Seattle Trademark Lawyer

Screen shot from Samsung’s new commercial. It’s worth watching.

You can’t call it the Super Bowl.

Or that’s what the NFL would have you believe.

Really, that’s a joke. The game’s called the Super Bowl, and if you want to refer to the Super Bowl, you don’t have to call it the “Big Game.” Using a trademark owner’s trademark to refer to the owner’s branded good is perfectly fair use. Not that I expect the NFL to agree with me.

This video — a new Samsung commercial — makes great fun of the NFL’s over-reaching control of its trademark. It’s really worth a look.

Check it out now, before its screens during the Big Game.

Fair or unfair? That is the question.
Screen shots from Land Rover’s and British Northwest Rover’s Web sites

Plaintiff Land Rover is the well-known luxury-utility vehicle manufacturer from England.

Defendant British Northwest Rover, Ltd., is an Olympia, Wash.-based company that provides restoration and maintenance services of Land Rover vehicles.

On Aug. 1, Land Rover sued British Northwest Rover in the Western District of Washington, claiming that the defendant’s use of “Rover” in its name — and “Land-Rover” in its alleged former name, “British Northwest Land-Rover Co.” — constitutes trademark infringement and trademark dilution.

Will defendant’s alleged use of plaintiff’s trademarks turn out to be nominative fair use that simply communicates the type of vehicle that it restores and repairs? Or does its alleged use go too far, creating a likelihood of misleading the public into believing that it has some sort of affiliation with or permission from Land Rover, such as offering services that Land Rover endorses or authorizes?

The answer to those questions probably will dictate how the case turns out.

Defendant has not yet answered plaintiff’s complaint.

The case cite is Land Rover v. British Northwest Rover, Ltd., No. 12-5682 (W.D. Wash.).

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.