Someone who is in the business of repairing Volvo brand automobiles has the right to say so, in advertising, and elsewhere — without obtaining advance permission from Volvo — provided consumers aren’t likely to understand the advertisement or communication to mean that the repair services and/or the business providing them is authorized by, affiliated with, or otherwise connected to the Swedish automobile manufacturer. So, as is often the case, the devil is in the details of the advertisement or communication and how it is likely to be perceived by consumers.
Indeed, over the years, there has been much litigation over the trademark fair use right and defense of independent repair shops, but suffice it to say, for our limited purposes here, using the Volvo logo on signage or in advertising would most likely cross the fair use line. (Interesting history of the Volvo logo, here). Doing so takes more than necessary to communicate the simple truth and probably implies authorized status. Of course, other activities that fall short of logo use may too, but activities simply and truthfully representing that one repairs Volvo automobiles, without more, should be fair use — nominative fair use of a trademark, that is.
Over the last year and a half, we have written a lot about trademark fair use, both classic fair use and nominative fair use doctrines (Levi’s Double Arcuate Design, Corvette Shape, Rapala-Google Billboard, Google Fortune Kit, 3M’s Post-it Note, Wal-Mart Gift Cards, Match.com For Car Lovers, Cars.com/Twins Fans Billboard, Summit Beer/Twitter Billboard), nevertheless, it is probably worth repeating the necessary elements of a successful nominative fair use trademark defense here:
(1) The product cannot be readily identified without using the trademark;
(2) Only so much of the trademark is used as is necessary for the identification; and
(3) No sponsorship or endorsement of the trademark owner is suggested by the use.
So, given these key elements of a successful nominative fair use defense, imagine my surprise each time I hear the ad — from a Relevant Radio sponsor on AM 1330 in Minneapolis — refraining from use of the two syllable Volvo brand name in the ad; instead, using precious airtime to read this cumbersome mouthful: "We Repair Automobiles From Sweden Starting With The Letter V," or something similar to that effect. This may very well define the need for the first element of the defense in being not "readily identified without using the" Volvo trademark.
Given that, each time I hear it, I’m left wondering why? As a trademark type, I’ll have to admit, it’s a bit annoying, since this extra verbiage is totally unnecessary and not legally required. So, here are a few ideas on the possible reason for the mysterious and puzzling substitution for the Volvo brand name:
- Engage (and hopefully not annoy some) consumers by communicating with a verbal puzzle;
- Avoid a possible unfortunate enunciation and unintended meaning [warning, graphic Urban Dictionary definition, I just discovered] of the Volvo brand name; and/or
- Serious misunderstanding of trademark nominative fair use principles.
Other possible explanations?
And, how many of you believe overzealous lawyers are responsible for this unnecessary verbiage?