A nondeceptive, descriptive use of a brand name is a “fair use” of a trademark in some cases. Now, this doesn’t mean you won’t be sued, if a particular trademark owner is aggressive with trademark lawsuits. So, be careful to make sure that your use is the type that is undeniably fair…
So, what type of use might that be?
- Your use of the mark must use the mark to describe a person, place or attribute of goods or services.
- The mark must be used in the ordinary course of your language; and in the ordinary text portion of your use, rather than in a banner or as a label.
- Don’t set the mark apart from your other text in any way.
- Don’t use the logo or colors associated with the mark as used by the owner of the trademark.
- If you are using the brand name for comparison or descriptively as the original source of goods being resold, make sure that the comparison or description is provably truthful and in no way deceptive.
For this last point, if any comparisons or use to identify original origin are to be made, make sure that you are absolutely correct, that any pictures of the product used are your copyrighted work or are licensed by you, and any comparison should be factual and objectively verifiable. For example, if any testing was done to compare one product to another, then it should be done by an independent, qualified testing service. Comparisons that are ambiguous or subjective should be avoided if a brand name is used in connection with the comparison.
In the U.S., courts have found disclaimers helpful in reducing possible confusion in connection with repackaged goods, resales, preowned sales, comparative advertising and criticism. Care must be taken in a disclaimer to avoid introducing confusion or not helping to reduce it. So, any disclaimer should be prominent and clear in its purpose to avoid confusion. Prominent means both close in proximity to the use of the mark and as close to equally visibility between the mark and the disclaimer, as possible.
The language of the disclaimer makes a difference too. Don’t play games with this. The disclaimer should clearly state that there is no connection between the company or brand selling the goods or providing services and the original source of the goods. Words like “…no affiliation, license or relationship with…” the owner of the mark, without any equivocation.