Can I use someone else's registered trademark on my website?

Factual Questions
1

Let’s say that I own company XYZ and we make facial tissue. On my web site, can I say “our facial tissue is thicker than Kleenex®”?.

The reason I ask is that I’ve been reading up on Google Ad Words, and apparently there have been some court cases that said that it was OK for people to use trademarks as search keywords that they bid on, but it wasn’t OK to use someone else’s trademark in the actual text ad that displayed.

Is there anything illegal about referencing someone else’s trademarked product on my web site by name? How about if I use the trademarked name as one of the meta “keywords” on my web site?

I realize you’re not my lawyer, you’re not giving me legal advice, etc…

Thanks.

2

As to the legality issue I cannot say, but I do know that brand names are always adjectives, not nouns. So you should say “Our facial tissue is thicker than Kleenex facial tissue.” Trademark lawyers get grouchy if you refer to “a Kleenex” - it should be “a Kleenex brand tissue”, even though nobody on planet Earth actually talks that way.

3

[QUOTE=aaelghat]
Let’s say that I own company XYZ and we make facial tissue. On my web site, can I say “our facial tissue is thicker than Kleenex®”?.
[/quote]

Yes, you can do what is called comparison advertising. You would want to use the other firm’s trademark correctly, as **Colophon ** noted, and you would also want to make very, very sure that your claims can be backed up by reams of tests.

There have actually been a variety of court cases in which courts have come down on both sides of the issue. American Airlines is the latest to sue and has the deepest pockets, so a definitive ruling may come out of that. Of course, that wouldn’t be for several more years as the case worked its way through the system.

It depends. You can always mention another product, trademarked or not, even if you make a competing product. It’s the context of how you use a trademark that can make it dicey. Use of a competing product trademark as a meta keywords is one of the issues still up in the air, so there is no definitive ruling on what you can do. It may depend where you are in the country regarding what court’s district is controlling, but I don’t know enough about the existing cases to be sure.

4

[QUOTE=aaelghat]
Let’s say that I own company XYZ and we make facial tissue. On my web site, can I say “our facial tissue is thicker than Kleenex®”?.
[/quote]

First of all, only the owner of a trademark has to use the “registered” and “trademark” symbols. If you’re not the owner of the trademark, it’s pointless. (Plus it looks silly.)

In general, U.S. trademark law allows a merchant to mention a competitor in order to compare products. There’s kind of a fine line though. You are allowed to use it only to the extent that it is necessary to make your claim.

There are cases that say if you use a competitor’s trademark in the metatags or if you use it just “too much” on your Web site, it can be a trigger of “initial interest confusion.” You have to avoid using the term so much that someone doing a Google search is even temporarily fooled into thinking that your Web site is the official Kleenex Web site.

The case law on search engines and keywords is pretty complex and unsettled. Some cases have suggested that it’s infringing for Google to sell a search term to a competitor.

[QUOTE=Colophon]
As to the legality issue I cannot say, but I do know that brand names are always adjectives, not nouns.
[/quote]

They are adjectives if the speaker uses them as adjectives. They are nouns if the speaker uses them as nouns. It up to the speaker. Trademark law does not control parts of speech.

There is nothing in the law that requires you to do this. The trademark owner might have to do it to demonstrate that he or she is using the term in commerce as an identifier of the source of goods or services. But that’s only the trademark owner.

Anyone else only has to worry about avoiding infringement or dilution. It is neither infringement nor dilution to say “Our facial tissue is ticker than Kleenex.”

Yeah, and that’s why it doesn’t matter a sneeze whose trademark lawyer gets grouchy.

[QUOTE=Exapno Mapcase]
Yes, you can do what is called comparison advertising. You would want to use the other firm’s trademark correctly, as **Colophon ** noted,
[/quote]

I don’t think there is any legal basis for this claim.

The law does not require a factual demonstration of the claim “my product is better than his.” It’s not a claim of fact.

5

[QUOTE=acsenray]
The law does not require a factual demonstration of the claim “my product is better than his.” It’s not a claim of fact.
[/QUOTE]

The OP’s claim was “thicker.” That’s a factual statement. It’s my understanding that factual statements about competitors do have to have backing.

