# Pepsi using the Coke logo in their Super Bowl ad **URL:** \ **Category:** Factual Questions\ **Created:** [February 6, 2012, 2:55pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981 "2012-02-06T14:55:56Z")\ **Posts on this page:** 20\ **Page:** 2
**Author:** ![Chronos](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/chronos/32/134_2.png) [@Chronos](https://boards.straightdope.com/u/Chronos)\ **Post date:** [February 6, 2012, 7:55pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/21 "2012-02-06T19:55:17Z")
> [@](#): > > No word that Hostess was upset. I strongly suspect that in that case, Chevy contacted the appropriate folks at Hostess first, and money probably changed hands. Likewise for the GE ad that mentioned Budweiser. ---
**Author:** ![Sparky812](https://avatars.discourse-cdn.com/v4/letter/s/eb9ed0/32.png) [@Sparky812](https://boards.straightdope.com/u/Sparky812)\ **Post date:** [February 6, 2012, 8:51pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/22 "2012-02-06T20:51:39Z")
> [@Hermitian](#): > > I noticed that Pepsi very clearly used the Coca-Cola logo during their Super Bowl advertisement. How can they do this? > > If is allowed, how come other companies do not do this? I admit, I almost never see advertisements these days, but don’t they usually just use some generic non-informative name as a competitor? > > Why is Pepsi different? IIRC, they lifted the trademark restrictions because the mock labels used to represent generic “other brand” products were so similar to competitors’ labels that the brand was easily identifiable yet dissimilar enough to avoid being a trademark violation. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 6, 2012, 9:29pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/23 "2012-02-06T21:29:04Z")
> [@Sparky812](#): > > IIRC, they lifted the trademark restrictions because the mock labels used to represent generic “other brand” products were so similar to competitors’ labels that the brand was easily identifiable yet dissimilar enough to avoid being a trademark violation. In American trademark law there was never any such “lifting.” I don’t know if there were any restrictions under the Communications Act imposed by the FCC on broadcasters, if there were it would have been something outside trademark law. ---
**Author:** ![md2000](https://avatars.discourse-cdn.com/v4/letter/m/73ab20/32.png) [@md2000](https://boards.straightdope.com/u/md2000)\ **Post date:** [February 7, 2012, 2:30am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/24 "2012-02-07T02:30:44Z")
> [@Acsenray](#): > > While there are certainly fine points in any area of the law, I’m pretty confident in saying that “Freds Pizza Superbowl special” is not one of those fine points that can only be tested in one way. Any competent trademark lawyer is going to tell you that you can’t do that without permission from the NFL. As I said in my post - if you used the logo and said “The Superbowl Special” people might assume that there is an endorsement/sponsorship happening. With or without capitals, with or without logo… OTOH, if you said “Take home Fred’s Pizza for your Superbowl party” the leg to stand on would likely be wearing the other shoe. I don’t see that as implying ANY connection (other than, hey! It’s their big day! Want a Pizza?). However, that’s why lawyers make big bucks, because sometimes people want to shave the broad line down to a fine edge to see if they have both feet in bounds. It kind of reminds me of the news stories when the Calgary Winter Olympics came to town, and the news was full of places like Olympia Pizza (which had that name for a decade) getting nasty letters from lawyers for infringing on the Olympic Games name. How much do you want to spend in legal fees to prove you’re right? Sometimes, all there are is threats - because if it goes to court, the trademark holder loses, then the line is moved up and they can no longer threaten as braodly. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 3:09am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/25 "2012-02-07T03:09:17Z")
> [@md2000](#): > > OTOH, if you said “Take home Fred’s Pizza for your Superbowl party” the leg to stand on would likely be wearing the other shoe. I don’t see that as implying ANY connection (other than, hey! It’s their big day! Want a Pizza?). “Implying that there’s a connection” is not the only consideration in these kinds of cases. There are other arguments that can apply, such as free-riding or dilution. But the basic fact is that there is not a great deal of dispute over this kind of question. > [@](#): > > It kind of reminds me of the news stories when the Calgary Winter Olympics came to town, and the news was full of places like Olympia Pizza (which had that name for a decade) getting nasty letters from lawyers for infringing on the Olympic Games name. How much do you want to spend in legal fees to prove you’re right? Sometimes, all there are is threats - because if it goes to court, the trademark holder loses, then the line is moved up and they can no longer threaten as braodly. What is your actual level of expertise in trademark law? In the United States, and (I believe) in all countries that are members of the International Olympic Committee have passed, pursuant to international treaty, separate laws that absolutely bar the use of the term “Olympic” by anyone except with the authorization of the U.S. Olympic Committee or its equivalent. So the likelihood of confusion standards of regular trademark cases don’t even apply here. It’s an absolute exclusive right. ---
