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Consider a mobile app related to automobiles. In order to identify the make of a vehicle within the app (in list views, menus, and buttons, for example), the author might choose to use logos that belong to car manufacturers (Ford, Toyota, etc.)

Would this hypothetical use of logos scenario implicate trademark law? Would it be trademark infringement?

  • 1
    you're more likely to get good answers if you make your question more generic (i.e. less about your situation) since site members tend to be more comfortable providing information rather than advice. – Pat W. Jul 29 '15 at 15:46
  • Yes, make sense, i understand, but its a bit hard to explain without providing a real world example. – passatgt Jul 29 '15 at 15:51
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+100

The use may constitute trademark infringement if it implies sponsorship or endorsement

I'm going to assume US jurisdiction for this question, because you've not provided one, and you haven't provided enough car manufacturer names to suggest that this wouldn't apply to the US. I'll also only cover Federal law (the cases were tried in state courts), so be aware that there may be additional responsibilities under state law that I don't examine here.

15 U.S. Code § 1114:

(1) Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

15 U.S. Code § 1125:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

These actions - the use of the trademarked manufacturer logo within the app - is likely to constitute trademark infringement, if the trademark owner's permission is not sought prior to publication, and the use of the trademark is likely to cause confusion as to the source, sponsorship or approval of the goods.

What this means, is that if the trademarks are used in such a way that a reasonable person is likely to think that:

  1. The product is an official product from the owner/brand associated with the trademark;
  2. The product is sponsored by the owner/brand associated with the trademark; or
  3. The product is approved or endorsed by the owner/brand associated with the trademark.

Then an action in trademark infringement may be brought by the trademark owner.

Consider the following two cases:


Possible defenses

  • Nominative use of a mark
    When a mark is used solely to identify a product, this use is privileged.
  • A descriptive mark used for its primary purpose
    Descriptive marks are a subtype of trademarks, which are descriptive in nature but have acquired a secondary meaning. Here, using a descriptive mark for its primary purpose has been found not to constitute infringement.
  • General First Amendment protection
    Satire and parody are generally recognized as defenses if the primary purpose of the use is not directly commercial.

  1. If the products are not similar enough to be likely to cause confusion; and
  2. The use does not imply endorsement, sponsorship or approval of the product by the trademark owner

then it should be fine.

It seems that the situation in the question above would not give rise to confusion (unless the car manufacturer also develops an app, for instance), the second issue - endorsement - should be avoided.

Many programs will have a legal section that includes ownership information and disclaims any association with the trademark owner(s). I have not been able to locate any cases where the effect of these sections have been tested.


Further reading

1

Wikipedia suggests:

Fair Use allows nominative use of trademarks.

When you consult your attorney, make sure he explains to you how "Fair Use" might apply to your situation. And whether your application refers to the "actual trademarked product or its source" for comparative purposes which might allow you to fairly use the marks in your product.

Please remember, I am not providing you legal advice. You need an attorney for that. Never take legal advice from strangers over the internet. Always go to an attorney licensed to practice in your state.

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