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The Zest

Can You Mention a Big Brand in Your Marketing?

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"Can I say my product works with a big-name brand, or that my price beats theirs, without getting a cease-and-desist letter?" Usually, yes. Trademark law lets you use another company's name to refer to that company or its products when that's the plain way to say something true. What it doesn't allow is using their brand in a way that suggests they sponsor, endorse or partner with you. The name is usually fine. The logo, the look and the implied relationship are where it goes wrong.

Here's where the rule comes from and how to apply it to your own marketing.

The rule courts use

The leading case is about a boy band. In 1992, the Ninth Circuit decided New Kids on the Block v. News America Publishing. Two newspapers ran paid phone polls asking readers to vote on the band's members, and the band sued over the use of its name. The newspapers won.

The court said some things can't be talked about without using their trademark. Its example: you can say "the professional basketball team from Chicago," but it's far simpler to say Chicago Bulls. So the court set out a three-part test for this kind of use, which it called nominative use:

  • The product or service can't be readily identified without using the trademark.
  • You use only as much of the mark as is reasonably necessary to identify it.
  • You don't do anything that, along with the mark, would suggest sponsorship or endorsement by the trademark owner.

The second point is where logos come in. The court noted that a competitor may compare its product to Coca-Cola, but it may not use Coca-Cola's distinctive lettering to do it. The name identifies the product. The lettering borrows the brand.

How the test plays out today

The Ninth Circuit applied the test again in 2010, in Toyota Motor Sales v. Tabari. Two auto brokers helped customers buy Lexus cars and ran their business on websites called buy-a-lexus.com and buyorleaselexus.com. Toyota sued.

The court's starting point was simple: when the brokers said Lexus, they meant Lexus. Using the name to describe what they did was fine. Where they ran into trouble was the extras. Earlier versions of their site used the stylized Lexus "L" logo and Toyota's own photos, and the court said the brokers could get their message across "without using the visual trappings of the Lexus brand." Before trial they dropped those and added a disclaimer: "We are not an authorized Lexus dealer or affiliated in any way with Lexus." The court said a disclaimer isn't required, but it's relevant.

Two other points from the case are useful. The court judged confusion from the view of a reasonably prudent consumer who's used to shopping online, not the most careless one. And it held that the injunction against the brokers was too broad, in part because it would have barred a domain like lexusbroker.com, which the court called the most straightforward, obvious and truthful way to describe their business.

"Compatible with" and "works with"

Saying your product works with someone else's is the classic nominative use. The New Kids court pointed to an older case about an independent repair shop that advertised Volkswagen repairs. It would have been difficult, if not impossible, to do that without the word Volkswagen, and the shop didn't use Volkswagen's distinctive lettering or color scheme.

In practice, a compatibility claim stays on the right side when it's accurate, so that if you say it fits or works with something, it does. It's in plain text, in your fonts and your colors, not theirs. Your brand is the one the customer sees first. And it skips words like "official," "authorized" or "certified" unless they're true.

Comparison ads are allowed, if they're true

Naming a competitor to compare yourself is generally lawful, and the Federal Trade Commission actively supports it. Its policy statement says the agency encourages naming competitors and treats truthful, non-deceptive comparative advertising as a source of important information for consumers. It even says disparaging advertising is permissible, as long as it's truthful and not deceptive.

The catch is the word truthful. Federal false advertising law lets competitors sue over commercial advertising that misrepresents the nature, characteristics or qualities of your products or theirs. So keep comparisons to things you can prove: a price on a date you can document, a measurable feature, a published spec. "Cheaper than Brand X" needs a price check behind it. "Better than Brand X" needs something more than enthusiasm.

There's also a small protection worth knowing. The federal dilution statute, which protects famous marks, expressly excludes advertising that lets consumers compare goods or services, along with nominative and descriptive fair use.

Where it crosses the line

Using their logo, icon or stylized lettering. That's more of the mark than you need to identify them.

Implying a relationship. "Partner," "official," "approved," or a layout that looks like their ads, when none of it is true.

Building your own brand around their name. The Tabari court allowed a descriptive domain like lexusbroker.com, but it also noted that a domain made of just the trademark and .com suggests sponsorship. The closer your own name, handle or product line gets to theirs, the more it reads as a connection. If you're naming something new, keep other brands out of it and search the name before you file.

Making a comparison you can't back up.

And if you do have a real relationship with a bigger brand, a co-marketing deal or a reseller arrangement, get the permission and its limits in writing. That's one of the contracts that protect your brand.

Before you publish, run the three questions: Do I need their name to say this? Am I using only the name, not the logo or look? Would anyone read this as their endorsement? Then check that every claim about them is one you can prove.

If you're building marketing around your own brand and want the name protected, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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