Beyond Brand X - Using Another’s Trademark in Your Own Advertising
What do Budweiser, John Deere, The Energizer Bunny, Pebble Beach and Christian Dior have in common?
That is, of course, unless you are interested in whether your client can use the trademark of another in its own advertisement. Each of these famous trademarks is prominent in case law because the mark has been used in advertisements without the authority of the owner.
It is perfectly acceptable and within the bounds of the law to use another’s trademark in advertising, provided certain standards are met. The advertisement must be truthful and the use of another’s trademark must not give a false impression of connection, approval or sponsorship by the owner of the other mark. Further, the use must not tarnish the reputation of the mark being used. While this test may sound simple, its application has confounded lawyers and advertising executives. Whether the issue is comparative advertising, use of a parody, tarnishment or fair use, these same trademark principles are applied.
Advertisers no longer must resort to calling a competitor “Brand X.” They specifically name a brand they are trying to outsell. In fact, Federal Trade Commission regulations encourage an advertiser to use a competitor’s name rather than innocuously referring to a competitor. 16 C.F.R. § 14.15(b)-(c). So the “Pepsi Challenge” can name and show cans of Coke. Lays Potato Chips’ advertiser can try to undermine Utz’s stronghold over the region and mention Utz in its ads. Hertz can mention Avis. Avis can mention Hertz. And a cruise line can use the slogan “The Greatest Show On Earth Isn’t.” Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Chandris America Lines, Inc., 321 F. Supp. 707 (S.D.N.Y. 1971).
The law of comparative advertising is grounded in common law, but has been codified under the federal statute which, in turn, has been refined by common law. Section 43(a) of the Federal Lanham Act (15 U.S.C. § 1125(a)) is the cornerstone of any false advertising claim. The relevant portion of the statute states “any person who, on or in connection with any goods or services...uses any false or misleading description of fact, or false and misleading representation of fact, which...in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods...shall be liable.”
In naming another brand, advertisers must be vigilant to abide by the core test of the statute and ensure that the comparative statements are not “false or misleading.” The test of truth and falsity requires one of two different analyses, depending on the type of statement made. When the claim is a “bald claim” - such as when the ad simply states one product is better than another, the party challenging the statement must show that the fact asserted is itself false. However, when the claim of superiority is based on or supported by some type of validating test, the challenger does not need to prove the claim is false, but instead must show only that the referenced tests did not validate the claim.
In trying to invalidate a claim, and thus debunk the advertisement, the challenger can use one of two ways to discredit the test that ostensibly supports the claim. The challenger can try to show that the test is unreliable or has some fallacy, no matter what the statement asserts. Or the challenger can try to show that the test does not prove the claim asserted in the advertisement.
A fact analysis must also consider a statement is mere “puffing” and thus asserts an opinion, or is meant to be a statement of a truthful fact. If the statement is just a bit of good natured exaggeration and puffing (such as “our product is better”), there is no falsity, because the advertiser is using another’s mark in an unprovable opinion and not in a statement of specific and measurable fact.
The other issue the use of another’s trademark is whether an advertiser has misled consumers into believing there is some affiliation or sponsorship between the advertiser’s product and the mark of the product being compared. This analysis investigates whether there is a likelihood of consumer confusion. The analysis considers the mindset of consumers of that type of product or service to determine whether a consumer would be confused into believing the mark being used has some relationship with or sponsorship of the advertiser’s product.
This should not generally be a problem because it is fairly obvious that the products are not related when an advertiser compares its own product to a third party’s. However, certain types of advertisements can be perilous. For example, courts generally find it actionable to state “if you like Brand X, you will love Brand Y.” Generally, the manufacturer of Brand X can stop Brand Y from making such an unauthorized statement because the courts have found that consumers would believe that Brand Y is merely a new version of Brand X and originates from the same company as Brand X.
One probable safe harbor show that an advertiser’s product is not related to a third party brand is to include a variety of brands in the comparison. The more diverse marks used in any one advertisement, the less likely that the owner of any named mark is endorsing the advertiser. Thus, when a store includes the logos of the various brands it carries in its advertisement, it is less likely that any one of those entities is actually endorsing the store.
