Using another company’s trademark in your advertising can be acceptable, but there are some important rules to follow. The advertisement must be truthful, and it should not give the impression that there is a connection, approval, or sponsorship from the trademark owner. Additionally, the use of the trademark must not harm the reputation of the mark being used. Let’s go over some Do’s and Don’ts.
DO – Comparative Advertisements:
Instead of referring to competitors vaguely, advertisers often explicitly name and compare their products with others. Federal regulations encourage this, as long as the claims are not false or misleading. For example, the famous “I’m a Mac and I’m a PC” ads or every wireless carrier claiming their national network coverage is better than the others’, and doing so by name.
DO – Fair Use:
Advertisers can make “fair use” of another company’s trademark when it is done fairly and in good faith. For instance, a business located next to a McDonald’s restaurant can mention their proximity in their advertising – a billboard saying “Turn left after McDonald’s!”
DO – Parody:
Advertisers can use lighthearted comparisons or casual references to others in the industry through parody. This approach often involves humor and should not lead to consumer confusion about the relationship between the advertiser and the target brand. Additionally, while the parody may lightheartedly poke fun at other brands, it should avoid seriously criticizing the brand and should especially avoid disparagement or defamatory statements. See the section on Tarnishment below for more about how diminishing another’s brand should be avoided. You should note that the Supreme Court recently revisited this issue, so parody should always be made with extreme care.
MAYBE – De Minimis Use:
In some cases, a very minimal or incidental use of another company’s trademark may be considered de minimis and not subject to trademark infringement. De minimis use refers to situations where the use of the trademark is so minor or inconsequential that it does not pose any risk of confusing consumers or diluting the value of the original mark.
For instance, using a trademarked product as a background element in a scene of a larger advertisement may be considered de minimis. Another example might be a spokesperson wearing branded apparel during a to camera advertisement. However, it’s important to note that the concept of de minimis use may vary depending on the jurisdiction and specific circumstances, so it is advisable to seek legal counsel if there is any uncertainty about the use of another company’s trademark in your advertising materials. Additionally, depending on the products being advertised, care should be taken to avoid tarnishment or the implication of affiliation and/or sponsorship (see below).
DON’T – Sponsorship/Endorsement Impression:
To steer clear of any potential claims of implied sponsorship or endorsement, advertisers must be diligent in crafting their messages. Clearly and conspicuously disclaiming any affiliation with or endorsement by the trademark owner can be essential. The use of disclaimers can be in the form of text, voiceovers, or on-screen messages, depending on the medium of the advertisement. Additionally, the context and overall tone of the advertisement should not create a misleading impression that the trademark owner is associated with the product or is endorsing it. Advertisers should refrain from using logos, slogans, or other visual elements that may suggest a connection with the trademark owner unless explicitly authorized to do so. By taking these precautions, advertisers can minimize the risk of misleading consumers into believing that their product or service is officially supported or sponsored by the trademark owner.
DON’T – Tarnishment:
Tarnishment is a concern when an advertisement negatively portrays a competitor’s brand name. For example, if an inferior product is associated with a well-known brand in a negative light, it may lead to trademark tarnishment. This could also come into play when an “unsavory” or “immoral” product advertisement features a brand having the opposite product or service base perception. For example, you wouldn’t want to advertise your liquor while displaying a children’s clothing brand.
To avoid trademark infringement, it’s essential for advertisers to strike a balance between referencing another brand and causing confusion. They can use elements of the brand name in a limited and non-misleading way, respecting the original brand’s reputation and identity.
Using another company’s trademark in your advertising can be a creative way to promote your product or service. Just remember to follow the rules and ensure that your use doesn’t mislead consumers or damage the reputation of the other brand. By staying within the legal guidelines, you can create effective and engaging advertisements that resonate with your audience. If you’re concerned about whether your use fits into a “DO” or “DON’T” category or if someone else might be using your mark inappropriately, it may be time to hire a trademark attorney. If you’d like our help, please call Grell & Watson Patent and Trademark Attorneys for a free consultation.
