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If I have a sentence on my business website stating something similar to

"Mr. Smith participated in the process that ended with Pepsi acquiring Silly Sally's Sodas"

Is this a basis for infringement on Pepsi or SSS? No logos or other graphics used, just a plain statement of fact.

Can Pepsi or SSS sue for trademark infringement?

David Siegel
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Sizzle
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    Possible duplicate of How do i refer to a trademark I don't own without infringing on it? – Acccumulation Mar 13 '19 at 19:03
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    I don't see the other post/question answering my question. I don't see saying "this is an iPhone case" on a product as similar to what I am asking. I'd like to hear other opinions. Thx. – Sizzle Mar 13 '19 at 19:11
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    While somewhat related, i don't think this should be closed as a duplicate. – David Siegel Mar 13 '19 at 20:23
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    @Acccumulation It's related, but since the usage is quite different, I would say it's not a duplicate at all. The details are important. – Mast Mar 14 '19 at 07:09
  • If anything, the problem would be with "Just a plain statement of fact". Lawyers for Pepsi might argue that the statement is suggestive. (As SSS was taken over, it no longer exists and cannot sue, but Pepsi would now own the former trademarks of SSS) – MSalters Mar 14 '19 at 12:42
  • @MSalters I am not sure I follow you...if Mr. Smith introduced Pepsi and SSS - and no trademarked logos are used, just the words in a sentence, what the sentence suggests is that Mr. Smith was involved, which is a fact. Perhaps you could rephrase what you're saying, so I can understand a bit better. Thx. – Sizzle Mar 14 '19 at 15:01
  • @Sizzle: the problem (from Pepsi's viewpoint) is that Mr Smith might want a fee for his work. If Pepsi disagrees that Mr. Smith contributed materially, and do not want to pay, they might dispute this statement just to make clear that they're not going to pay Mr. Smith. After all, "introduce" is sufficiently ambiguous. – MSalters Mar 14 '19 at 15:10
  • @MSalters Thanks for the quick response and clarification. I will clarify some things...Mr. Smith has ALREADY been paid for his services...and now wants to let potential future clients know...but Pepsi is saying take down the sentence "Mr. Smith participated in the process that ended with Pepsi acquiring Silly Sally's Sodas" or we may litigate. So I am just trying to get clear if there is a basis for doing that? Are they correct that this is not Nominative Use. – Sizzle Mar 14 '19 at 15:17
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    I think one of the reasons people imagine that you always have to acknowledge a trademark is because we see so many examples where trademarks do get acknowledged ("UNIX is a trademark of ....."), but the reason for those acknowledgements is that the company in question has a license to use the product in question, and a condition of the license is that it always acknowledges the trademark. If you haven't signed such an agreement, then referring to UNIX as UNIX is perfectly permissible. The only thing you can't do is pass a different product off as UNIX. – Michael Kay Mar 14 '19 at 15:36
  • @MichaelKay So you are saying "Mr. Smith participated in the process that ended with Pepsi acquiring Silly Sally's Sodas" gives neither Pepsi nor SSS any legal basis to request it be taken down from a website? – Sizzle Mar 14 '19 at 15:41
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    The statement might be defamatory or libellous (though it doesn't seem it to me), but it's certainly not a trade-mark infringement. Trade-mark infringement is when you're selling your own-brand sugar-water and label it Pepsi. Using the word "Pepsi" to refer to Pepsi is not an infringement. – Michael Kay Mar 14 '19 at 20:28

1 Answers1

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The example in the question is a pretty clear case of nominative use. The mark is being used to refer to, or name, the product (or service). It is not being used to sell a similar product, or anything else. No reasonable person could take it to indicate that the trademark owner has endorsed the person making the statement, nor that there is any sort of affiliation.

This page from the International Trademark Association describes the concept.

This concept is sometimes called "fair use" by analogy with the concept in US copyright law, but that term is not strictly accurate. It is better to simply say "nominative use" or "descriptive use".

Digital Media Law's page on "Using the trademarks of others" says:

As a general matter, if you are reporting on, commenting on, or criticizing a trademark owner, most ordinary consumers will not be confused about whether the company or organization is the source or sponsor of your work. You can reduce the likelihood of confusion further by avoiding a website design that looks like the trademark owner's site or resembles its product packaging, and you should never festoon your website with a company's logo (but isolated use when relevant to a discussion is OK)

...

If someone threatens you with a lawsuit or sues you for trademark dilution, then a lack of consumer confusion will not help you. Here, one obvious line of defense is to argue that there is no likelihood of dilution. Federal and state dilution law protects a trademark owner against the whittling away of the distinctiveness of its famous trademark by association with other goods or services; it does not give a trademark owner the right to shut down all unflattering speech about it. If you do not associate a famous trademark with your own goods or services, then there can be no dilution (or at least that's how your argument goes).

...

The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. Courts impose three requirements on defendants who want to take advantage of the nominative fair use defense: (1) the trademark owner, product, or service in question must not be readily identifiable without use of the trademark; (2) the defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. This defense works against trademark infringement lawsuits. The federal dilution statute, found at 15 U.S.C. § 1125(c)(3)(A), also makes nominative fair use a complete defense to trademark dilution claims.

feetwet
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David Siegel
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    Fantastic. This is very helpful. I also found this case to be helpful: http://www.ca9.uscourts.gov/datastore/opinions/2010/07/08/07-55344.pdf – Sizzle Mar 13 '19 at 23:19
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    @Sizzle (as long as you're in the 9th circuit) – Charles Mar 14 '19 at 16:21
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    Surely it still depends on the context? If this was in the context of Mr Smith founding a new Cola brand, and trying to suggest a link to Pepsi or SSSS, wouldn't that potentially be diluting Pepsi's brand? – JeffUK Mar 14 '19 at 16:44
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    @Charles Judgements in a circuit can be indicative outside that circuit (it's not completely unknown for lawyers to cite judgements from other countries). – Martin Bonner supports Monica Mar 14 '19 at 17:00
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    @MartinBonner A lawyer might cite a case from another circuit or country, or even, say, a dictionary. But I'd hope a non-lawyer would do so only with an abundance of caution. – Charles Mar 14 '19 at 18:02
  • @JeffUK The context is simply "Mr. Smith can get deals done...and perhaps he can get a deal done for you as well." – Sizzle Mar 14 '19 at 20:50