We have discussed the need to use your trademarks as adjectives (and not nouns or verbs) to avoid having them become descriptive or even generic terms. Today, we will talk about how you should be using your trademarks in a prominent and consistent manner.

Trademarks help consumers identify and distinguish your goods or services from those of your competitor. You should be using your marks in a way that builds “brand awareness” so that consumers will see your mark and immediately think of your company.  If the appearance of your trademark is different every time a consumer sees it, it will take longer to build up a good, strong association between the mark and your goods and services. And, with less distinctive marks, inconsistent use can undermine your rights completely.

Consistent use of a mark will help strengthen your rights in that mark as well as in any registrations that you may have. Consistency in use is particularly important with descriptive or highly suggestive marks and will assist in developing secondary meaning.

Healthcare is a highly competitive market.  Healthcare companies are hiring marketing teams to lure customers to their facility.  This will invariably require making statements regarding the quality of your services and how your services are better than your competitors.  Problems will arise if these ads cause patients or their families to expect more than what is or even can be offered. There are many scenarios that could result in claims of false advertising, but today we will be looking at “puffery.”

Puffery is generally a subjective exaggeration, even blustering or boasting, upon which no reasonable consumer would rely – “Our hamburgers are the best in the world!”  Puffery often uses exaggerations so excessive that they become comical – “Our hamburgers are so good they will bring you to tears!”

Thus, non-actionable puffery will generally involve vague, highly subjective claims regarding the superiority of the service or products being sold.  However, clarifying what may be found to be mere puffery rather than an actionable false claim can be a difficult task. The result will often turn on the totality of the advertisement or even the entire advertising campaign. Ultimately, a court will focus on whether a reasonable consumer of the services would view the accused claim as stating a verifiable fact – “We have the healthiest meals anywhere!” or whether a reasonable consumer would view the comment as expressing an unverifiable opinion – “We serve our patients the tastiest meals in the city!” The first statement can perhaps be factually verified and if not true could be an actionable false claim, whereas the second claim regarding tastiness is more a matter of opinion and is more likely to be considered puffery.

In one of our first posts,  we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark becomes more protectable as it moves across the spectrum.  Laudatory trademarks are often included in this list as “descriptive marks,” requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.

Laudatory terms that may be considered suggestive include, for example, “Select,” “Plus,” “Super,” “Deluxe,” or “Gold Medal.”  These terms are not descriptive, in that they do not provide direct information regarding the product itself.  Rather, these terms are suggestive as they require the consumer to use imagination, thought and perception to connect the mark to the goods. And even then, the connection may be unclear.  Does “Deluxe” imply that the product is bigger, that it works better or is somehow more luxurious?  Perhaps the product includes additional features not present in the competitors’ products?  While the exact meaning is not clear, the mark does connote that the product named “DELUXE” is somehow superior.

However, even if suggestive, laudatory trademarks are rarely found to be protectable without a showing of secondary meaning.  Further, it is often held that, as with descriptive marks, users of suggestive laudatory marks may not be able to monopolize the right to label or name its product in such a way that suggests or implies that it is the finest product on the market. Thus, laudatory terms do not fit neatly into the usual trademark framework, leading to uncertainty regarding the protectability of laudatory marks.

This week we are discussing ways you can use a third party’s mark to identify the third party’s goods or services while advertising your own.  For example, a dental office wants to let potential patients know that it uses a specific brand of dental veneers.  The law allows XYZ Dental to factually state “XYZ Dental specializes in the fitting and application of ABC® brand veneers.”  This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed.

To qualify as proper nominative fair use, the use must not create a likelihood of confusion and the use cannot imply sponsorship or endorsement by the trademark owner where none exists.

The courts have set out a three part test to determine if a use is likely to fall within the rubric of nominative fair use.

1. The trademark owner’s product or service must not be readily identifiable without use of the trademark.  It is recognized that there are times when it is necessary for a company to refer to a third-party product or service by its trademark.  In those circumstances the law does not require individuals or companies to use “absurd turns of phrase” simply to avoid trademark liability.  XYZ Dental does not need to state that it fits and applies the dental veneers identified by the first three letters of the alphabet.  It can simply factually state it fits and applies ABC dental veneers.

Last week we discussed ways that you can use a competitor’s mark in comparative advertising.  This week we are discussing ways you can use a competitor’s mark in a descriptive manner under the doctrine of Descriptive Fair Use.   In this type of use, the mark is not being used as a trademark, which greatly reduces or eliminates the possibility of the use being found to be trademark infringement.

Under the doctrine of Descriptive Fair Use, a party, even a direct competitor, may use another party’s descriptive trademark to describe their own product or services.  Descriptive Fair Use requires:

1. That the mark being used actually describes a person, place or attribute of goods or services; and
2. The mark must also be used in the normal course of language.

In addition, the mark must be used in the text portions of an ad and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used. 

Today we are resuming our Branding 101 series!

As we discussed previously, a trademark audit is an important inventory tool that should be used to be sure that the trademark assets of the company are being properly used and protected. Another important function of a trademark audit is to be sure that you are using only your own trademarks; or, if you are using your competitors’ marks, that such use is correct and proper.

In general, a company should only be using its own trademarks. However, there are some circumstances where it is acceptable to use a third party’s trademark in your advertising. These exceptions are often referred to as “fair use” of the other’s mark. There are several fair use exceptions that will be discussed over the next couple of weeks. Today, we will start with a discussion of the proper way to use a competitor’s trademark in a comparative advertisement.

It is possible to avoid trade mark infringement while using the registered trade mark of another company in a comparative advertisement. However, there are rules and guidelines that have to be followed to avoid liability. In addition, apart from the trademark infringement issues, comparative advertising is prone to being considered misleading or deceptive, unless it is done carefully.