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The Zest

"Small Business Saturday" Belongs to Someone. How to Use It in Your Promo

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"Can I say Small Business Saturday in my sale post, or is that trademarked?" It is trademarked. American Express created Small Business Saturday in 2010 and owns a federal registration for the name. That doesn't mean you can't mention it this Saturday, November 29. Naming the day to tell customers when your sale is happening is a different thing from making it look like American Express is behind your sale. The second one is where the trouble is.

Here's who owns what, what the registration actually covers, and how to use the name without crossing the line.

Who owns it and what it covers

American Express says on its own Shop Small pages that it created Small Business Saturday on the Saturday after Thanksgiving, in 2010, and it marks the name with the ® throughout those pages. That symbol is the notice federal law gives the owner of a registered mark, which is why the circled R means something. The federal record shows Registration No. 3,974,211 for SMALL BUSINESS SATURDAY in standard characters, owned by American Express Marketing & Development Corp., registered in June 2011 and renewed in 2021. Shop Small carries the ® on AmEx's pages too.

Two details in that record matter for a small business.

First, the registration covers one service: "promoting public awareness of shopping locally." It protects AmEx's campaign. It doesn't give AmEx the calendar date.

Second, the words SMALL BUSINESS are disclaimed. A disclaimer is a statement that the owner doesn't claim the exclusive right to use those words on their own. AmEx's rights are in the full phrase, not in "small business."

Why naming the day is usually fine

Trademark law is about confusion over who's behind something. A false endorsement claim turns on whether your use is likely to confuse people about your affiliation with the owner, or about the owner's sponsorship or approval of what you're doing. A post that says "We're open late for Small Business Saturday" uses the name to tell people which day you mean, the way you'd name any date on the calendar.

Two legal ideas point the same way. The Lanham Act makes it a defense to use a term "otherwise than as a mark," fairly and in good faith, to describe your own goods or services. And courts recognize nominative use, where you use someone else's mark to refer to the thing the mark names. In the Ninth Circuit's version of the test, the thing can't be readily identified without the mark, you use only as much of the mark as you need, and you don't do anything that suggests sponsorship or endorsement. A promo that says your shop is taking part in Small Business Saturday, in plain text, fits that pattern.

Where the line is

Here's what moves a promo from naming the day toward implying a connection with American Express.

Using AmEx's artwork outside its terms. The Shop Small logos, graphics and design elements belong to American Express. Using them on your own, or editing them, is a different thing from using the free kit as provided.

Claiming a relationship that isn't there. Words like "official," "presented by" or "in partnership with American Express" say exactly the thing trademark law cares about. If they aren't true, leave them out.

Making it your brand. Calling your own event the "Small Business Saturday Market," or naming a product line after it, uses the phrase as a name for something you're selling. That's using it as a mark, and the fair use protection described above only covers use "otherwise than as a mark."

Putting it on products. Printing the phrase on shirts or tote bags to sell is no longer telling customers when your sale is. It's selling merchandise with someone else's registered mark on it.

What AmEx actually lets you use

American Express offers free marketing materials for the day: signage, social posts and printable posters. Its FAQ says you don't need to accept American Express cards to get the free downloadable materials.

The materials come with terms of use, and they're worth reading before you post. AmEx grants a limited license to use the materials to promote your business in connection with Small Business Saturday and the Shop Small movement. You need at least one physical or online business location in the United States. You can't modify the materials except as AmEx expressly directs or authorizes, and any permitted customizations can't include superlatives like "best," "first," "fastest" or "cheapest." Kit merchandise isn't for resale. AmEx can end your right to use the materials at any time.

One term is easy to miss. By participating, you give AmEx a license to use your business's name, logo and trademarks in program materials, in any media, in perpetuity, with no compensation. That may be fine with you. Just know it's part of the deal.

A quick check before you post

Name the day in plain words: "Shop with us this Small Business Saturday, November 29." Make your own brand the biggest thing in the graphic. If you use AmEx's kit, use it as provided and under its terms. Skip "official" and "partner" unless they're true. And if you want a recurring event or product line of your own, give it a name that's yours, then search that name before you commit to it.

If you're naming a seasonal event or a product line and want the name to be one you can own, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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