Can You Use Brand Logos Without Express Consent? A Discussion For Account-Based Marketing Personalizations.

August 13, 2019 –

When you decide to use a brand’s Intellectual Property assets such as its logo on your website as part of your account-based marketing drives, you have to think about two legal mechanisms that work to protect them:
Rentmeester’s picture with Jordan leaping to dunk the basketball with the sun setting in the background.
A trademark is used to protect a “business’s commercial identity” or “brand.”
But such very limited, non-infringing, and non-commercial use of third-party logos on your website is okay under account-based marketing campaigns. Let’s see how.

3. The trademark integrity is protected (For example, with the logo being used as is, and not in any distorted, dismembered or misinterpreted forms.)
Such personalization at scale campaigns often uses Intellectual Property assets such as logos, names, slogans, etc. of the target accounts for creating a more one-on-one experience with having so many elements on the page speaking directly to them in ways subtle and bold.
2. Your use isn’t suggestive of any endorsements or associations with the target account. Nor is it misleading or defamatory.
Nike’s “Chicago” image showing the basketball star in a similar pose but against the Chicago skyline.
Lip gloss maker, Cosmetically Sealed Inds. Inc., had registered the phrase “Sealed with a Kiss” as their trademark. The phrase is pretty descriptive as you can tell.
Let’s talk about trademarks first:

What Is Account-based Marketing? And Why (and How) it Uses Third-party Assets Like Logos

When deciding upon such applications, authorities usually consider these three aspects (among other things):
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By doing so they also ensure that their brand recognition isn’t diluted as other brands are restricted from using any asset that people have come to recognize and associate exclusively with theirs.
In account-based marketing, you create a list of target accounts that you’d love to have as your customers.
Simply put, copyrights are the legal rights of the creator of an original work. While copyright laws differ from country to country, mainly they ensure that the copyright owner can control if (and at all) others can use their work (and how).
And now let’s see what copyrights mean.

• A background image personalized with Company X’s branding (for instance, using their color scheme)
• A personalized headline copy directly addressing “Company X”
• A personalized welcome chat message saying: “Hey there! Would you like to know we can help Company X…?”

2. whether the opposer’s mark became famous prior to the date of the application to register the applicant’s mark; and
1. whether the opposer’s mark is famous;
We could use Nexus™ to show them a personalized welcome message saying:

Until Nexus™ goes live, if you’re looking for more human ways to connect with your key prospects, you can use Convert Experiences to personalize your messaging. For example, you can use our Clearbit integration to customize your messaging based on the industry sector, tech stack, company size, location, and more.

Creators (or sometimes their employers) own copyrights to their work and can give or sell others limited or full access to their works for forever or stipulated periods.

Copyrights & Trademarks: The Two Safeguards for Intellectual Property Assets Such as Logos

The short answer is: Yes, you can .

1. Trademarks
2. Copyrights

When it comes to using third-party trademarks under the nominative fair use provision, you’ve be mindful of many conditions to protect yourself from unintended infringements. The International Trademark Association (INTA) — a global association working toward protecting the rights of trademark owners and securing useful legislation and its observance — explains some of the nominative fair use conditions as these:
When a competitor, Chesebrough-Pond’s USA, Inc., started using a similar phrase “Seal it with a Kiss” to promote their lipsticks on their point-of-sale promotional displays, Cosmetically Sealed Inds., Inc. filed a trademark infringement case against it.
The more powerful web personalizations for account-based marketing campaigns will inevitably use the target account’s trademarks.
[T]here is nothing original about the selection and arrangement of having a Michael Jordan jump with a basketball in the vicinity of a basketball hoop.

• The symbol/logo “Swoosh”
• The phrase “Just do it“
• And the brand name “Nike“

“But can you use other companies’ logos on your website like that? And their names?”
But Rentmeester lost the case. Court US District Judge Michael W. Mosman wrote that:
And so on…
3. whether the applicant’s mark is likely to blur the distinctiveness of the opposer’s famous mark.

Later on, however, when Nike trademarked its “Jumpman” logo, which was a silhouette of Michael Jordan in a very similar pose that Rentmeester had captured and (Nike had recaptured?), Rentmeester filed a copyright infringement case against Nike.
But not all uses are so.
Further, the Court observed that dilution and consumer confusion were likely to happen seeing how close “the products are to one another.” In this case, both were a similar product (athletic apparel) competing in the same market/channels for the same consumer class.

Some brands even allow you to use their Intellectual Properties for specific purposes for free. For example, Twitter explicitly lists out how you can use “Twitter marks”:

But they lost the case as the Court noted that Chesebrough-Pond’s USA, Inc.  used the phrase not as a product identifier but as a descriptive call to action to invite consumers to test their lipsticks’ durability by applying it and then sealing or imprinting a complimentary postcard. This use was descriptive — hence wasn’t held for being infringing.

In this case, Nike’s trademark was obviously famous, and had got famous well before the date of application (by the Mahers). Not just that, the Court also noted that blurring could happen:
Photographs, designs, musical tracts, choreography, poems, photographs, designs and tons of other artistic, dramatic, literary and other works can be copyrighted.
For instance, when California-based Peter Maher and Patricia Hoyt Maher tried to register the trademark “JUST JESU IT” for an athletic apparel brand, the trademark Trial and Appeal Board rejected their application.
3 use of the mark does not suggest sponsorship or endorsement by the trademark owner Of course, there are many caveats to such nominative fair use of third-party trademarks but usually most non-commercial, non-infringing use cases use this provision.

