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Using trademark in marketing materials

What are the rules around using trademarks in signs, business cards and other marketing materials? For example, an auto shop that specializes in repairing BMWs, but not affiliated or licensed with BMW, can they say “OurShop, local BMW specialists” or something similar? I see that this is a common practice in automotive small shops, but how is it supposed to work? How about other industries?

| 👁 314 | Posted November 24, 2018 | Share on Facebook | Twitter | Google+

| Modified: November 24, 2018 | Author:

4 Comments

tommygunz007 1 year ago

Fellow graphic designer who ALSO did a good bunch of Auto work. This response is spot on. Also, when you say "Joe's Auto Repair specializing in fixing BMW's" does that mean you suck at Honda's? It's really a bad thing to get into. A mechanic is expected to fix ALL vehicles. People who have BMW's fit two categories: Those who can afford the Stealership, and those who can't. Those who can't are going to their local guy up the street who fixes 'all cars'.

nattykat47 1 year ago

Repair shops can use the mark "BMW" on signs to say that they repair BMWs because this falls under "fair use" and the shop is not indicating that BMW is the source of the repair services. The "specialists" part can be tricky because someone wouldn't want to imply that BMW endorses the shop's repair services. Does this hypothetical shop have some kind of "specialist" certification from BMW? Think about in terms the USPTO would think about it: Would this use of the mark confuse consumers into thinking that BMW is the provider of the services?

luxrayatwork 1 year ago

Graphic Designer for a large auto ad agency here. Typically it's usually a no go area with logos (Unless you are certified to do the work). Names tend to be hit and miss with companies. The big thing is to differentiate yourself from say BMW as a company. So a good way of saying it would be "We are an automotive repair business that can work on a variety of vehicles including BMW, Mazda, and Chevrolet." That way you can say you work on said stuff but you're not claiming your certified to do so. Also lots of companies that make/sell/do something with another brand usually they put in a disclaimer somewhere that this company is in no way affiliated with another company. tl:dr Trademarks are complex, avoid logos, distance yourself as much as possible while still linking your company to them.

CTPAYC 1 year ago

So here's what I found: Nominative use If there's no other way to refer to the product Use minimum information to refer, e.g. don't use logo if text is enough. Don't suggest affiliation then we should be good in both "BMW specialist" and "PC & Mac repair". There's even a reference to a workshop: an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company. This should fall under the fair use.


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