Comparative Advertising

When can a brand owner lawfully use a competitor’s trademark on the brand owner’s product?

Over the years, we’ve lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads.

It isn’t every day we see comparative billboard ads actually affixed to a product in question, so I can’t resist sharing this vacuum cleaner canister that captures all of these legal allergens at once:

For those unfamilar with the fierce competition between the Shark and Dyson vacuum brands, above is a cropped photo of a Shark Lift-Away canister vacuum, from my home closet.

As you can see, the label affixed to the canister portion of the vacuum actually refers to the competing Dyson brand twice. Just imagine what our friend James Mahoney might be thinking.

Why would the leading household vacuum cleaner brand — Shark — stoop to give its competitor Dyson free mentions (albeit negative) and publicity? Isn’t that kind of like punching down?

Actually, I’m not sure whether Shark had yet surpassed Dyson as market leader, when the canister left the store and entered our closet, so the above label might have been a punch up?

And, if comparative advertising induces sales, why does someone who already purchased the product need more reminders — with each use — that Dyson sucks, in more ways than one?

Turns out, the label shown above, as we now know, is fairly easily removed, so I suppose the joke is really on us, for leaving this comparative advertising on the product for more than a long while.

One of the dangers in affixing comparative advertising claims or content to the product itself may be, over time the claim might lose its original truth; perhaps that’s why the label is removable?

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

Clorox and Church & Dwight recently settled a lawsuit relating to cat litter. (News release here.) The basis for the lawsuit was Church & Dwight’s allegation that Clorox was airing an advertisement which misleadingly implied that cats preferred Clorox’s Fresh Step cat litter to Church & Dwight’s Arm and Hammer Super Scoop cat litter:

"The Clorox Advertisements clearly depict multiple cats rejecting and refusing to use a litter box containing Church & Dwight’s Super Scoop litter. Moreover, the Clorox Advertisements depict every cat presented with a choice between the parties’ competing litter products choosing Clorox’s Fresh Step litter over Super Scoop."

If you have some time, I strongly recommend you read the Complaint.  It’s a relatively brief 23-pages (double-spaced) and contains some entertainment value that inevitably arises where lawyers (many of whom often take themselves too seriously) are required to explain and describe something as uncivilized as feline bowel movements. Some of my favorites gems include:

"A cat litter box is intended to serve as a cat’s ‘bathroom’; it is the place in the home where cats are supposed to eliminate waste, so that they don’t do so on furniture or bare or carpeted floors."

“… cat waste has a strong odor that is unpleasant to most people.   As a result, if a cat uses a litter, but the litter is not effective in eliminating or significantly subduing cat waste odor, consumers will be dissatisfied with the litter.”

“The Commercial’s … claim of better odor elimination … clearly communicate[s] that cats… prefer Fresh Step over Super Scoop because Fresh Step is better at eliminating odors than Super Scoop. …[T]he commercial is about cats’ preference…, not human preference.”

And last, but not least:

“The Clorox Advertisements are unambiguous that the judges of whether Fresh Step is superior at eliminating odors are cats, not people. But cats do not talk, and it is widely understood in the scientific community that cat perception of malodor is materially different than human perception. Thus, it is not possible to scientifically determine whether cats view one substance to be more or less malodorous than another substance.”

Despite the levity of this post, there is a serious lesson to consider: companies must be able to substantiate the exact claims made in comparative advertising. If you are considering comparative advertising, it is important to determine exactly what your advertisement is claiming (not just what you are intending that it claim), and then ensure that you have conducted sufficient testing to establish that the claim is in fact true. 

[Item]: Sterillium Surgical Hand Scrub, 1000mL [Additional Info]: STERILLIUM SURGICAL HAND SCRUB, WATERLESS, SCRUBLESS,, COMPARE TO AVAGARD AND TRISEPTIN. STERILIUM IS NON-STICKY, DRIES FASTER AND PROTECTS HANDS. VERY COMPETITIVE. BEST SELLER IN EUROPEv.               3m Avagard Surgical Scrub 16 Oz

(Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub)

In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M’s Avagard brand surgical scrub and Medline’s competing Sterillium Rub brand surgical hand antiseptic.

Here is a copy of the complaint filed in U.S. District Court for the Northern District of Ohio. As you will see, Medline alleges that 3M has made the following false and/or misleading statements of fact in advertising, in violation of Section 43(a)(1)(B) of the Lanham Act:

  1. Sterillium Rub lacks approvals and/or benefits that it should have;
  2. Sterillium Rub is of a lesser standard, quality, or grade than what it is;
  3. Sterillium Rub does not meet FDA scrub test criteria;
  4. Sterillium Rub does not meet AORN recommendations;
  5. Sterillium Rub does not meet persistency requirements of the FDA;
  6. Sterillium Rub cannot meet FDA criteria for persistency or cumulative activity; and
  7. Avagard is the only waterless, brushless hand antiseptic that meets FDA persistency requirements.

Paragraph 31 of Medline’s false advertising complaint appears to be the most personally and potentially infectious:

During deposition testimony given in the related litigation styled GoJo Industries, Inc. v. 3M Company, United States District Court for the Northern District of Ohio, Eastern Division, Case No. 5:09-cv-1251-DDD, [the] Regulatory Affairs Manager in the Infection Prevention Division of 3M, admitted that statements contained in the marketing literature disseminated by 3M in which 3M compares Avagard to other surgical antiseptic hand scrub products, including Sterillium Rub, misrepresented the FDA scrub test criteria for surgical antiseptic hand scrubs. [She] confirmed this deposition testimony in her testimony before the Court at the preliminary injunction hearing during which the Court characterized her efforts to explain this testimony away as not at all persuasive (citations omitted).

Not only has Medline sued 3M for this alleged unlawful conduct, but it also has taken its claims directly to health care professionals and the surgical hand antiseptic marketplace, commencing a comparative advertising campaign of its own. Presumably, 3M will be closely scrubbing each of the literal and implied claims set forth in this advertising brochure distributed by Medline and BODE Chemie GmbH & Co.

So, stay tuned for developments concerning this interesting federal false advertising case.

Hopefully, we’ll eventually be able to learn who comes to court with clean hands.

 

Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen.

But what about when a branded prop dominates the ad or the identifiable trademark is another’s product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another’s commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz’ ads, continue reading after the jump.

Continue Reading Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks