Can I include a trademark in my paper, thesis, or dissertation?
Answer
Not all uses of trademarks are infringements. To understand whether a particular use of a trademark is potentially infringing, or protected by trademark fair use or another doctrine, we encourage you to schedule a consultation with our Copyright & Information Policy consultants (copyright@umass.edu).
We have also included some basic information about trademark and trademark fair use below, to help you get started.
Trademark law is intended to prevent consumer confusion around the source of a good or service, as indicated by a "trademark". A trademark is infringed when someone uses it in a way that confuses consumers about whether the good or service is from or sponsored by the trademark holder. Simply using the trademark to refer to that company or brand -- in scholarship or as a parody, for instance -- is typically protected as a trademark fair use. (While this is the same term as "fair use" in copyright law, they are two separate doctrines.)
Trademark fair use protects a variety of important functions.
Fair use in trademark law protects, first and most plainly, descriptive uses of ordinary English language words and phrases, even if they are also used as trademarks. So, for example, using the term "fish-fry" to describe a product used to bread fish did not infringe a trademarked term "fish-fri" (Zatarains v. Oak Grove Smokehouse), and describing a cranberry drink as "sweet-tart" did not infringe the trademark for the candy "SweeTarts". (Sunmark v. Ocean Spray Cranberries.) This protection is sometimes called "statutory", "descriptive", or "classic" fair use, and it is a vital free expression doctrine, preventing basic phrases and commonplace expressions of ordinary language from appropriation by individual businesses or organizations.
Fair use in trademark law also protects the right of competitors to engage in comparative advertising, using the trademarked names of goods or services to draw their comparisons. Products may name competing products on their labels, as long as they accurately describe them, and distinguish them so as to avoid confusion. This benefits consumers, who are able to make accurate comparisons across products.
Fair use also protects our right to use a trademark to specifically refer to the trademarked good or service. This is sometimes called "nominative" fair use, and it allows speakers to criticize, comment upon, compare, and even satirize companies, products, and advertising slogans. This is particularly important for scholars who look at advertising or products in their studies.
Courts also generally protect the use of trademarks in criticisms and parodies, describing this as either "fair use" or protected by the First Amendment. Mattel's Barbie dolls have famously become the subject of many artists' attention; in one such case, the use of Mattel's Barbie mark in a song was a permissible parody (Mattel v. MCA Records.) As long as the critic is not trying to sow confusion or otherwise act in bad faith, these uses are protected.
Adapted from "Fair Use and Free Expression Defenses in Trademark Law", Laura Quilter, Fair Use Network (2006), CC-BY 4.0.