trademarkHere is an example of what I mean. There is another question I found similar but does not address my exact issue.
Say I am making my own brand of toothpaste and I want it to be Sriracha Flavored or Old Bay flavored.
Can I call my product “Sriracha Toothpaste” or “Old Bay Toothpaste” ?
Do I need to put their ^TM after it? Do I have to give them credit in another way?
What are the requirements here?
If anyone has any insight, that would be greatly appreciated.
Using the same source as op in his answer (http://www.dmlp.org/legal-guide/using-trademarks-others):
the main purpose of trademark law is to avoid consumer confusion, and the fundamental question in any trademark infringement lawsuit is whether the defendant’s use of a trademark creates a likelihood of confusion between the defendant’s goods or services and the plaintiff’s.
Apart from that, the article speaks about trademark dilution as another reason for lawsuits.
So let’s state this clearly - the two main reasons to get sued for trademark violation are
consumer confusion
trademark dilution
If Sriracha is a trademark and you call your toothpaste Sriracha Toothpaste, you are definitly confusing the consumers by suggesting that your toothpaste is affiliated with Sriracha.
The defense of making clear it’s not your trademark might work in some theoretical cases, but only if it’s very very very clear. So call your toothpaste “Sriracha (warning: no affiliation with sriracha TM) toothpaste” and you might eventually be fine. Put it somewhere on the tube where noone reads it - you will probably not be fine.
The cited article is not talking about advertising your product with another one’s trademark, it is talking about critics and blog posts where it’s clear from the whole context that no affiliation exists.
Another explanation, right from the uspto:
How do I know whether I’m infringing?
To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.
Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.
The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.
In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution,” asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” the mark’s image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.
https://www.uspto.gov/page/about-trademark-infringement
I think it’s clear that if you name your product “Trademark something” an infringement is very likely to be found. Imho there is no way a consumer will see that and not assume a common source between your product ad the trademark - and even if you somehow manage to proof that the consumers don’t confuse your products and all see how they are not related, the dilution suit is going to follow. Dilution is simply adding to the information in the mind of the customer other information which the customer will connect with the trademark even though it’s not yours. And If your toothpaste tastes bad - the customer will connect that with Sriracha and you are diluting.
This looks like a solid answer actually:
Yes, it’s OK as long as you make it clear that the trademark is not your own. You should include something like the following in the footer of your website, along with your own copyright and trademark statements:
“Facebook® is a trademark of Facebook, Inc.”
or
“All trademarks, service marks, trade names, product names and logos appearing on this site are the property of their respective owners, including Facebook®, Microsoft Windows®, …”
The question does extend more deeply than this, and there may be additional considerations if there is any ambiguity about describing the other party’s trademarked services.
Source: http://www.dmlp.org/legal-guide/using-trademarks-others
SOURCE: https://startups.stackexchange.com/questions/11177/can-i-use-my-competitor-trademark-in-my-product-description?rq=1
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