**Author:** ![IAmNotSpartacus](https://avatars.discourse-cdn.com/v4/letter/i/cc9497/32.png) [@IAmNotSpartacus](https://boards.straightdope.com/u/IAmNotSpartacus)\ **Post date:** [February 7, 2012, 3:48am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/26 "2012-02-07T03:48:52Z")
> [@Acsenray](#): > > What is your actual level of expertise in trademark law? In the United States, and (I believe) in all countries that are members of the International Olympic Committee have passed, pursuant to international treaty, separate laws that absolutely bar the use of the term “Olympic” by anyone except with the authorization of the U.S. Olympic Committee or its equivalent. So the likelihood of confusion standards of regular trademark cases don’t even apply here. It’s an absolute exclusive right. Cite, cite, cite and cite please. How in Sam Hill are you questioning levels of expertise in trademark laws and then suggesting in the same breath that a valid justification of prior restraint is membership in the IOC. For fuck’s sake ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 4:11am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/27 "2012-02-07T04:11:39Z")
> [@IAmNotSpartacus](#): > > Cite, cite, cite and cite please. How in Sam Hill are you questioning levels of expertise in trademark laws and then suggesting in the same breath that a valid justification of prior restraint is membership in the IOC. For fuck’s sake Tell me what you actually know about trademark law. I need to know where to start. What did you actually understand when I said that an actual U.S. statute gives exclusive rights to the Olympic Committee to use the term “Olympic” within the United States (with very limited exceptions, for example, for entities that have been using them since before 1950 or that are located in the Olympic Peninsula of Washington)? I ask, because the use of the phrase “valid justification of prior restraint is membership in the IOC” reflects a combination of words that wouldn’t be used by someone who actually understands trademark law. For example, “prior restraint” is a term from free speech law. And it’s use here is puzzling because suing someone for use of a term, by definition, can’t be prior restraint, because the objectionable use is, well, being used already. There’s no “prior” to be restrained. Prior has left the station. The statute, by the way, is 36 U.S.C. §220506. If you actually know something about U.S. trademark law, you’ll notice that it is not in Title 15, which is the location of the Lanham Trademark Act of 1946. The rights given to the Olympic Committee are much broader than they are under regular trademark law. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 4:18am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/28 "2012-02-07T04:18:18Z")
(missed edit) And in _San Francisco Arts and Athletics v. U.S. Olympic Committee_, 483 U.S. 522 (1987), the Supreme Court said explicitly that the USOC has no obligation to show likelihood of confusion in order to stop an unauthorized use of the term “Olympic.” ---
**Author:** ![Sparky812](https://avatars.discourse-cdn.com/v4/letter/s/eb9ed0/32.png) [@Sparky812](https://boards.straightdope.com/u/Sparky812)\ **Post date:** [February 7, 2012, 4:56am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/29 "2012-02-07T04:56:29Z")
> [@Acsenray](#): > > In American trademark law there was never any such “lifting.” I don’t know if there were any restrictions under the Communications Act imposed by the FCC on broadcasters, if there were it would have been something outside trademark law. Correct, the [law of comparative advertising](http://www.kelleydrye.com/publications/articles/1335/_res/id=Files/index=0/Villafranco_Law%20of%20Comparative%20Advertising%20in%20the%20US_010210.pdf) and its treatment by the FTC and the NAD. While “lifted” was the wrong choice of words, the FTC clarified its position on comparative advertising and advertisers’ and broadcasters’ standards shifted from the “Brand X” approach to identifying competitors brands. [SIZE=2][FONT=TimesNewRomanMTStd] > [@](#): > > [FONT=TimesNewRomanMTStd][SIZE=2] > > [SIZE=2][FONT=TimesNewRomanMTStd]In 1979, the FTC issued its “Statement of Policy Regarding Comparative Advertising,” noting that, although some industry codes and trade association standards may be interpreted as discouraging comparative advertising, it is the “Commission’s position that industry self-regulation should not restrain the use by advertisers of truthful comparative advertising.” > [/SIZE][/FONT][FONT=TimesNewRomanMTStd][SIZE=2]The FTC stated that comparative advertising (and even brand comparisons), where the comparisons are clearly identified, truthful, and non-deceptive, can be a source of useful and important information to consumers and[/SIZE][/FONT] > [SIZE=2][FONT=TimesNewRomanMTStd]can assist them in making rational purchasing decisions. > [/SIZE][/FONT][FONT=TimesNewRomanMTStd][SIZE=2]Previously, advertising that compared different brands and identified them by name(rather than “Brand X advertising”) had been discouraged by both broadcasters [/SIZE][/FONT][SIZE=2][FONT=TimesNewRomanMTStd]and self-regulation entities. > [/SIZE][/FONT] [/FONT][/SIZE][/SIZE][/FONT] ---
