As previously discussed, use of another company’s trademarks, including those of a competitor, is sometimes possible, even without the owner’s express permission, if the marks are used in a truthful, non-deceptive way as a means of referring to the company which owns the trademarks. Such use is known as “nominative fair use,” which is an affirmative defense provided under U.S. trademark law.

Trademarks are valuable assets that help companies distinguish their products and services in the marketplace. Their value is so significant that trademark owners will often pursue legal action against others who use their marks without express permission. However, there are situations where third parties can use another company’s trademarks, including those of a competitor, without infringing on the owner’s rights. After all, how else can people refer to trademark owners and their products and services without using the trademarks themselves?

Trademarks are the bread and butter of corporate IP assets.   They typically represent the largest percentage of a company’s IP portfolio simply because the registration process is relatively inexpensive. However, before you file a trademark application, and certainly well before you introduce your mark to the marketplace, the most important step you should take in preserving a trademark’s value is to conduct a proper trademark search.