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

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

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

[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

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.


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