Question: I work for a consulting firm where we often use clients’ logos in the custom documents we produce, and our sales department also likes to use potential clients’ logos in sales presentations. When we’ve had difficulty getting an “official” logo file from a client (or haven’t wanted to ask a potential client), some of my colleagues simply scan a business card or download the logo from a web site. I’m concerned that this could be construed as trademark infringement, or at the very least a violation of the clients’ proper use guidelines. Is my concern justified?
Yes, your concern is justified, from both a legal and business relationship point of view.
First, it’s important to know what a logo really is, in the eyes of the law. A logo can constitute either a trademark and/or a copyrighted work.
According to the U.S. Lanham Act, a trademark is generally a “word, name, symbol, or device, or combination thereof” that is used to “identify and distinguish…goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Similarly, a service mark identifies and distinguishes services, rather than goods.
Trademark infringement occurs when a person, without permission, uses another person’s trademark or service mark in a commercial manner that is likely to cause confusion among the public. Trademark dilution, a less common legal violation, occurs when a person uses another person’s famous trademark commercially without permission if doing so dilutes the distinctive quality of the trademark, even if there is no likelihood of confusion.
So, would using another person’s trademark on a sales presentation constitute trademark infringement or trademark dilution? Probably not, although the answer certainly depends upon the facts and circumstances of each case, including how the trademark is used and to whom it is displayed. For example, if you prepare a presentation for the benefit of the Acme Company and include Acme’s logo on your presentation and then give the presentation to Acme employees, it is unlikely that the Acme employees would be confused into thinking that your company is somehow affiliated with theirs. On the other hand, if you then show that presentation to another company, trademark infringement might be more likely. As for trademark dilution, that is unlikely under many common circumstances, too, because of the limited exposure and because that type of usage is not likely to tarnish or whittle away at the reputation of Acme’s business.
But using Acme’s logo could constitute copyright infringement. Depending upon the complexity of the logo, it may be protected by copyright law, which generally applies to “original works of authorship fixed in any tangible medium of expression.” And, unlike in trademark law, copyright law protects against copying regardless of what effect the copying has on the copyrighted work itself (that is, the logo) or on the public. So, if you don’t have permission to copy Acme’s logo and if Acme’s logo is protected by copyright law, then including the logo in your presentation could violate Acme’s exclusive right of reproduction. However, the “fair use” doctrine in copyright law, which permits certain limited copying, may allow you to do so.
Thus, unfortunately, it is impossible to answer your question definitively. Certainly, you could ask a lawyer each time you want to copy someone else’s logo, providing the lawyer with a copy of the logo and an explanation about how you want to use it. But that could become expensive and time-consuming. An easier approach might be simply to ask the company whose logo you are copying whether they will allow you to do so. Some companies even publicize their logo usage guidelines on their own web sites, so you may be able to get your answer without asking. And, since the last thing you want to do is offend a potential client, it’s certainly easier to ask permission than to ask forgiveness.
For further reading on this topic, see the following articles on GigaLaw.com.
Note: The material in this column addresses a general legal issue only; is not legal advice and should not be relied on as such; and may or may not be appropriate to a specific situation. Laws and procedures change frequently and are subject to differing interpretations. This column is not intended to substitute for obtaining legal advice from competent, independent, legal counsel in the relevant jurisdiction. If you want legal advice, please consult a lawyer. This column is not intended to create, and does not create, a lawyer-client relationship. You should not act upon anything in this column without seeking professional counsel.