Ingredient brand use in food product -- can I call it out on my package?

Victor Calvin Johnson
Commercial Real Estate Attorney
• Dallas, TX


Best answer
A seller will often want to state that its product is made with a certain branded ingredient or component. The general rule is that such statement can qualify as a nominative fair use. Nominative use occurs when a third party uses someone else's trademark not to describe its own products or services but to refer to the actual trademark owner or identify a product or service of the trademark owner. To qualify as nominative fair use, the following elements must be present:
(1) The use must accurately refer to the owner of the trademark or the goods or services sold under the trademark— it cannot be misleading or defamatory; (2) The use must not imply any endorsement or sponsorship by the trademark owner; (3) There should be no easier way to refer to the owner or its products; and (4) Only so much of the trademark can be used as is needed to identify the trademark owner and no more—this is often taken to mean that only words may be used but not logos.
Of critical importance in this situation are the elements that the statement is accurate and that it does not suggest endorsement. Thus, the simple "Made with X" would likely be permissible, but "Made with and recommended by X" may not be.
You should consult with an attorney to review your packaging and advertising.
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Frank A. Natoli
Internet Lawyer
• New York, NY


Attorney Johnson offered an excellent response to your question.
Generally, this would not be a problem. Think of ordering a soda off a menu at a restaurant. You order a "Coke" or "Pepsi" as it's listed not a "cola flavored carbonated beverage" right? The restaurant is using those marks but under the concept of nominative fair use.
Keep in mind too, that using one's logo may in many cases be considered more that what is necessary so I would not use their logo only their text name. You do not want to give anyone a reason to be litigious.
It is probably a good idea to consult with a lawyer in private and discuss your objectives and options in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. You should also make sure you conduct the proper due diligence on your own trademark as well and I will link you to an overview of that process below.
Best regards,
Frank
Natoli-Lapin, LLC
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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Daniel Nathan Ballard
Intellectual Property Law Attorney
• Sacramento, CA


My colleagues have answered your question very well. If you're interested, you can read a court decision via the link below that addresses this matter.
The above response 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.
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Bruce E. Burdick
Intellectual Property Law Attorney
• Alton, IL


Yes, but you should use a disclaimer. This issue was settled 90 years ago in a famous Supreme Court decision called Prestonettes v Coty written by Oliver Wendell Holmes, one of the greatest and most respected justices in history. When he spoke, people listened!
http://scholar.google.com/scholar_case?case=16403941232347476488&q=prestonettes&hl=en&as_sdt=400006
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
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