**Author:** ![Mr\_Downtown](https://avatars.discourse-cdn.com/v4/letter/m/8e8cbc/32.png) [@Mr\_Downtown](https://boards.straightdope.com/u/Mr_Downtown)\ **Post date:** [February 7, 2012, 5:10am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/30 "2012-02-07T05:10:28Z")
But don’t all these new state anti-dilution statutes pub Pepsi at risk for disparaging Coke? ---
**Author:** ![Justin\_Bailey](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/justin_bailey/32/8792_2.png) [@Justin\_Bailey](https://boards.straightdope.com/u/Justin_Bailey)\ **Post date:** [February 7, 2012, 5:11am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/31 "2012-02-07T05:11:49Z")
> [@Acsenray](#): > > Tell me what you actually know about trademark law. I need to know where to start. What did you actually understand when I said that an actual U.S. statute gives exclusive rights to the Olympic Committee to use the term “Olympic” within the United States (with very limited exceptions, for example, for entities that have been using them since before 1950 or that are located in the Olympic Peninsula of Washington)? Searching “Olympic Pizza” in Google will bring up at least a dozen restaurants all over the US with that name. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 11:12am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/32 "2012-02-07T11:12:28Z")
> [@Mr\_Downtown](#): > > But don’t all these new state anti-dilution statutes pub Pepsi at risk for disparaging Coke? No, comparative advertising is not dilution. The mark is being used for the mark holder’s own goods. And the phrase you’re looking for is dilution by tarnishment. ---
**Author:** ![psychonaut](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/psychonaut/32/4655_2.png) [@psychonaut](https://boards.straightdope.com/u/psychonaut)\ **Post date:** [February 7, 2012, 11:55am UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/33 "2012-02-07T11:55:53Z")
> [@KneeSid](#): > > See Nominative Use > > [Nominative use - Wikipedia](http://en.wikipedia.org/wiki/Nominative_use) Does that really apply in this case? From your link, here are two of the conditions that need to be met: > [@Wikipedia](#): > > The nominative use test essentially states that one party may use or refer to the trademark of another if: > > 1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute). > 2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol). I haven’t seen the commercial in question, but the OP states that it was a case of Pepsi using Coke’s logo. It’s certainly possible to identify Coca Cola without using its logo, which would run afoul of the first condition. Even if the words “Coca Cola” themselves are trademarked, the advertisement could have used them in a minimalistic way (such as by printing them in a plain font in black and white rather than the stylized, cursive, red and white letters used in the logo). ---
**Author:** ![Telemark](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/telemark/32/372_2.png) [@Telemark](https://boards.straightdope.com/u/Telemark)\ **Post date:** [February 7, 2012, 12:06pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/34 "2012-02-07T12:06:01Z")
> [@Justin\_Bailey](#): > > Searching “Olympic Pizza” in Google will bring up at least a dozen restaurants all over the US with that name. They probably were established before 1950, I know at least one near me that has been around that long. The USOC is very vigilant about their brand. ---
**Author:** ![md2000](https://avatars.discourse-cdn.com/v4/letter/m/73ab20/32.png) [@md2000](https://boards.straightdope.com/u/md2000)\ **Post date:** [February 7, 2012, 2:13pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/35 "2012-02-07T14:13:12Z")
> [@Telemark](#): > > They probably were established before 1950, I know at least one near me that has been around that long. The USOC is very vigilant about their brand. Well, these businesses (the pizza place was just one that comes to mind) got their nasty letters in the lead up to 1988 despite the fact that the Summer Olypics were held in Montreal in 1976. The other point was they went after “Olympia” places too, despite the fact that there is a Mount Olympus (home of the Gods, thus a logical association with Italian pizza) with a lot more tenuous connection. The moral of the story is that with enough lawyers you can do anything. And… nowhere in that discussion in the news back then was there a suggestion that the Olympic Commission had any more rights than any other trademark holder in Canada - just that they owned the rights and anyone trying to profit off their name and goodwill would feel the terrible might of Canadian “justice”. [http://www.theglobeandmail.com/report-on-business/article814075.ece](http://www.theglobeandmail.com/report-on-business/article814075.ece) ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 2:14pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/36 "2012-02-07T14:14:16Z")