• the right to reproduce the copyrighted work
• the right to prepare derivative works based upon the work
• the right to distribute copies of the work to the public
• the right to perform the copyrighted work publicly
• the right to display the copyrighted work publicly

But when this VP of company X lands on your website, they won’t see your generic homepage. Instead, they’ll see a unique website experience personalized exclusively for their company.
If you think about how logos and other third-party assets are used in account-based marketing campaigns keeping all the above content in mind, you’ll realize that ABM personalizations use them in a very limited, non-commercial, and non-infringing way, mainly because:
There are many ways the nominative fair use of trademark is used:

1. the product or service in question is not readily identifiable without use of the trademark,

Think:

If a trademarked term is fairly descriptive, then others can use it as long as they’re using it to describe their services. This is allowed because a trademark owner can’t be given the legal monopoly over non-distinctive, generic words or phrases.

For example, in 1985, Nike had to pay photographer Jacobus “Co” Willem Rentmeester ,000 for the right to use their version of his iconic picture (that captured the legendary basketball player Michael Jordan leaping mid air about to dunk the basketball) on posters and billboards for two years in North America.

The application of the fair use doctrine is a fact-intensive inquiry. To increase the likelihood that it applies to your account-based marketing campaigns, you should keep in mind the following best practices.

Furthermore, the Court pointed out that the pictures weren’t identical as they differed in the details of the pose, the size and position of Jordan in the frame, the colors, and the backdrop.

The Fair Use of Copyrights and Trademarks

Account-based marketing is a way for businesses to win their best accounts.
Account-based marketing solutions like Nexus™ can make hundreds of such personalized versions of your regular website pages for each of your target accounts — aka account-based marketing at scale.
Take the Cosmetically Sealed Inds. Inc vs. Chesebrough Pond’s USA Co. case, for example.

Brands trademark such assets so that they can protect their brand identity and stop others from using their or “confusingly similar” assets.
And while this article helps you understand how you can launch ABM drives that use your prospects’ trademarks without falling into legal troubles, it shouldn’t be taken as legal advice. Be sure to consult a lawyer when considering personalized ABM campaigns.
Let’s now see why targeting your key accounts using their copyrighted or trademarked names and logos doesn’t mean violations and a few best practices to avoid getting into legal problems when using them.

Third-party Trademark Fair Use Case: Descriptive

For example, your social seller will connect with the VP of your target account on LinkedIn and after some warming up will send them a link to your website.
But when done diligently, they can be both safe and relevant… just as you’d like them to be to inspire your target accounts to want to work with you.
As you can understand from the above examples, all possible trademark and copyright infringement cases either have a clear element of alleged “confusion” and “blurring” of brand distinctness or plagiarism.
These “fair uses” mainly fall under two categories: 1) Descriptive & 2) Nominative.
For example, if at Convert, we had Sony Music on our ABM prospect list, then using Nexus™ we could personalize our website experience for anyone from Sony Music who landed on our website.

Third-party Trademark Fair Use Case: Nominative

Recently we began demoing our upcoming account-based marketing (ABM) solution, Convert Nexus™, for a select few prospects.
In nominative fair use, others use a company’s trademarks to simply refer to the actual trademark owner.
… [B]lurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner. Besides, the copyright and trademark system allows for a few exceptions that let you use such Intellectual Properties of companies without seeking their explicit permission.

The Copyright Act (US),for instance, grants five rights to a copyright owner:
Using third-party logos and other Intellectual Property (IP) assets can feel risky. After all, no one wants to be party to unintended infringement cases.
For example, Nike owns the following trademarks:

Making the Case for Fair Use of Trademarks Under Account-Based Personalizations

And as the next step, you create some unique and exclusive marketing collateral and sales messaging for each of these accounts and kickstart your outreach activities.
1. Only people from your target account see their trademarks on your website — and no one else. So the possibility that the use of their trademarks on your website can cause brand dilution or confusion in their target customer base is not there at all. Additionally, when you use your target account’s trademarks on your website, you don’t intend to cash in on their brand value — you’re only doing so to connect more meaningfully with your target account.
But we get it.
Note that these personalizations are only displayed to people from the intended target account and no one else.

Best Practices to Avoid Unintended Trademark Infringements in Account-based Marketing Campaigns

Nexus™ helps companies offer hyper-personalized web experiences to their most crucial leads.

• Being relevant and not creepy. When someone from your target account lands on your page, you want to connect with them subtly. You don’t want them to feel like they’re on a page from their own website. Right? So personalize meaningfully and only personalize the necessary elements.

• Conforming to fair use. Avoid messaging that’s suggestive of affiliation, sponsorship, or endorsement by the trademark owner. If you can help them someway with your service, say it like that. Your messaging and how you use your target account’s trademarks should clearly reflect the actual relationship between the target account and your company.

• Revising legal pages. Add a clause to your privacy policy and explain how you collect data, and how you might process ip-addresses to use for ABM personalizations to offer a better website experience. Also, add a conspicuous disclaimer about the ownership of the trademarks and explain the purpose and use you put them to.

Let’s understand both.

Set Up a Brand Logo Experiment in Convert Experiences

The fact that the third-party didn’t seek the trademark owner’s permission to use their trademark for such references doesn’t necessarily make such non-authorized use infringing.
2 only so much of the mark as is reasonably necessary to identify the product or service is used and
A logo, phrase, name, slogan, scent, technology, track, lyrics, etc. can all be trademarked assets.
And just as we demo this feature, most of our prospects interrupt us and ask: