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?

Carvanaonline car dealer and operator of “a higher state of car buying” — sports a halo in its non-verbal logo shown above, but is it an angel when using the Google name and logo in t.v. ads?

In other words, is the use licensed by Google or could it be defended successfully without permission as trademark nominative fair use? Dear readers, what do you think?

In the meantime, a good friend Steve Feingold (who wears a halo well), will be delivering a Strafford webinar next month on Co-branding — maybe we can ask him to weigh in on this topic?

Downtown Minneapolis is starting to come alive for upcoming Super Bowl LII, you can feel the energy building and commerce flowing, new ads and signage being erected almost daily:

What do you think, is the Super Bowl reference in the above temporary sign, a fair use? More particularly, nominative fair use? I do. But, will the NFL agree? Stay tuned.

North Memorial Health must be spending significant advertising dollars at the moment, with a variety of ads appearing all over the Minneapolis skyway system, above is one current example.

In addition, there are a series of humorous and sarcastic TV ads that were designed to poke the bear of our broken health care system, congrats to Brandfire on their creative work here.

The current ad campaign follows the health system’s rebrand and slight truncation earlier this year, from North Memorial Health Care to North Memorial Health:

“The brand campaign consists of TV, out of home, digital and print advertisements. It pokes fun at the industry by showing experiences of customers and attitudes of healthcare that are universally frustrating.  The print and outdoor advertisements also demonstrate that North Memorial Health accepts its share of the blame, but commits to working harder to deliver an unmatched experience for the customer.”

So, I guess, if patients admit to having Googled their symptons prior to their appointment, they will no longer be scolded for doing so by doctors, nurses, and other health care providers, right?

But, what about the glaring Google reference in the above skyway ad, did North Memorial Health need permission from Google for the gratuitous reference?

You may recall, a few years back I wrote about Google surviving a genericness challenge (Tucker and Jessica have provided updates), drawing attention to possible meanings of the word Google:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

Seems to me, in the North Memorial Health ad shown above, Google could be understood as the verb meanings in both (2) and (3), as the capitalization doesn’t point uniquely to Google.

There is little doubt that no Google permission is required for the ad, because nominative fair use ought to apply, given the plausible, but not required meaning of the above definition in (2).

More interesting to me though, is the question of whether classic fair use could apply as well to the Google use, given the plausible, but not required meaning of Google in definition (3) above.

If so, I’m not sure I’ve encountered an example or case before where both classic and nominative fair use applied, perhaps this is a first, so what do you really think, without Googling it, of course?

Over the weekend, the Star Tribune continued the growing drum beat of understandable excitement for Super Bowl LII, as it steadily approaches U.S. Bank Stadium in Minneapolis.

The article also plays the typical NFL-enabling drum beat of caution against local businesses that might see fit to fairly and truthfully reference the Super Bowl in some commercial manner:

“From the NFL’s viewpoint, if businesses use the terms or other trademarks, it could appear like it is an official part of the Super Bowl or its related events, said Dolores DiBella, one of the lead intellectual property attorneys for the NFL.”

Perhaps the NFL would like to live in a world where no business can use the words “Super Bowl” without paying a fee; that isn’t the world we live in, especially given the growing judicial drum beat and emphasis on Free Speech and the First Amendment in the trademark/copyright worlds.

Nowhere in the article is there any acknowledgement that the NFL has long been accused of behaving as a trademark bully and overreaching with its valuable intellectual property rights.

The legal test for trademark infringement (likelihood of confusion) is not shown when a use “could appear like it is an official part of the Super Bowl or its related events,” the mere possibility is simply not enough, the likelihood of confusion must be probable.

Nowhere in the article is there any mention of trademark fair use; classic or nominative fair use. Nowhere is there any mention of Free Speech or the First Amendment. Even, this kind.

And, for those wondering whether the Super Bowl trademark might be famous and deserving of dilution protection, let’s not forget, the future of trademark dilution law is in question.

So, while it is true that not uttering the words “Super Bowl” will help a business play it safe and avoid all the fire and fury of the NFL, for those who are properly advised and have insurance coverage for advertising injury, that would be a very big game worth watching (or playing) too.

A little nominative trademark fair use might have saved these little gems from going right back to Costco, as gently used merchandise, with opened and not so gently mangled packaging to boot:

TyltBatteryImageLittle did I know when grabbing this impulse item at Costco over the weekend (without my expert child companions) that — after anxiously tearing open the packaging, plugging these babies in until they were full of juice, and then trying to charge my iPhone 6 with one — I’d discover with great disappointment, they are incompatible with my phone, they just don’t fit.

Not exactly a square peg and a round hole, but close enough.

Should I have been able to discern the incompatibility from the images on the packaging? Maybe, and perhaps my kids would have, but again, I was alone, without those who pay closer attention to those kinds of details, while maneuvering their hand held devices like ninja warriors.

Moreover, I searched high and low for words to communicate about compatibility, thought there might be a listing of branded products and models that work with these chargers, some helpful nominative fair use would have been nice, but none could be found.

Nowhere could I find verbiage on the packaging specifying the specifics of compatibility, just this definitive and prominent statement:

“Works with SMARTPHONES, TABLETS and all USB chargeable devices.”

I’ve always considered my iPhone 6 to be a smartphone, and I’m pretty sure it is a USB chargeable device too, so part of the subset within the universe of “all,” but I’m apparently a technology dunce. So, what’s my greater point?

Nominative trademark fair use is an important public service; and a legitimate need of brands that don’t want to have to deal with returned products and mangled packaging, especially when some of their shoppers might consider purchasing technology items without an accompanying minor.

As ubiquitous as Apple’s iPhone smartphones are, would it make sense to include at least some negative nominative fair use references?

Perhaps something like: “Does NOT work with Apple products” or “Incompatible with iPhone products” or “Don’t buy if you like Apple or iPhone products”?

Would Donald Trump be more likely to endorse these chargers with that kind of nominative fair use?

While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions:

Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions.

How did you know (if you did), before checking out the 2014 Corvette Stingray photos on HiConsumption? Perhaps the federally-registered Stingray logo on the front quarter panel behind the wheel? The barely visible Corvette logo on the wheels? The overall shape and configuration of the automobile?

Although GM has a long list of non-traditional trademark registrations to sift through on the USPTO database, I was unable to locate one covering the current shape of the Corvette Stingray (I suspect our friends who are also patent types could probably locate some design patents covering the ornamental design of the vehicle, so I didn’t bother going there), but I did locate a few trademark configuration registrations covering earlier Corvette model shapes of actual vehicles and toy replicas (here [cancelled], here, and here).

Marketing types, how would you go about obtaining the Corvette image to incorporate in the above advertisement? Would you feel the need to obtain permission from GM to display these ads at point of sale? I hope so.

Legal types, is there any legitimate basis for Costco claiming fair use here? I’m thinking not — assuming this use is not authorized or licensed, it appears to appropriate the goodwill of GM to attract attention to and help sell Kirkland Top Tier gasoline. Remember this little gem from five years ago in our archives? The Costco ad above — depicting the entire profile of the vehicle shape and design — seems even less justified than the partial Corvette image in the Schlitz ad, at least from where I’m sitting.

Last, do you suppose this ad on signage slipped by Costco’s legal department or might there be an aggressive stand on fair use, or perhaps if questioned, an attempted defense to challenge GM’s underlying rights — I’m assuming GM can establish acquired distinctiveness in the shape if it had to, even without a federal registration (but a single piece of paper as proof would be much better).

Remember what happened when Tiffany (the jewelry company, not our Tiffany) complained about Costco’s unauthorized use of the Tiffany name?

Costco counterclaimed for cancellation on genericness grounds, so what might we expect here, assuming the point of sale advertisement was not authorized or licensed by GM?

I’m thinking this signage is going bye bye, how about you? So, why don’t we just start the count-down now?

Absorbing all the television commercials in between football action on the field can be as much fun on Super Bowl Sunday as the actual game itself, at least for trademark and marketing types, especially when your favorite team isn’t even on the field.

One of my personal favorites from this past weekend’s Super Bowl XLVI was the above “Chevy” Apocalypse advertisement, and not because it reminded me about GM’s Chevy trademark dodging the fatal lyrics: “This Will Be The Day That I Die”.

Instead, what caught my attention — beyond the controversy surrounding how Chevy called out Ford by name — were the other unrelated food brand references (Twinkies and Big Boy), leaving me wondering whether GM obtained advance permission for the use of these marks and/or whether GM might have shared the cost of the spot with these brands appearing as possible paid placements.

No need to wonder whether GM obtained advance permission from Ford, obviously it didn’t, and we’ll see whether a false advertising lawsuit results from it.

But, back to the third party food brands, could it be that the Twinkies appearance in the Chevy Apocalypse ad served as an additional jab at the perhaps indestructable ingredients of the snack food, recognizing that the bankrupt Hostess brand may not be in the best position to object? And, what about the charred Big Boy restaurant signage?

By all accounts, this must have been an interesting ad to clear — attempting to dodge and/or minimize the risk of potential claims from Ford, Hostess, and the various concurrent owners of the Big Boy mark.

What are your thoughts about these third party brand references? How would you have navigated this one? Permission necessary for some or all? Nominative fair use for some or all?