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.
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.
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.
“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.
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
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.
(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.”
Correct, the law of comparative advertising 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.
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But don’t all these new state anti-dilution statutes pub Pepsi at risk for disparaging Coke?
Searching “Olympic Pizza” in Google will bring up at least a dozen restaurants all over the US with that name.
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.
Does that really apply in this case? From your link, here are two of the conditions that need to be met:
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).
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
There are two different issues here:
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Can Pepsi identify Coca-Cola’s product using Coca-Cola’s trademark?
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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”?
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.
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.
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.
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. But in Canada, it’s grandfathered up to 2007, rather than 1950.
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
From New Kids on the Block:
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.