Most trademark claims are relatively easy to avoid because they are visible (i.e. Starbucks logo, Nike logo, etc.). However, some people have trademarked famous phrases for which they are known for. Writers especially have to be careful in this area. In 2019, Dave Johnson, a horse-racing announcer, sued the Weinstein Co. claiming that they infringed on his trademarked phrase, “and down the stretch they come” in the film St. Vincent. Not only did the film use a trademarked phrase, but the phrase was said by an unlikeable character which in turn allegedly damaged Johnson’s reputation as well. Let's dive deeper into trademarks.
There are 3 types of claims that you want to avoid here: actual infringement of the mark, endorsement, and trademark disparagement. In actual infringement of the mark you have to consider if you are using a registered trademark without permission. For instance, is a character drinking Red Bull? This might not necessarily be a big problem unless the television network or streaming service is using a competitor like Pepsi as their advertiser. In Lanham Act 43 (a) which covers endorsements, you have to consider whether your show uses a mark so often that it begins to look like the owner of that mark is endorsing the show. For example, if your show is set in Cambridge and you need to decorate a college dorm full of Harvard logos and trademarks, will it look like Harvard is endorsing this show? The answer is probably yes so you have to be careful of how many Harvard logos you are really using. Shows often ride a fine line of potential endorsement claims using electronics such as Apple laptops in one too many scenes. Of course, you also have to consider whether you are using a product in a manner in which it was not intended which would indicate trademark disparagement. If the show is saying something bad about the product every time we see the mark on screen, then that could lead to a lawsuit. As a general rule, you cannot alter a trademark and you certainly cannot make your own trademark for an item that already has trademark protection. If you want to use a Tesla automobile, you cannot take the Tesla trademark off and put something different there; the audience will still recognize it as a Tesla.