The Nike of medicine? the Coca Cola of fishing rods?
December 1, 2011 1:19 PM Subscribe
you are not my attorneyfilter: Is using a trademark (not mine) in my slogan- legal?
I'd like to use a tagline to promote a service...
can I use a trademarked term (not mine, obviously) in a tagline?
say, "the rolls royce of shoes" for example? or "the mcdonalds of barber shops"?
thanks!
I'd like to use a tagline to promote a service...
can I use a trademarked term (not mine, obviously) in a tagline?
say, "the rolls royce of shoes" for example? or "the mcdonalds of barber shops"?
thanks!
IANAL but I do live somewhere plastered with advertising on every living surface and I've never seen that in the wild.
posted by griphus at 1:24 PM on December 1, 2011 [1 favorite]
posted by griphus at 1:24 PM on December 1, 2011 [1 favorite]
not with a famous trademark - see dilution
and using a non-famous mark would be questionable too
posted by exogenous at 1:25 PM on December 1, 2011
and using a non-famous mark would be questionable too
posted by exogenous at 1:25 PM on December 1, 2011
IANAL but I think what you are suggesting does not qualify as trademark infringement (i.e. you are not trying to claim to be Rolls-Royce or McDonald's), but as trademark dilution, specifically via tarnishment (you are tarnishing McDonald's name by associating it with your own).
posted by pineapple at 1:28 PM on December 1, 2011 [2 favorites]
posted by pineapple at 1:28 PM on December 1, 2011 [2 favorites]
An excellent example of this sort of confusion or dilution is the various attempts to capitalize on the fame and brand image of McDonald's to promote other products and services by using the "Mc" prefix, such as McSleep Inn. This article on trademark parodies is 20 years old [trademark law has recently been altered and reinforced by the internet in various ways], and thus somewhat out of date, but outlines the basic points.
If you do this, you should expect sooner or later to receive a cease and desist letter from the mark's owners, who are likely to be able to afford better legal representation than yourself. It's a brute force argument, to be sure, but you need to think about whether you will lose more from this than you can ever possibly gain.
posted by dhartung at 1:39 PM on December 1, 2011 [1 favorite]
If you do this, you should expect sooner or later to receive a cease and desist letter from the mark's owners, who are likely to be able to afford better legal representation than yourself. It's a brute force argument, to be sure, but you need to think about whether you will lose more from this than you can ever possibly gain.
posted by dhartung at 1:39 PM on December 1, 2011 [1 favorite]
IANAL, but a trademark is protected because it conveys positive qualities associated with the owner of the trademark to the consumer. Misuse of the mark either diminishes the positiveness of that association or creates uncertainty about authenticity of that communication thus harm the owner of mark (monetarily). For example, if you manufacture a fake copy then slap a reputable trademark on it to sell for high price, you would both undermine the positiveness of that brand, and to create doubt on the quality of that brand. If you create "Coca Cola" fishing rod, even though Coca Cola doesn't make fishing rod and you don't directly undermine the positive feeling consumer for authentic Coca Cola fishing rods (because they don't exist); you still create doubt and uncertainty on the brand. Next time Coca Cola come up with a new drinks, people will doubt if the new drink will be a dud like your fishing rod and not buy their new drink, for example.
However, it is fair to *say* Coca Cola taste bad, if you are only using their trademark name in the context of reviewing their product or to identify the object in communication with others; so not all negative association is unlawful.
On preview, what pineapple said.
posted by curiousZ at 1:39 PM on December 1, 2011
However, it is fair to *say* Coca Cola taste bad, if you are only using their trademark name in the context of reviewing their product or to identify the object in communication with others; so not all negative association is unlawful.
On preview, what pineapple said.
posted by curiousZ at 1:39 PM on December 1, 2011
Best answer: I am a lawyer, but not your lawyer and this is not legal advice specific to your situation. Using a famous trademark in a slogan, even in a flattering way, could certainly constitute trademark dilution, as others have said. The Trademark Dilution Act says that
"the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." Stay away from the famous mark. Famous marks have rich owners who are anxious to protect their marks from interlopers who want a free ride on their commercial coattails. They can afford to sue. Most ordinary people cannot afford to defend such a suit. Maybe you should re-evaluate your marketing plan.
posted by Jenna Brown at 2:47 PM on December 1, 2011
"the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." Stay away from the famous mark. Famous marks have rich owners who are anxious to protect their marks from interlopers who want a free ride on their commercial coattails. They can afford to sue. Most ordinary people cannot afford to defend such a suit. Maybe you should re-evaluate your marketing plan.
posted by Jenna Brown at 2:47 PM on December 1, 2011
It's might be easier to compare your brand positively with other brands in ad copy and/or in ad photos, than in a slogan/tagline. Ad from 1986:
"First there was Geoffrey Beene, Bill Blass and Stanley Blacker. Then Calvin Klein, Perry Ellis and Ralph Lauren. Today, it's Tommy..."
Some called the ads for Tommy Hilfiger "arrogant and tasteless", but they worked.
posted by iviken at 2:06 AM on December 2, 2011
"First there was Geoffrey Beene, Bill Blass and Stanley Blacker. Then Calvin Klein, Perry Ellis and Ralph Lauren. Today, it's Tommy..."
Some called the ads for Tommy Hilfiger "arrogant and tasteless", but they worked.
posted by iviken at 2:06 AM on December 2, 2011
No.
posted by Quarter Pincher at 4:32 AM on December 2, 2011
posted by Quarter Pincher at 4:32 AM on December 2, 2011
This thread is closed to new comments.
You'd be profiting on the trademark of another company.
posted by chrisfromthelc at 1:22 PM on December 1, 2011 [1 favorite]