Michael Atkins - Seattle Trademark Lawyer

We’ve talked about what competitors can’t say about your trademark.

So what about ways competitors — and others — legally can use your trademark without your permission?

Here’s a quick list (again, not exhaustive):

Comparative use. Pepsi famously put its cola to the test against Coca-Cola’s in the “Pepsi Challenge.” Your competitor likewise can use your trademark in trying to sell its goods or services — as long as it’s done so in a way that’s accurate. So, your competitor can say its product is cheaper. It lasts longer. It’s more effective. It can identify your product by name. It even can identify you by name. None of that is trademark infringement or false advertising as long as the comparison doesn’t make a false statement of fact or tend to mislead consumers.
Descriptive use. If you use SPEEDY as a trademark in connection with oil change services, you’re going to have a hard time complaining about your competitor’s use of “quick,” “fast,” or even “speedy” to tout the competing services it provides. Your trademark does not give you monopoly rights over the word. Obviously, it doesn’t remove any words from the dictionary. If your competitor isn’t using the description as a trademark — in other words, if it only uses your mark as an accurate description of its services — it’s within its rights to do so. That’s one of the down-sides to your using a descriptive trademark.
Collateral use. You’re Brand X. You make lawn mowers. I repair lawn mowers. I’m perfectly ok advertising the fact that I repair Brand X lawn mowers. I just can’t imply that you have approved me or that we have a relationship that doesn’t exist. That usually means I can use your name but not your logo, and only so much of your name as is needed to get my message across. You have no say in the matter, unless my use suggests you have authorized me as a provider of repairs or the like.
Nominative use. If you’re the Rolling Stones (lucky you!), there’s only so many ways someone can describe you without using your name. The “British rock group consisting of Mick Jagger, Keith Richards, Charlie Watts, and Ronnie Wood” doesn’t exactly roll off the tongue. Since it’s so much easier for me instead to refer to you as the “Rolling Stones,” I’m allowed to do so — even as part of a profit-making venture. My only limitation would be I can’t use any more of your mark (such as your logo) than is needed for me to do so. I’ll get in trouble if my use suggests an affiliation that doesn’t exist (like you approved my use). That would mean I can’t sell t-shirts with “Rolling Stones” in big letters, but I can organize and sell memberships in an unauthorized fan club.
Parody and criticism. Your customer or former employee isn’t happy with you. If he or she wants to use your brand in a “sucks” or hater Web site saying how you’ve got a bad product or you’re a bad company, he or she can certainly do that. The information conveyed must be accurate, meaning he or she can’t say your product causes cancer if it doesn’t. But the First Amendment gives speakers broad rights to criticize. That includes making fun of your name or logo if it’s done in a way that clarifies the use doesn’t come from you and, instead, is criticizing or commenting about you.

The theme here is that fair use must be “fair.” If the use suggests an affiliation with the trademark owner, or that the owner has approved the message, that use isn’t fair (and is deceptive and illegal) if no such relationship actually exists. This is the intersection of trademark law and our constitutionally-protected right to free speech.