2

I develop a software that contains a file viewer. For the sake of usability I would like to indicate also the "file type". Let's assume I display a Photoshop file. Am I allowed to refer to the file as "Adobe Photoshop File"?

Technically I use a trademark in my application which I don't own. I am just wondering what my options are here. Thank you!

6

Under United States law: Using a trademark solely to refer to files compatible with a trademarked program would be allowed under the doctrine of nominative fair use.

The Ninth Circuit sets out the three-part test for nominative fair use in New Kids on the Block v. New America Pub, 971 F.2d 302 (9th Cir. 1992):

  1. "[T]he product or service in question must be one not readily identifiable without use of the trademark"
  2. "[O]nly so much of the mark or marks may be used as is reasonably necessary to identify the product or service"
  3. "[T]he user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder."

Simply referring to the name of a trademarked program to describe its file format (and not doing so in a way that suggests "sponsorship or endorsement by the trademark holder," such as slapping a "Certified Adobe Photoshop Compatible" sticker on the box or something like that) would meet these requirements.

The International Trademark Association elaborates a bit on the doctrine and gives some examples here.

1
  • 1
    It might even be necessary to name the Trademark program. look at file names vs a extension: .doc is the end associated with some 10 different programs, distinguished by which version of Microsoft Word / WinWord did encode it. Without mentioning what encoding variant is used, often the files might be incompatible with the wanted version. – Trish Aug 22 '20 at 8:17

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.