Use of Trademarks in Advertising

There are certain circumstances when you can use another's trademark in advertising and it will be considered fair use, an affirmative defense to trademark infringement. One circumstance is comparative advertising. This is a form of Nominative Use. It occurs when one party uses another party's mark to refer to the mark owner or its goods or services. The use of the trademark must be necessary to identify the mark owner or the goods and services. The user of the trademark cannot imply or suggest sponsorship, endorsement, or affiliation by the mark owner. Essentially, if you use a third-party's mark in comparative advertising in a way that does not confuse or mislead consumers and the user only uses as much of the mark as necessary for identification (for example, use of the words but not use of the same font or graphics), then this will be considered fair use. Another common example of Nominative Use is where a distributor or retailer describes what the goods are that they are offering for sale.

A second circumstance where one may use another's trademark in advertising under the doctrine of fair use is use of a term in a descriptive manner. The use must be in good faith and used for the primary meaning of the term. The term/trademark must be used in a way so that it does not function as a trademark and does not cause consumer confusion. An example of descriptive use in the Second Circuit involves the case of Cosmetically Sealed Inds., Inc. v. Chesebrough Pond's USA Co., 125 F.3d 28 (2nd Cir. 1997). Here the plaintiff owned the federally registered mark SEAL IT WITH A KISS for lip gloss, and a competitor used the mark in its advertising. The Court held that the use of the mark by the competitor was not to identify its product, but as an invitation to its consumers to test the lipstick by applying it and then sealing it with a kiss to determine if the gloss remained on one's lips. This use in advertising was considered fair descriptive use and not trademark infringement.

Another controversial area in advertising is the use of trademarks as keywords. A keyword is a term used by the party conducting an Internet search to form a query for the purpose of generating information on the queried subject matter. Keyword advertising is when an advertiser pays a search engine to display an advertisement in response to a search engine query that contains keywords selected by that advertiser.

In the United States, it has been determined that using a trademark as a keyword is "use in commerce" for the purposes of trademark law. This principle was decided in Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009). Whether one party can use another party's trademark as a keyword to trigger their advertisement online is a question frequently asked in our practice. Some courts in the U.S. have found that "something more" is required to find infringement. In other words, using another party's trademark as a keyword to trigger your advertisement online is in and of itself not trademark infringement.

For example, the "something more" could be using the third-party's trademark in the text of the ad that appears in response to the keyword triggered search. Keep in mind that the advertisement is placed by a party other than the trademark owner and uses another's trademark without authority of the mark owner. If the trademark in the ad is used in a manner that is likely to cause confusion, deception, mistake or is used to imply sponsorship, endorsement, or affiliation between the trademark owner and the advertiser, then the majority of courts would prohibit this use and find infringement. If this scenario occurs, the trademark owner should consult with trademark counsel and consider sending a Cease & Desist Demand to the advertiser. If you have any questions regarding trademarks and advertising, kindly contact our office for a courtesy consultation.