If an advertiser believes some confusion might occur because of its use of another’s mark, the best way to eliminate any consumer confusion is to add a tagline specifically stating that the advertiser is unaffiliated with the goods or services to which it is being compared. The disclaimer can appear at the bottom of a printed advertisement or be spoken at the end of an audiovisual piece.
Often, a comparative advertisement clearly intends to highlight the differences between the advertised product and its competitor. However, a comparison can go too far in pointing out differences or -- even if true -- casting a competitor in a bad light. The legal theory of “tarnishment” is of concern to any advertiser who displays its competitor’s brand name in a bad light. Under tarnishment, an action is based on the theory that an unauthorized user of one’s trademark is degrading or casting a negative impression on one’s brand.
Generally, the tarnishment cause of action is used when a competing product of an inferior quality has a name similar to a superior and famous brand name. The theory of tarnishment has been extended to advertisements. In one famous case, MTD Products advertised its Yard Man lawn tractor in a commercial where its tractor and some barking dogs chase an animated miniature deer around a lawn. The folks at John Deere were not amused. In Deere & Co. v. MTD Prods., 41 F.3d 39 (2d Cir. 1994) the court found that the use risked “the possibility that consumers will come to attribute unfavorable characteristics to a mark and ultimately associate the mark with inferior goods and services.” Thus, an advertiser making fun of its competitor in too harsh a manner can be liable for trademark tarnishment by diluting the value of the mark. The advertiser would be diluting the value of the mark.
The tarnishment cause of action is subject to a free speech defense if use of another’s trademark in an advertisement for a commercial product requires the advertiser to be careful about diminishing the value of the other’s mark. However, if the advertisement uses another’s mark for political speech or other non-commercial opinion, and is not specifically tied to a commercial product, then the advertiser has more freedom in what it can say or imply about the other brand name. For example, a Pepsi ad might not be able to declare the poor nutritional value in Coke with as much immunity as a dietary watch-dog agency. Pepsi might be seen as tarnishing the Coke brand, while the watchdog agency might use free speech as its defense.
At times an advertiser may use a lighthearted comparison to its competitor, or may make a casual reference to others in the industry. An advertiser may use another’s trademark if the use is a parody of the original ad. For example, a florist has been allowed to use the slogan “This Bud’s for You.” The leading Fourth Circuit case on the subject explains that a parody is a “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316 (4th Cir. 1992).
In the end, the test of whether a parody is successful is whether there is consumer confusion about the relationship of the parodist and the target brand. Because of the nature of parody, the advertiser is trying to approach and benefit from the other’s brand identity. An acceptable parody, however, must balance two conflicting factors. Use of the other’s trademark must be close enough to the user’s brand name to be recognized, but far enough away as to avoid consumer confusion. Some courts have said that a parodist may use only as much of the original brand name needed to “call to mind” the original brand. Thus, if a company intends to parody another, it should not use the competitor’s entire logo, name or jingle, but only what consumers need to will recognize what their advertisement is referring to.
In addition, the Fourth Circuit, along with others, focuses on a parody’s use as irreverent. Specifically, if use of another’s trademark in a parody pokes fun at the target product or company, a much greater likelihood exists that the use will be held as parody. If the use of the other brand is for humor but is not directed at the target, or is not used for humor, but only to ride on the other’s fame, it is less likely to be declared parody.
Defendants in Maryland have an easier showing that usage is a parody because of Anheuser-Busch, Inc. v. L & L Wings, Inc. decided by the Fourth Circuit. In Anheuser-Busch, the defendant designed a beach towel that looked strikingly similar to the famous Budweiser beer can. Instead of “King of Beers,” the towel said “King of Beaches.” The defendant used other phrases similar to the original such as “This Beach is for You!” and “Myrtle Beach contains the Choicest Surf, Sun, and Sand.” The Fourth Circuit held the use constituted the irreverent representation needed for a parody and allowed the usage. Other circuits might not be so lenient, so an attorney suing an alleged parodist may want to avoid the Fourth Circuit, while a defendant may want to transfer a parody case to the Fourth Circuit.
