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We provide software that can measure performance of another company's product which happens to be trademarked (word/phrase - not a symbol). We want to name it specifically.

Is this protected/fair use?

I have something like the following scenario

Use our super awesome tool to measure [product name] ®

Then later on at the end of the page

[product name] is a registered trademark of XYZ Limited

We have some "partnership" with this company however they are about a 15k person global company and there are some folks there who may not like the results of the measurement or that we also work with their competitors.

We are in no way trying to fool people into thinking we are them or that we offer their product, etc. We allow people to compare two products and we want to be able to name them specifically on our site so that people find our tool.

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4 Answers

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Your proposed use of the mark is appropriate. Traditional fair use is discussed in "The 'Fair Use' Defense: One Term, Two Different Meanings". Your proposed use is known as "nominative fair use".

You mentioned your company's existing relationship with the other company. If there is an agreement between your two companies, you should look into whether it limits or prohibits your planned activity (many such agreements do).

Disclaimer: This post does not constitute legal advice and does not establish an attorney-client relationship.

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up vote 3 down vote

I am not a lawyer, but fair use doesn't apply to commercial ventures.

That being said I don't think it's a trademark violation to mention other companies, as many many websites do those 'feature comparison' lists between themselves and competitors and I'd presume there would be a lot more companies suing each other if that was trademark infringement.

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that is what I thought - just checking to see if there was a problem I was not seeing. thanks – TimJ♦ Oct 21 '10 at 13:49
up vote 3 down vote

This is not really a trademark issue. Your activity isn't likely to cause consumer confusion over what the trademark is for so they can't sue you for damages on the grounds of a trademark violation.

Copyright infringement, on the other hand, is highly relevant. Commercial parody fair use has been upheld in courts for many cases but denied in others. Worth some review & consultation with a lawyer. Based on what you've described thus far (you're not displaying any of their IP aside from the TM), I think you are ok.

Disclaimer : This comment and the one below aren't legal advice nor do they constitute an attorney client relationship.

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that is what I thought. We just want to be very careful because at this point the relationship is a little tenuous. – TimJ♦ Oct 21 '10 at 13:49
If a site like Cnet can provide reviews and comparisons between a Dell and Apple laptop and your service is analogous, then you should be ok. On the business side you might want to take into account your relationship with either partner. – Henry the Hengineer Oct 22 '10 at 12:21
up vote 1 down vote

Interestingly, it sounds like you are more concerned about the results of your product's measurements rather than using this trademarked name. Are you more worried that this company will not like how it measures up when people use your product? Maybe worried about defamation?

It sounds like you are more worried about naming one particular company than the others that your product measures, so perhaps that is your gut telling you there may be a loss of goodwill with them even if there is no legal liability. Or I'm just reading into a simple legal question too much. :)

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I can't control what they think of objective testing. I am only concerned of the legal issue. Certainly if our tool shows unfavorable results for them then they may want to target us and might cite the trademark. I am not worried about defamation. We do not publish results of our testing. We license our software to others with no warranty and a disclaimer. The results are theirs. This question could be applied to ALL the vendors we measure - this just happens to be the first and closest partner at this point. – TimJ♦ Oct 21 '10 at 21:37

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