> [@psychonaut](#): > > It’s certainly possible to identify Coca Cola without using its logo There are two different issues here: 1. Can Pepsi identify Coca-Cola’s product using Coca-Cola’s trademark? 2. Can Pepsi identify _Pepsi’s_ product using Coca-Cola’s trademark? As to No. 1, yes, it can. It’s a nominative use. You are naming the actual product that the mark represents. If you are using X’s mark to identify X’s product, then you don’t even have to analyze it any further. It’s where we get into No. 2 that the test you’re referring to is relevant. What if you are using X’s mark to identify Y’s product? For example, in some parts of the United States, it is common for all non-alcoholic, chilled, sweetened carbonated beverages to be referred to as “Coke,” regardless of the brand name or the particular style. So, if Pepsi is advertising in a market where this is common practice, could Pepsi run commercials in which it promotes purchase of “Pepsi-Cola Coke” because it’s "more refreshing than “Coca-Cola Coke”? Or “Drink Pepsi – it’s the best Coke around!” See, now you apply the test. Does Pepsi have to use Coca-Cola’s “Coke” trademark in order to describe its product? No, it doesn’t. It could call it “Pepsi carbonated soft drink,” or, hell, just “Pepsi,” and consumers would readily understand what was being described. So, in this case, it would not be a nominative fair use. It might be difficult to understand why someone would want to do this in the case of soft drinks, a market in which every damn thing rides on the brand name anyway. It comes up more commonly in areas of new technology. For some reason an actual example isn’t coming to me at the moment, but, say, Philips had tried to stop Sony from using the term “VCR” to describe its videotape cassette recorder/players? What if IBM had tried to stop DEC from using the term “PC”? > [@Sparky812](#): > > Correct, the [law of comparative advertising](http://www.kelleydrye.com/publications/articles/1335/_res/id=Files/index=0/Villafranco_Law%20of%20Comparative%20Advertising%20in%20the%20US_010210.pdf) and its treatment by the FTC and the NAD. Ah, thanks for this. It’s very interesting. I note that the “rules” in place were ones imposed by the broadcasters themselves or promulgated by self-regulating industry associations. ---
**Author:** ![psychonaut](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/psychonaut/32/4655_2.png) [@psychonaut](https://boards.straightdope.com/u/psychonaut)\ **Post date:** [February 7, 2012, 2:48pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/37 "2012-02-07T14:48:20Z")
> [@Acsenray](#): > > There are two different issues here: > > 1. Can Pepsi identify Coca-Cola’s product using Coca-Cola’s trademark? > > 2. Can Pepsi identify _Pepsi’s_ product using Coca-Cola’s trademark? But I wasn’t asking about whether Pepsi could identify its own product using Coca-Cola’s trademark; that’s obviously passing off. I was asking whether Pepsi’s use of the Coca-Cola logo to identify Coca-Cola (for the purposes of comparing it to their own product) in this instance passes the first two conditions of the nominative use test. You claimed that “\*f you are using X’s mark to identify X’s product” then this is automatically nominative use, which claim is at odds with the existence of the more rigorous three-pronged test established by the courts. ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 3:08pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/38 "2012-02-07T15:08:31Z")
> [@psychonaut](#): > > But I wasn’t asking about whether Pepsi could identify its own product using Coca-Cola’s trademark; that’s obviously passing off. It’s not necessarily passing off if use of the trademark is necessary in order to describe the product. As I mentioned, what if IBM had claimed trademark rights in the term “PC”? Then DEC might have a legitimate claim that it could not adequately describe its own product without calling it a “PC.” As to the three-pronged test, I don’t think that the terminology as used in the Wikipedia article gives a very good idea what each prong really means. You won’t get a serious argument from most trademark lawyers that showing a Coca-Cola can or the term “Coca-Cola” is anything other than a minimally required use of the mark in order to adequately identify Coke. The first two prongs of the _New Kids on the Block_ test don’t require you to be coy and use clever tricks to suggest that you’re showing a can of Coke without actually showing that it’s a can of Coke. > [@md2000](#): > > And… nowhere in that discussion in the news back then was there a suggestion that the Olympic Commission had any more rights than any other trademark holder in Canada I’m no expert on Canadian law, but it does seem that they do have a statute giving extra-special rights to the Olympic Committee – [The Olympic and Paralympic Marks Act of 2007](http://www.wipo.int/wipolex/en/text.jsp?file_id=207696). But in Canada, it’s grandfathered up to 2007, rather than 1950. ---