When comedian Leslie Nielsen dressed up as the Energizer Bunny as a spoof on behalf of Coors Beer, the court found that parody successful because it included conspicuous and resounding differences between the original brand and the brand depicted in the parody. According to the court the parody eliminated any possibility of consumer confusion in Eveready Battery Co. v. Adolph Coors Co., 765 F. Supp. 440 (N.D. Ill. 1991).
An advertiser is also entitled to make “fair use” of the trademark of another. If your store is next to a McDonald’s restaurant, your advertisement may recite your location as next to McDonald’s. The fair use defense is allowed when reference to the other’s brand name is used “fairly and in good faith” only to describe the product, and only when the infringing mark is not used as a trademark. The more another’s brand name is used in the middle of a sentence and in inconspicuous typeface, the better the argument that the use is fair. The Fourth Circuit ruled that a billboard advertising a hotel as “South of Border Exit” was not infringing on the more famous tourist trap in South Carolina, because the advertiser did not include the word “the” to implicate the famous “South of the Border” business location. Schafer Co. v. Innco Mgmt. Corp., 27 U.S.P.Q.2d (BNA) 1239 (4th Cir. 1993). Obviously, using plays on words and double-entendres, an advertiser can approximate a brand name and may bother that brand’s owner, but may still find refuge in a fair use defense.
The extent one can validly use another’s trademark is clarified by a ruling that permitted a garment maker to use the phrase “Original by Christian Dior-Alexander’s Exclusive-Paris-adaptation.” The label identified the famous Christian Dior name but just as also clearly identified that the garment was an adaptation. Societe Cornptoir de L’In-dustrie Cotonniere Establissements Boussac v. Alexander’s Dep’t Stores, Inc., 299 F.2d 33 (2d Cir. 1962).
A lawyer can provide a client key advice on when the line between fair use and impermissible use is crossed. For example, in Pebble Beach Co. v. Tour 18 I, Ltd., 155 F.3d 526 (5th Cir. 1998), someone was allowed to create a golf course replicating eighteen famous holes located on other courses and use the names of those courses to identify the holes. The proprietor crossed the line when he began using the names so prominently as to cause confusion about affiliation with or approval by the original courses.
An entity that manufactures parts for use with another product or parts that are compatible with another product can use that other products name in its advertisement. The advertisement can describe the replacement feature or compatibility, if the use of the other’s name is not too pronounced or improperly state or imply some sponsorship by the other brand owner. While a statement of compatibility is acceptable, using the logos, similar colors, and look of the original brand to promote the replacement or compatible parts may push the advertiser over the line to become an infringer.
A claim of “compatibility” in the computer field, however, requires more scrutiny. Hardware and software “compatibility” have been interpreted by courts to mean the precise ability to work just as the original works. Thus, if a generic razor blade is compatible with a brand name razor, the razor company may not be concerned that the resulting shave be exactly as it would have been with the brand name blade. However, because computers are more temperamental, the claim of compatibility for hardware or software requires a far more exacting performance.
Companies which often have add-on or compatible products have a process by which third parties can claim they are authorized by the original brand. The brand owner allows use of its marks under an “Authorized License Agreement.” The agreements have specific guidelines for how the original brand can be used, including colors, designs, and font sizes in advertisements. Failure to comply with an agreement is a trademark infringement.
When clients let their fingers do the walking, then call you and want to just do it and ask you for all the news that’s fit to print (and you feel like asking them how do they spell relief), you want them to be in good hands. You should be all that you can be and should care enough to send the very best advice by being aware of the guidelines required for an advertiser using another’s trademark. As to your advice, make sure it’s the real thing. After all, a mind is a terrible thing to waste.
A version of this article was published in The Maryland Bar Journal Volume XXXVII, Number 1, January/February 2005.
February 17, 2005