6

[QUOTE=acsenray]
[Trademarks] are adjectives if the speaker uses them as adjectives. They are nouns if the speaker uses them as nouns. It up to the speaker. Trademark law does not control parts of speech.
[/QUOTE]
See, that’s what I had always believed until I ran across Adobe’s rules for using the Photoshop trademark. I still half-suspect Adobe is full of shit in insisting on how their trademark is used in a sentence, but I don’t really know anything about trademark law and cannot tell.

7

Notice that the guidelines do not say that the law requires you to follow them or that failure to follow them would constitute trademark violation. It says only that “**y following the below guidelines, you can help Adobe protect the Photoshop brand name,” which is perfectly true. But there is nothing in the law that requires you to help Adobe protect the Photoshop brand name.

So, no, Adobe is not full of shit. There is a danger that they can lose their trademark rights if everyone decides to start using “photoshop” as a generic term (which a lot of people do already). But that’s Adobe’s problem, not yours. If you follow the guidelines, you’ll help. If you don’t, well, no one’s taking away your cookie.

8

[QUOTE=acsenray]
The law does not require a factual demonstration of the claim “my product is better than his.” It’s not a claim of fact.
[/QUOTE]

You may be thinking of claims of being “the best.” It’s a very common claim among products with high parity, such as laundry detergent or toothpaste; one toothpaste, frankly, is very much like any other. They all have very similar or even identical ingredients, and they all clean your teeth about the same. So, every brand can claim to be “the best” because every brand is pretty much the same, and when everyone’s tied at #1, everyone is “the best.”

“Better,” on the other hand, is making a direct comparison, and requires justification.

9

[QUOTE=Max Torque]
You may be thinking of claims of being “the best.” It’s a very common claim among products with high parity, such as laundry detergent or toothpaste; one toothpaste, frankly, is very much like any other. They all have very similar or even identical ingredients, and they all clean your teeth about the same. So, every brand can claim to be “the best” because every brand is pretty much the same, and when everyone’s tied at #1, everyone is “the best.”

“Better,” on the other hand, is making a direct comparison, and requires justification.
[/QUOTE]

This makes no sense to me. Can you give me a case citation that would justify such a distinction between “better” and “best”?

10

Here is a pretty good article on the Lanham Act and superiority claims: http://www.rkmc.com/Lanham_Act_Also_Applies_to_False_Advertising_Claims.htm

And a newsletter discussing semi-recent cases (it’s the Spring 2005 issue) http://www.proskauer.com/news_publications/newsletters/trademark/2005_08_22/_res/id=sa_PDF/8310-040005-Trademark%20and%20False%20Advertising-ne-v12.pdf

11

Thanks, G. I’ll take a look at these. At first glance it looks like the claims at issue are either very specific (Precise claim about how the razor works) or says “studies prove my claim.” It seems like it would be a lot harder for someone to bring a claim based on a “bare” claim like “I’m better than you.”

And also, these seem to be false advertising cases rather than trademark infringement cases. I’ll have to admit that this line didn’t occur to me in first responding to the OP.

12

[QUOTE=acsenray]
Thanks, G. I’ll take a look at these. At first glance it looks like the claims at issue are either very specific (Precise claim about how the razor works) or says “studies prove my claim.” It seems like it would be a lot harder for someone to bring a claim based on a “bare” claim like “I’m better than you.”

And also, these seem to be false advertising cases rather than trademark infringement cases. I’ll have to admit that this line didn’t occur to me in first responding to the OP.
[/QUOTE]

I only intended to make two points:

  1. The Lanham Act (which is mostly about trademarks) also creates a federal cause of action for false advertising. It’s not trademark, as such, but it sometimes gets lumped in there.

  2. Superiority claims are one kind of false advertising claim that gets brought under the Lanham Act. I agree “we’re better than you” or “we’re the best” aren’t classic examples. The article explains that stuff pretty well.

13

[QUOTE=aaelghat]
The reason I ask is that I’ve been reading up on Google Ad Words, and apparently there have been some court cases that said that it was OK for people to use trademarks as search keywords that they bid on, but it wasn’t OK to use someone else’s trademark in the actual text ad that displayed.
[/QUOTE]

:eek: holy crap never even thought of that

<adding geek squad and firedog to my metatags>

14

Note that Google has its own rules about AdWords and will kick you out of the system for breaking them. And there’s nothing you can do to appeal that, since Google isn’t the government.