**Author:** ![md2000](https://avatars.discourse-cdn.com/v4/letter/m/73ab20/32.png) [@md2000](https://boards.straightdope.com/u/md2000)\ **Post date:** [February 7, 2012, 3:16pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/39 "2012-02-07T15:16:30Z")
> [@psychonaut](#): > > But I wasn’t asking about whether Pepsi could identify its own product using Coca-Cola’s trademark; that’s obviously passing off. I was asking whether Pepsi’s use of the Coca-Cola logo to identify Coca-Cola (for the purposes of comparing it to their own product) in this instance passes the first two conditions of the nominative use test. You claimed that “\*f you are using X’s mark to identify X’s product” then this is automatically nominative use, which claim is at odds with the existence of the more rigorous three-pronged test established by the courts. > [@](#): > > The nominative use test essentially states that one party may use or refer to the trademark of another if: > 1.The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute). > 2.The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol). > 3.The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags. I’ve seen a few of the comparison commercials (they were a big deal for a while in Canada). Where the suggestion is a showdown, or friendly rivalry, the Coke truck is given the same sort of markings as the Pepsi truck, the drivers have approximately equal-sized logos on their hats. So it identifies the rivalry and product; but logically does not give too much prominence to their competitor. Number 2. When the contest is “Pepsi is cooler” or “more people prefer Pepsi in a blind taste test” then obviously the endorsement is NOT implied. Number 3. The connection might be implied if say, Hyundai ran ads where their car was running alongside a ROlls Royce or Mercedes… When your ad ---
**Author:** ![Acsenray](https://sea3.discourse-cdn.com/straightdope/user_avatar/boards.straightdope.com/acsenray/32/4519_2.png) [@Acsenray](https://boards.straightdope.com/u/Acsenray)\ **Post date:** [February 7, 2012, 3:17pm UTC](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981/40 "2012-02-07T15:17:21Z")
From _New Kids on the Block_: > [@](#): > > With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute, and a problem closely related to genericity and descriptiveness is presented when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source. > > Indeed, it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three; reference to a large Japanese manufacturer of home electronics would narrow the field to a dozen or more companies. Much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark. > > A good example of this is Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir.1969), where we held that Volkswagen could not prevent an automobile repair shop from using its mark. We recognized that in “advertising [the repair of Volkswagens, it] would be difficult, if not impossible, for [Church] to avoid altogether the use of the word ‘Volkswagen’ or its abbreviation ‘VW,’ which are the normal terms which, to the public at large, signify appellant’s cars.” Id. at 352. Church did not suggest to customers that he was part of the Volkswagen organization or that his repair shop was sponsored or authorized by VW; he merely used the words “Volkswagen” and “VW” to convey information about the types of cars he repaired. Therefore, his use of the Volkswagen trademark was not an infringing use. > > … > > Cases like these are best understood as involving a non-trademark use of a mark–a use to which the infringement laws simply do not apply … Indeed, we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark – where the only word reasonably available to describe a particular thing is pressed into service – lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. … > > To be sure, this is not the classic fair use case where the defendant has used the plaintiff’s mark to describe the defendant’s own product. Here, the New Kids trademark is used to refer to the New Kids themselves. We therefore do not purport to alter the test applicable in the paradigmatic fair use case. If the defendant’s use of the plaintiff’s trademark refers to something other than the plaintiff’s product, the traditional fair use inquiry will continue to govern. But, where the defendant uses a trademark to describe the plaintiff’s product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. In the case of comparative advertising, you don’t have any of these concerns. If you’re criticizing a competitor’s product, there’s hardly a plausible argument that there’s any possible infringement going on. In most cases, courts aren’t even going to get this far into the analysis. [Previous page](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981.md?page=1) [Next page](https://boards.straightdope.com/t/pepsi-using-the-coke-logo-in-their-super-bowl-ad/611981.md?page=3)