When do You Need a Permission to use a Trademark?

Look at the picture; surely you are familiar with the majority of illustrated logos. They are the trademarks of worldwide known companies which “run’’ the world. Trademark, in general, is a unique sign, design or word expression which identifies a certain type of a product or service.

There are three main symbols which stand for trademarks- TM for the trademark symbol, SM for service marks, ® for registered trademark symbol. These represent the status of the mark and how much is the level of protection. The main difference between the marks is that while you use TM or SM  according to any common mark usage law, ® is mainly for the owner of the mark.

The latter should be registered in the corresponding national institution like US Patent and Trademark Office. When you use TM or SM, you inform the public that you have branding rights to a certain mark and others don’t have the same rights to adopt the similar mark for suchlike products or services. You can apply ® as a federally registered symbol to the goods and/or services which are listed in the registration.

Permission to use someone else’s trademark

You want to undertake some business and for that, you need someone else’s trademark? There are some formalities to carry out for that purpose. First, you must ask the owner for permission. After getting the permission, some licensing fees are required to pay. Besides you sing a mutual licensing agreement. If you break this rule and take the trademark without obtaining the owner’s consent or any legal right, the owner can take you to the court under the infringement. Such damages may include monetary compensation, even ban on the usage of the trademark. But if you have non-commercial purposes, you can take it without a prior consent of the owner.

When asking for permission

There are some reasons for which you should ask the owner for permission:

  • You need a license when you want to use the 3rd parties’ trademark for commercial needs, i.e. to produce and sell crafts.
  • When you use the trademark it means you know the owner or you have an endorsement from the trademark’s company. But if you acquire the trademark without permission it violates the trademark rights. So, be careful while choosing one!
  •  For commercial uses you require permission. This covers promotion, advertising, and marketing except editorial or comparative advertising. BUT even if you are sure that your ad carries comparative meaning, to be on the safe side, let your lawyer review the ad before publishing. You may need some changes to avoid infringement.

Steps to get permission

Follow this procedure to get  permission:

  • Find out whether the trademark has law protection and would you violate the law if taking it.
  • Identify the owner of the trademark
  • Make yourself clear what rights you need
  • Get in touch with the owner. Negotiate over the fee.
  • Receive the permission in the written form. Say NO to oral agreements to avoid any possible disputes.

Trademark law

The USA gives great importance to the trademark. It is governed not only by federal by also by state law. Since the 19th century, the law has acted to protect trademarks of goods and services from infringement. Till now the law undergoes constant reforms to increase the level of protection. According to it, in order to serve as a trademark, there should be a distinctive mark capable of identifying the real source of a given good or service. Based on the level of being distinctive, there are 4 categories of marks: arbitrary or fanciful, suggestive, descriptive and generic. The requirements for any trademark, the level of protection depending on the category it falls.

So, you may have rights over a mark if you are the 1st to use it or you are the 1st to register it. In other cases, if you want to use any existing one, you should get a relevant permission. We live in times when it is difficult to create something new to get the public’s attention and make them buy the offered product. Before choosing or applying any trademark, be careful to check its source and get permission for its use if necessary. Try to have the one which will maximum attract the customer.

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