I am entering into a competitive internet market. My company is working on a brochure to market services and, within the brochure, I would like to mention numerous of my competitors. I am looking to compare my success with theirs, and state that I get better results. In doing this, I will state the other companies by name (is this defamation?), and will sometimes mention them via a mark or logo.
Can I have a disclaimer stating that I am not associated with them, and be able to use their names and logos/trademarks without infringing? I am not selling anything with their brand on it, just making a competitive brochure stating I am better.
Patent Application Attorney
No, you cannot.
Only the rightful Trademark owner , or their licensee, may use the trademark and symbols.
You may mention your competitor without using their logo or anything that may suggest you are a licensee,
Your best option is to have an IP attorney review your brochure, as the alternative is not an option you wish you sample.
USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.
You very much need to contact IP counsel in New York to discuss the specific facts and circumstances. The doctrine of nominative fair use allows "[a] defendant [to] use a plaintiff's trademark to identify the plaintiff's goods so long as there is no likelihood of confusion about the source of [the] defendant's product or the mark-holder's sponsorship or affiliation." Merck & Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 413 (S.D.N.Y. 10 2006); New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302 (9th Cir. 1992); see also Chambers v. Time Warner, Inc., No. 00 Civ. 2839(JSR), 2003 WL 749422, at *3 (S.D.N.Y. Mar.5, 2003); 3 McCarthy on Trademarks § 23:11.
However, you should engage counsel to prepare a proper comparative advertisement. This is not as simple as it may seem. I am not certain if the Second Circuit has adopted the Ninth Circuit's test; however, it has been discussed in Tiffany (NJ) Inc. v. eBay Inc. 600 F.3d 93 (2nd Cir. 2010). To fall within nominative fair use, under the Ninth Circuit test:
"First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder." New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d at 308.
You very much need to have counsel assit you in preparing any comparative advertising. Good luck.
This post is for general informational purposes only. No attempt is made to provide legal advice.
I agree with Attorney Zorio's analysis and think your best bet is to hire TM counsel before doing this. There's a well-established history of case law that allows for "nominative fair use" for comparative advertising, but it may be limited to using a competitor's name, without their logo, for example, since the 2nd Cir. courts where you are may think that use of someone else's logo is more than is necessary to identify a competitor.
Same goes for use of a disclaimer - some courts think that's enough to dispel the likelihood of consumer confusion, and some don't.
To minimize your chances of getting sued (and keeping in mind that anyone can sue anyone for anything, but that doesn't mean you shouldn't take all reasonable precautions), hire your own TM counsel to analyze exactly what you want to do.
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It really depends on how you use those marks. For example, I am sure you have seen many ads on TV where a company makes mention of or even uses a competitors logo in their ad.
This is because in the correct context that use falls into a category we call "nominative fair use." When you go to a restaurant and order a soda off the menu you don't order a "cola flavored carbonated beverage" you order a Coke or Pepsi, etc. The restaurant is not infringing here because there is no attempt to confuse the market place regards to the identity of the source of that product.
All this said, you need to be very careful how you use another companies brand especially in advertising and "fair use" is a defense and WILL NOT keep you from getting sued if a competitor does not like what you do with their trademark.
The US Circuit Courts will decide these kinds of matters on a case-by-case basis and, for example, the Ninth Circuit routinely states that you can only use such marks "to the extent necessary" to make your comparison or point, etc.
This should tell you that if you do not know what that "extent" is don't do it without getting some good advice.
I will link you to some helpful info below and I too am NYC based; you are welcome to contact me for a consult anytime.
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Intellectual Property Law Attorney
I think it very, very doubtful that your company may lawfully publish your competitor's logos in its advertising brochure. "Nominative fair use" just does not go that far.
As far as the advertising itself you will need your own intellectual property attorney to assist you in drafting the language for the "comparative advertising." There is a large body of law on how to do that lawfully. It's especially important to get legal assistance if you live in NY because courts there "will presume irreparable harm where the moving party demonstrates a likelihood of success in showing literally false defendant's comparative advertisement which mentions plaintiff's product by name." Which means that your named competitors do NOT have to prove they've been harmed by your comparative advertisement in order for the court to enjoin you from distributing that advertisement.
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Intellectual Property Law Attorney
I think using the logos in addition to competitor names in an advertising brochure is risky, as nominative fair use requires that you use only what is necessary to refer to the competitor. When you start using their logo, that often crosses the line as going too far because you will have a strong risk that you cannot justify a need to use competitor's logos. I think you need to stick with just using their names and not their logos.
Bottom line: Text, not logos. The disclaimer is valuable. Get this reviewed by IP counsel as it is high visibility and thus any mistake can trigger a suit.
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