Discussion:
What is the name of your state?Missouri
I have a pet waste removal company in Missouri. On my website I sell pet waste products.
One of the products I sell are doggy poop bags. I use my competitors name to describe that most our bags will fit their dispensers. I have a disclaimer stating that I am not affiliated with them or sell their products. I am only using their name in reference to the fact our bags also fit their dispensers.
He wants me to remove his company name which is trademarked off my site, claiming infringment. Can I use his tradmark name for this?
To see what I am talking about, here is the link
Thank you
Answer:
One of the products I sell are doggy poop bags. I use my competitors name to describe that most our bags will fit their dispensers. I have a disclaimer stating that I am not affiliated with them or sell their products. I am only using their name in reference to the fact our bags also fit their dispensers. First off, forget disclaimers. You can never avoid infringement simply by having a disclaimer...
Now, the main question you ask is one without a cut-and-dried answer, unfortunately. Generally, you cannot use someone else's mark in such a way that implies that you are somehow affiliated with or authorized by the mark holder. The test is whether a consumer would be "confused" as to whether your product was authorized by or affiliated with the mark holder.
Now, back to the disclaimer: unfortunately, the test for confusion is if the consumer is confused the instant they see, in this case, your ads. If the consumers are confused -- even for an instant, until they read your disclaimers -- that is enough under trademark law. And that's why disclaimers are insufficient to protect you from infringement.
That said, there are "fair uses" of another's trademark. However, the fair use doctrine in trademark is much narrower than the fair use in a copyright case. In trademark, a use is a "fair use" if the use is purely descriptive, and there is no other reasonable way to describe the product without using the trademark.
What this means is that you can go on eBay and sell an IBM notebook computer, and call it an IBM notebook computer, because that is the only reasonable way of describing what you are selling. But if I sell a laptop bag, and call it an "IBM notebook computer laptop case" then that is probably not a fair use, even if the IBM computer fits in it, because I can describe the bag without using the IBM name, and it implies that the bag is somehow "affiliated" with IBM.
So, back to your problem. Unfortunately, your problem lies somewhere in between the "fair use" of a trademark and an infringing use fo a trademark. If your bags are desinged to work with the particular product, it is probably quite difficult to describe what your bags work with without using the other guy's mark. On the other hand, the use of the guy's mark may confuse the consumer into believing that your bags are authorized by or affiliated with his product.
There are a couple ways to go about things going forward. You could ignore him, but that's not going to help anything, and he just might sue you. Win or lose, you'd still have to retain an attorney, so you probably don't want to go there. You could talk with an attorney in your area experienced in trademarks who could advise you on how you can describe your bags and what they work with without infringing the other guy's mark. I would recommend, however, that you try and work something out with the other guy -- maybe you could do some cross-promoting, or otherwise work together. Of course, if your bags are competing with his, this may not get very far, but that might be the optimal solution if it will work. Otherwise, talk with a lawyer who can review all of the relevant facts, and let him or her guide you.
Answer:
Thank you for your reply.
I have contacted an attorney to discuss this matter.