’t like it when you do not join their programs. This can have a significant impact on the success of your product. Those logo programs may come with some form of co-marketing, early access to technology or even channel access. For example, Apple has little reason to put an iPod compatible product into its chain of Apple Stores if the manufacturer isn’t a logo program participant. You should also never rule out the influence large companies have with their channel partners. If I am a large vendor, and I am pouring millions of dollars into a national campaign with national reseller X, I may be able to influence the reseller to not carry non-logo products; while this may be illegal in some countries, that sort of influence is entirely possible anyway, unless its specifically documented.

Original Post: Nominative Use is Your Friend